Bedggood and Company v Graham

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.