Bedggood and Company v Graham - [1909] HCA 9

BEDGGOOD &COMPANY GRAHAM

RESPONDENT. OPPONENT,

ON APPEAL FROM THE REGISTRAR OF TRADE MARKS. Trade Jark-Registration-Similarity of marks-" Honest concurrent user " -

"Special circumstances "-Trade Marks Act 1905 (No. 20 of 1905), secs. 8, 9, MELBOURNE, March 24, 25,

An application for registration of a trade mark having been opposed by the registered proprietor of a trade mark limited to New South Wales, was granted subject to a limitation to the States other than New South Wales. On appeal by the applicant to the High Court,

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Held, on the evidence, that the mark of the applicant and that of the opponent were not the same or nearly identical, that, even if they were, there had been honest concurrent user of the marks in New South Wales, and that there were special circumstances within the meaning of sec. 28 of the Trade Marks Act 1905, and consequently that the applicant was entitled to registra- tion in respect of New South Wales.

APPEAL from the Registrar of Trade Marks.

On 2nd June 1906 Bedggood &Co. applied for the registration of a trade mark in class 38 in respect of boots and shoes. The mark was as follows :- The essential particulars were stated to be the word " Premier" and the combination of devices, and the applicants disclaimed any right to the exclusive use of the words manufacture of boots and shoes."

The application was opposed by George Graham, who was registered in New South Wales as the proprietor of a trade mark consisting of the words Premier Brand" in a circle, in respect of boots and shoes, for which application was made on 3rd November 1889, and a certificate of registration granted on 3rd January 1890.

It appeared that the applicants were the registered proprietors of a trade mark identical with that in respect of which registra- tion was now sought in all the States of the Commonwealth except New South Wales; that on 17th September 1900 the applicants applied in New South Wales for registration of the same trade mark, that the application was opposed by the present opponent, that the application was then withdrawn, that the applicants on 3rd November 1900 applied for registration of the same trade mark excluding the word "Premier," and that their application was granted; and that on 9th September 1907 the opponent applied under the Trade Marks Act 1905 for registration

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of the trade mark of which he was then the registered proprietor

in New South Wales, and this application was granted subject to a limitation to New South Wales. There was also evidence that prior to and continuously since 1889 the applicants had used the mark of which registration was now sought in New South Wales in connection with boots and shoes of their manufacture.

The Registrar of Trade Marks held that the applicants had failed to make out a case for registration SO far as New South Wales was concerned; that if…

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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Details

Case: [1909] HCA 9
Decision Date: 26 March 1909

CaseChat Overview and Summary

Bedggood & Company (the appellants) sought to register a trade mark for boots and shoes. This application was opposed by George Graham (the respondent), who was the registered proprietor of a similar trade mark in New South Wales. The Registrar of Trade Marks granted the appellants' application but limited its registration to all Australian states except New South Wales. The appellants appealed this decision to the High Court.

The central legal issues before the High Court were whether the appellants' proposed trade mark was identical or nearly identical to the respondent's registered trade mark, and if so, whether there had been honest concurrent user of the marks in New South Wales or if special circumstances existed that would justify the registration of the appellants' mark in New South Wales. The court also considered the implications of the Trade Marks Act 1905, particularly sections 9 and 28, in relation to prior use and registration under state legislation.

The High Court found that the two trade marks were not the same or nearly identical. However, even if they were, the court determined that the circumstances of the case fell within the scope of section 28 of the Trade Marks Act 1905. This section allows for the registration of identical or nearly identical trade marks by more than one proprietor in cases of honest concurrent user or special circumstances. The court was satisfied, based on the evidence, that there had been honest concurrent user of the marks in New South Wales since a period prior to the respondent's registration, and that the respondent was aware of this use for many years without taking action. The court concluded that these factors constituted both honest concurrent user and special circumstances.

Consequently, the High Court allowed the appeal, overturning the Registrar's decision regarding New South Wales. The court ordered that the appellants' application be granted for New South Wales, with a modification to the description of the essential particulars of the trade mark. The respondent was ordered to pay the costs of the appeal.

Orders