Colorado Group Limited & Anor v Strandbags Group Pty Limited

[2008] HCATrans 200

[2008] HCATrans 200

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Melbourne  No M4 of 2008

B e t w e e n -

COLORADO GROUP LIMITED

First Applicant

WILLIAMS THE SHOEMEN PTY LIMITED

Second Applicant

and

STRANDBAGS GROUP PTY LIMITED

Respondent

Application for special leave to appeal

KIRBY J
HAYNE J
CRENNAN J

TRANSCRIPT OF PROCEEDINGS

AT MELBOURNE ON FRIDAY, 23 MAY 2008, AT 11.00 AM

Copyright in the High Court of Australia

MR D.F. JACKSON, QC:   If the Court pleases, I appear with my learned friend, MR A.J. RYAN, for the applicants.  (instructed by Deacons)

MR D.K. CATTERNS, QC:   May if please the Court, I appear with my learned friend, MR A.J. MARYNIAK, for the respondent.  (instructed Johnson Winter & Slattery)

KIRBY J:   Yes, Mr Jackson.

MR JACKSON:   Your Honours, may I just say something about the nature of the proceedings and then take your Honours to the provisions that are immediately in question.  We had a registered trademark “Colorado” registered in respect of various goods including backpacks, bags and wallets and purses.  The Full Court held that the trademark should not have been registered in respect of those goods because it was not at the relevant date capable of distinguishing the goods from those of other traders. 

Your Honours, that issue derives from a number of provisions. May I take your Honours to those. Section 88(2)(a) of the Trade Marks Act, your Honours, is a provision that says that:

An application –

and the application to which it refers is an application of the nature referred to in subsection (1) for cancelling a registration, for example –

may be made on any of the following grounds . . . 

(a)any of the grounds on which the registration of the trade mark could have been opposed –

That takes one, your Honours, to section 52 and in section 52(1) and (4) it gives a reference to the grounds that may be relied on and those grounds may be seen in sections 57 and following and, in particular, your Honours will see section 57 itself which there refers to there being opposition:

on any of the grounds on which an application for the registration of a trade mark may be rejected –

and I will come back to that your Honours.  Then at section 60 is a provision which deals with opposition on the ground of, “substantially identical with, or deceptively similar to”, et cetera, and your Honours will see that it contains within itself certain requirements.  Your Honours, the reference to grounds on which an application may be rejected takes one back to sections 39 and following.  We have set out provisions which set out the grounds for rejecting an application and, in particular, your Honours will see section 41.  Section 41 is the provision – I will come back to the more precise terms in just a moment – which deals with the situation when the application is being considered by the registrar. 

Now, your Honours one of the tests, or the ultimate test, to be applied by section 41 is that which is set out in section 41(2):

An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services . . . from the goods or services of other persons. 

So it is looking at the nature of the mark.  Your Honours, it was held that the trademark in this case was not capable of distinguishing the applicant’s goods for two reasons, and I am putting it a little shortly in saying this.  One was that the word “Colorado” was the name of a state in the United States and apparently carried with it a notion of some ruggedness or something of that kind.  Secondly, that the mark was also used before the priority date by the respondent and its predecessors. 

Your Honours, each of those matters and the way in which they were dealt with by the court give rise to some, in our submission, important questions.  The first aspect, your Honours, can be seen from the reasons of Justice Allsop at page 91 in paragraph 125.  The test that was applied – and I will come to the actual application of the test in just a moment – was a test  adumbrated by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks and, your Honours, I will not read out or refer to the whole of the passage, but could I go particularly to the last seven or eight lines on page 91 where his Honour said:

it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives –

and your Honours will see the remainder of it including the expression “to make honest use”, et cetera.  Now, your Honours, what one then sees is that it refers to “other persons, trading in goods of the relevant kind actuated only by proper motives” and who want “to make honest use of the words”.  That aspect was dealt with, your Honours, by Justice Allsop in paragraph 128 and, in particular, when one comes to the last 5 lines of paragraph 128 on page 92 where he simply said:

In my view, the honest trader could well wish to make use of the signification of the word for geographic reasons – especially in relation to backpacks, or to raise a connotation from the geographic attributes of that State.  In my view, the primary judge was wrong to conclude that the word was inherently adapted to distinguish.

Now, your Honours, the approach taken by the court in that regard was to treat the honest trader, in effect, as a person in the abstract.  I am looking at the word in the abstract as a kind of construct.  This was a case, your Honours, where there had been widespread use of the mark by the applicant to distinguish its goods prior to February 2001, the relevant time.  If I could just say this, that an idea of the scale of the business could be seen from the figures that appear at page 98 in paragraphs 151 and 153. 

What your Honours will see from that is that in the year 2000, immediately prior to the registration, that the total of the figures – and I am adding together the two figures – total over $163 million in sales and, your Honours, what we would submit about that is that the appellant’s use of the mark was a widespread use and would undoubtedly have come to the notice of any hypothetical honest trader in the circumstances in which that trader was to be seen.

CRENNAN J:   Is it not one of the problems in this case that the evidence seemed to show that between 1993 and 2001 there was concurrent use in respect of certain goods, in other words, concurrent use against which these figures of significant trading under the trademark had to be assessed?  What I am getting at, I suppose, is that it has long been a principle, I think it is fair to say, that a geographic mark will not be adapted to distinguish goods when anyone else who has perhaps acquired factual distinctiveness for a use is also in the same market place.

MR JACKSON:   Well, your Honour, could I just say that it is right to say what your Honour has said, that there was some use of the mark by the respondents, but I said over $163 million by our side in the year 2000.  In the year 2000, and what appears from paragraph 168, the use by the sales of the other side were $1.2 million, so it was a very, very significant difference.  Now, the point I would seek to make about it, your Honours, is that the test which was adopted by the Full Court was one which is, in a sense, speculative and does not take into account the circumstances of the trade in which it is carried on.  That is in relation to section 45(2).

Your Honours, if I just say this.  If there had been a consideration of the test and the resolution of that issue in our favour, one would then have circumstance, your Honours, in which one would look at section 41(2) and if that issue were decided in our favour, one does not then go to the remaining provisions of section 41, in particular, subsections (4) and (5) which were the ones that were applied in the present case. 

If that were to occur, the situation which we would then obtain would be that the way in which and, indeed, the only way in which it would be possible relevantly to have our mark removed, would be the operation of section 60 and section 60 is a provision which contains rather greater obligations on those seeking to expunge the mark.  Your Honours, section 60 was a provision not relied on by our learned friends in their case.

So that, your Honours, our point is that by restricting itself in the way it did, the Full Court arrived at a conclusion that prevented us from having the advantage of sections 41(2) and 41(3), of course, and that led to the second aspect of the case.

KIRBY J:   Just remind me, the goods that you produce are backpacks?

MR JACKSON:   Backpacks.  The mark was registered in respect of backpacks, bags, purses and wallets.

KIRBY J:   You seem to pass over quick – I could have understood an argument, and I think it is referred to by Justice Allsop, that in the context of backpacks, as distinct from other goods, other leather goods, that the ruggedness and scenic beauty and so on of Colorado might have lifted out of the general principle that Justice Crennan has referred to.  You seem not to attach much importance to that.

MR JACKSON:   Well, your Honour, what was put against us, if I can put it this way, was that it was said it could not be distinctive because it conveyed notions of ruggedness, to put it briefly, and because it conveyed notions of ruggedness, others might wish to do the same thing by using the word “Colorado”.

KIRBY J:   I realise that, and I come to this relatively freshly and therefore I do not really come with a lot of baggage, if I can use that word, but if you are looking the products produced by the respondent, they are a whole range of leather goods and I can see that attaching “Colorado” to that range is more difficult than having something distinctive about backpacks which are the type of thing that one would imagine could have a connection with Colorado, but you do not seem to attach much importance to that.  It is mentioned by Justice Allsop.

CRENNAN J:   Those allusive aspects of the word “Colorado” were not really the main thrust of the attack, were they?

MR JACKSON:   No.

CRENNAN J:   It was the concurrent use for years before the application for registration. On one view, their Honours did not need to deal with section 41(5) because it specifically deals with what a registrar can ask an applicant for on an application for registration, but at the end of the day, irrespective of them getting into those waters, they did undertake the exercise they should undertake to answer the statutory question in 41(2) and that is to look at all the evidence in order to determine whether the mark was factually distinctive through use or was it, having regard to the concurrent use, just not capable of being distinctive?

MR JACKSON:   Well, your Honour, the difficulty is in the way in which the court went about it was by saying it is not a section 41(2) case, in effect, or 41(3).

CRENNAN J:   No it is a section 88 case.

MR JACKSON:   Yes, that is so, your Honour.  Picking up the terms of section 41 to the extent they might be relevant because of the chain of provisions ‑ ‑ ‑

CRENNAN J:   Because of 57.

MR JACKSON:   Yes, your Honour. When one comes to that, though, the course that was adopted was not to apply what we would submit is the correct provision, but then to say, well, it is to some extent inherently adapted, which brings into play section 41(5). Now, in our submission, that was an error in approach on the part of the court which led to the circumstance that we would have been subject to attack under section 60 which involves a greater proof on the other side, or greater elements on either side, but instead we are dealt with pursuant to the adoption of section 41(5). If I could just come to that for a moment, your Honours.

HAYNE J:   Just before you do, can you articulate precisely the error of principle that you have thus far assign to the Full Court?

MR JACKSON:   Yes, your Honour, what I am saying is that the Full Court in deciding the question raised by section 41(2) and picked up by the other provisions to which I have referred and, may I also say, in looking too at section 41(3) which indicates how it is to be done, what the Full Court did was to treat the issue as a hypothetical one to be determined by looking at the terms of the mark itself without going on that issue to the extent of use of it by us and to the extent by which it might have acquired distinctiveness by our use.  Now, your Honours, that issue having being decided against us prevented us from saying, well, the only relevant basis for attack would be under section 60.

Your Honours, the second aspect of it was that on the Full Court’s approach it took one to section 41(5) and when one goes to section 41(5), one sees that it operates in circumstances where the view is taken “the trade mark is to some extent inherently adapted to distinguish”, et cetera, but the registrar cannot decide that issue on that basis alone. There are then three features to be taken into account in paragraph (a). Your Honours will see that section 41(5) requires that three matters be considered:

(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances –

The question, your Honours, is whether any other circumstances includes use by other traders.  Now, your Honours, one recognises, of course, that the expression “any other circumstances” is broad but it does have to be read in the context of the Act.  That context, your Honours, is found in the grounds of opposition in section 52, which are picked up by sections 52(1) and (4), to which I have taken.  We would submit section 60 is a specific provision dealing with issues of this kind.  It contains within it a number of criteria which must be satisfied in order to oppose successfully and there was not a case sought to be made out under section 60.

CRENNAN J:   But, in a sense, the respondent has chosen a different battleground which is more like 58.  The respondent’s battleground is to do with distinctiveness and proprietorship which would bleed into each other in this case or they coalesced to a certain extent.  As I understand it, the respondent is not saying it is because of issues of deceptive similarity the register should be rectified.  It is effectively saying neither party could have exclusive use to the mark “Colorado” in relation to handbags, wallets and purses.  That is the battleground that the respondent has chosen for rectification.

MR JACKSON:   Well, your Honour, what I am seeking to say about it is really that the case that was made was one really based on section 57, as it were, picking up section 41.

CRENNAN J:   Picking up 41(2).

MR JACKSON:   Yes, and then 41(5); picking up 41(5) by saying that “any other circumstances” includes the participation of other traders.  What we would say, your Honours, is simply this, that the Full Court’s approach really renders section 60 otiose because in every case of opposition to registration or application for cancellation, any competing use could be relied on without having to satisfy the requirements of section 60.

HAYNE J:   Where do we find any of these points of principle reflected in the notice of appeal?  The notice of appeal seems focused wholly on fact.  Where do I find the statement of principle that you wish to engage this Court with?

MR JACKSON:   Well, your Honour, one of them is contained in paragraph 3 at page 128, and, your Honours ‑ ‑ ‑

HAYNE J:   Well, it tells me the conclusion you want.  Does it go beyond that?  It is the articulation of principle rather than fact that worries me, Mr Jackson.

MR JACKSON:   Paragraph 5(3), for example, there is a point to which I have just been referring and as at paragraph 5(2).  The first one I was mentioning.

CRENNAN J:   I suppose what I am trying to say is that under a rectification proceeding under section 88, although it is cast in terms of an allegation that the mark is not capable of being distinctive – so it is picking up the verbiage of section 41(2) – that does not meant that the court looking at it has to somehow go through the same motions under section 41(5) as the registrar would. The court is really at large, if you like, to look at evidence of use, including the evidence of concurrent use, without even talking about what 41(5) means.

MR JACKSON:   Well, your Honour, that is so. We would accept that, with respect, but that is where we would say that the way in which the Full Court has gone about it has been to bring into play section 41(5) when it is not determinative of the issue.

CRENNAN J:   Well, I think they did that because the respondent said this is not a section 41.6 type of situation by which it would only have meant, as I would have understood it, we are not saying this mark is not inherently adapted to distinguish.  Our battleground is; it is to some extent inherently capable of distinguishing, but by reason of concurrent use, it is not factually distinctive as at 2001.

MR JACKSON:   Well, your Honour, what we would say then is that in doing that – your Honour, I see the time – but what we would say in relation to that is that what the court should have done was to look at the question brought into play by sections 41(2) and (3) and say, in relation to that question, one takes into account the extent of use by persons.

CRENNAN J:   I do not mean to be reductive saying this, Mr Jackson, but what I am trying to get at is, I suppose one argument here is that when you are determining ownership or proprietorship of a mark that is a geographical

word, no one is a proprietor until they acquire factual distinctiveness through use, and perhaps what you are leaning to is that the court did not approach the question from the point of view of looking really at which of two proprietors first had factual distinctiveness because first use seemed to be something that loomed large in the minds of all the judges where, in circumstances where if I first used Melbourne to indicate that I am selling shoes, well, the next day I cannot say that Melbourne is now factually distinctive of my goods, because it takes a period of time for any proprietor to be able to really be a proprietor of a geographical name because they need to build up sufficient use to have factual distinctiveness.

MR JACKSON:   That is contemplated, your Honour, by the concept of the honest trader that is referred to by Justice Kitto, in our submission, and that is what involved ‑ ‑ ‑

CRENNAN J:   I could not quite pick up that point in the notice of appeal.  I mean, I thought perhaps that is what 5(3) was getting at.

MR JACKSON:   Your Honour, I think it is at 5(2).

KIRBY J:   Yes, well, your time is up.

MR JACKSON:   Your Honours, as to other matters, we rely on our written submissions.

KIRBY J:   We will mark the matters Brown v Forestry Tasmania not before noon and all following cases will not be taken before noon.  Yes, Mr Catterns.

MR CATTERNS:   May it please the Court.  Your Honours, on the question of distinctiveness there are two distinct concepts, or separate concepts.  The first is inherent adaptation and in looking at inherent adaptation one looks solely at the capacity of the mark itself to distinguish, and, your Honours, that is where the construct of an honest trader comes in because a mark is not inherently adapted to distinguish if other traders might absent registration want to use it themselves.  That is why geographic marks were an archetype of that kind of market which is not inherently adapted to distinguish.

KIRBY J:   Just for my interest, tell me why is “Colorado” not inherently adapted to leather products or backpack products that are associated in the public’s mind with Colorado as a place of beauty, of walking, tourism and of backpacking.

MR CATTERNS:   Your Honour, because it is apt, that is the problem, because it is apt to describe or signify or allude to, as her Honour said, qualities of the goods, namely, that they are suitable for trekking, they are themselves ruggedness, et cetera.  Because they connote something about the qualities of the goods, other traders may care to use the same mark for the same ‑ ‑ ‑

CRENNAN J:   For descriptive purposes.

MR CATTERNS:   For descriptive purposes or to convey the same ‑ ‑ ‑

KIRBY J:   Do not you build up in the public’s mind over time an association between your mark assigned to Colorado and the ruggedness of the product?

MR CATTERNS:   Your Honour, that is why we agreed that this was a section 41(5) case and both sides fought it as a section 41(5) case. We did not say there is no possibility that a mark of this kind could by use become distinctive, but we said that under section 41(3) it was not sufficiently inherently adapted for the registrar to stop there or the court ‑ ‑ ‑

KIRBY J:   That picks up the line of authority that says normally place names are not inherently associated because they are inherently associated with the place.

MR CATTERNS:   Yes, your Honour, and this was a case slightly more subtle than the case before his Honour Justice Kitto where it was Michigan and heavy trucks and you knew heavy trucks came from Michigan, but, your Honours, the reason I say more subtle is, it is not just saying ‑ ‑ ‑

KIRBY J:   That is only a factual distinction really.

MR CATTERNS:   Yes, your Honour, yes, of course.  So, your Honours, our submission, of course, and it is based on the fact of our friend’s promotion for 10 or 15 years of their goods, associations with “Colorado” ranging from Colorado as a state of America per se to all those various attributes of holidays, trekking, ruggedness and so on, therefore, theoretically speaking, hypothetically speaking, another trader may wish to use the mark.  So far we are only focusing on the attributes of the mark,  So, your Honours, that means it is not inherently adapted to distinguish and one then moves to, as her Honour Justice Crennan points out, the second question which is factual distinctiveness and that has always been the structure of the consideration and the Act and section 41 codifies it.  We have always fought this case via the chain our friend put, your Honour, 88 to 57 to 41.

KIRBY J:   You might have, but Mr Jackson put a little bit of poison in the well, as far as I was concerned, by the comparative income of the two litigants.  He with $161 million and you with $1 million, it looks as though you are trying to trade off his mark.

MR CATTERNS:   There is no finding of that, your Honour.  Secondly, your Honour, it is concurrent use as ‑ ‑ ‑

KIRBY J:   It is the same general area though, goods ‑ ‑ ‑

MR CATTERNS:   Your Honour, we dwarf them in the relevant goods.  If I could ask your Honours just to look at the summary in our submissions at page 143.

KIRBY J:   Yes, I have read this.

MR CATTERNS:   Your Honours, the priority date is 2001.  In 1999 bags, backpacks, wallets and belts they sold 385,000 we sold 1.2 million and then the year before they were 621,000 and we are 1.2 million.  Your Honour, they have them on shoes, et cetera, that is where their many millions come up over the years.  We have sold more of the relevant goods particularly at the right period.

KIRBY J:   All right, I will try and put the poison out of my mind.  You go back to the three stage ‑ ‑ ‑

CRENNAN J:   I understand why you are going to 41(5), of course, because the statutory questions on rectification is whether it is capable of distinguishing, so the verbiage is there to be found in 41(2).  But 41(5) is all about what a registrar does when dealing with a mark and dealing with an applicant, sort of ex parte, if you like.  Section 88 is a different process.  All I am saying is, in a way the judges were perfectly entitled to approach this matter without construing 41(5), were not they?

MR CATTERNS:   Your Honour, we thought not, and I still submit not, because we submit we have got to find ahead and the chain that our friend suggested is the chain that gets one back to 41, and it has always been the same inquiry anyway, your Honour.

CRENNAN J:   Well, it has been the same inquiry, but all I am saying is, to the extent that their Honours’ judgment might be taken to mean that an applicant under 41(5) has a to run a proleptic opposition on behalf of somebody else out there in the marketplace, that would be a very significant point.

MR CATTERNS:   No, your Honour, but what does happen and what happened here – your Honour remembers we had a false suggestion argument.  What happened was, the examiner examines the mark and the examiner said “I think this mark is not inherently adapted to distinguish” ‑ ‑ ‑

CRENNAN J:   I saw that report.

MR CATTERNS:   - - - as the Full Court did, your Honour, and then our friends provided evidence of their sales and mentioned us, but in a way that we said was a false suggestion because it merely was dismissive of us, in effect.  That is not the point for today, but, your Honour, what happens is, as your Honour remembers, just the same as in the patent case, the examiner asks you at the level of acceptance ‑ ‑ ‑

CRENNAN J:   Well, asks the applicant at the level ‑ ‑ ‑

MR CATTERNS:   Yes, the applicant.

CRENNAN J:   - - - knowing that there are opposition proceedings to come later.

MR CATTERNS:   Of course, your Honour, and then if there is an opposition, if we had picked this up and opposed it, we would have brought forward the same evidence that we now rely on, but, your Honour, that did not happen and so we end up in the court, but we do submit it ends up back to 41(5) analysis.

CRENNAN J:   Well, it is a rectification analysis by reference to 41(5).

MR CATTERNS:   Precisely, your Honour.  So there is nothing, with respect, in our friend’s point about the honest trader.  It has nothing to do with a passing off type thing that the ‑ ‑ ‑

CRENNAN J:   You were not sued for passing off between 1993 and 2001, were you?

MR CATTERNS:   No, your Honour, but our friend did sue us for passing off and section 52 and ‑ ‑ ‑

CRENNAN J:   After having a registration?

MR CATTERNS:   Yes, your Honour, they did not sue us until ‑ ‑ ‑

CRENNAN J:   What I am saying is, you were not sued prior to the registration during the period of concurrent use?

MR CATTERNS:   That is right, your Honour, and his Honour Justice Finkelstein made something of that in holding for us on the

section 52 case.  So the well is not poisoned in that respect, but worse, with respect, it misses the point because his Honour Justice Kitto, picking up the W & G Du Cros Case, is talking about the inherent nature of the mark, nothing to do with a speedy trader wanting to trade off someone else’s reputation.  So our friends have nothing in that point.

Then the next question is as a matter of a pure factual question, as his Honour Justice Hayne suggested, which is, given the fact that this is a partially inherently adapted mark but it is not as bad as the colour green which is utterly uninherently adapted – because that is why we agree it was under 41(5) – given the lack of much inherent adaptation, you move to an analysis of, as your Honour says, factual distinctiveness and we won on that.  Our learned friends do not today attack, of course on special leave, the facts that we run on, that they were not factually distinctive, but they erect an argument based on a code theory which is that section 60, which deals with misleading marks, is the territory in which you deal with conflicting reputations. 

We say, no, that is a ground and it is a standalone ground but it does not exclude under section 41(5) the relevance of a rival concurrent reputation. So, your Honours, there is no legal point in that, we submit. There is no doubt we submit that in looking at factual distinctiveness you look at the realities of the market and if somebody else has been trading for 10 years under the same mark with respect to the same goods to a greater extent, then you are not going to win on factual distinctiveness. So we respectfully submit that the second point based on section 60 being in effect a code gets nowhere.

Your Honours, our friends did not address on the other two points, but we respectfully submit that they do have many rivers to cross.  In addition to the distinctiveness arguments, they have a number of proprietorship arguments that they have to make including the first one which is to say that backpacks are the same kind of thing as bags for the purposes of proprietorship and, your Honours, that is a classic question of judgment on which there is no judge against us.

Your Honours when we were to get down to the last special leave question we have to gone down many further levels including infringement and our friends can only rely on two obiter passages in his Honour Justice Allsop’s reasons.  So we respectfully submit that special leave should be refused.

KIRBY J:   Yes Mr Jackson.

MR JACKSON:   Could I just say, your Honours, on the question of infringement, the last matter my learned friend raised, your Honours will see that Justice Allsop was the only judge dealing with the supposed defences to infringement.  That issue would have to be decided by another court in any event if the matter were to go further.  Could I just say this, your Honours, that our learned friend refers to the volume of sales of the items under this head of the trademark, but the point we were seeking to make was that there had been very substantial sales of goods under the mark before the trade.

The second thing, your Honours, is this.  Our learned friend has referred to the observations in the Clark Equipment Company Case.  May I just take your Honours back to page 91 for a moment and the reference that was made was in relation to the fact that what is said is that it was just a test of looking, in effect, at the mark.  In that case one wonders really why Justice Kitto, careful in his observations, used the expression “and being actuated only by proper motives”.  It seems to serve no purpose unless it is to say that one is able to go beyond the test itself. 

Your Honours, our learned friends have referred to possible issues that might have to be dealt with.  We have referred to those in our submissions in reply. 

HAYNE J:   Mr Catterns said it was fought at trial as a 41(5) case and fought on appeal as a (5) case.  Is that right?

MR JACKSON:   Your Honour, section 41(5) was referred to by both sides. There were very different views about its relevance and its application and I am reminded that a concentration was saying that the case should be dealt with under section 60 if it were to be dealt with at all.

CRENNAN J:   Can I just ask, there was no issue at trial, as I understood it, that the concurrent use by the respondent was not honest, was there?

MR JACKSON:   Your Honour, I think that is the way in which the matter ended up, if I can put it that way, because your Honours will see that in the reasons for judgment of the primary judge at least there was a lack of belief of the evidence of one of the witnesses called for the other side who was the first person to start using “Colorado”.

CRENNAN J:   To choose the mark.

MR JACKSON:   Yes.

KIRBY J:   Mr Catterns, it is not a general reply on a reply, but Mr Jackson slipped in something on infringement which perhaps ought to have been dealt with in his submissions in‑chief.  Do you want to say anything on that?

MR CATTERNS:   No, your Honour, nothing additional.

KIRBY J:   The Court will take a short adjournment to consider its course in this matter.

AT 11.37 AM SHORT ADJOURNMENT

UPON RESUMING AT 11.42 AM:

KIRBY J:   Justice Crennan will give the reasons and pronounce the orders of the Court.

CRENNAN J:   The applicants seek special leave to appeal in a claim for trademark infringement.  The principal defence of the respondent is a counter‑claim for rectification of the register in respect of the applicants’ registration of the trademark “Colorado”, which is a geographical name.  The grounds upon which rectification is sought which are relevant to the present application are that the applicant is not the proprietor of its registered trademark.  Alternatively, if it is the proprietor, the mark is not capable of distinguishing certain of the applicants’ goods.

The basis for those claims is that for some years before the applicants’ application for registration both the applicant and the respondent concurrently used the mark “Colorado” on certain goods. An issue of substance and general importance was raised in the application concerning the proper construction of section 41(5) of the Trade Marks Act 1955 (Cth) as amended, but resolving that issue would not be determinative of the present dispute.

Whilst not to be taken to be agreeing with everything said by the Full Court (Kenny, Gyles and Allsop JJ) about section 41(5), we are nevertheless not persuaded that this is a suitable case for the grant of special leave. The conclusions in the case turn to a significant extent on matters of fact unaffected by issues of construction of section 41(5).

The application does not enjoy sufficient prospects of success to warrant a grant of special leave.  Special leave is refused with costs.

AT 11.44 AM THE MATTER WAS CONCLUDED