Farley (Aust) Pty Ltd v JR Alexander & Sons (Qld) Pty Ltd

Farley (Aust.) Pty Ltd applied to the High Court for the removal of the trade mark "Buz" from the register, which had been registered by J. R. Alexander & Sons (Qld) Pty Ltd for mosquito coils. The applicant contended that the original registration was obtained by fraud and that the mark offended other provisions of the Trade Marks Act 1905-1936. The application was made more than seven years after the registration date, meaning the grounds for removal were limited to those excepted from the operation of section 51A of the Act, specifically fraud.

The court was required to determine two primary legal issues. Firstly, whether the applicant, Farley (Aust.) Pty Ltd, qualified as a "person aggrieved" within the meaning of section 71 of the Trade Marks Act, thereby having standing to seek rectification of the register. Secondly, the court had to ascertain whether the registration of the trade mark "Buz" by J. R. Alexander & Sons (Qld) Pty Ltd was procured by fraud, as contemplated by section 51A of the Act.

Williams J. found that the applicant was indeed a "person aggrieved" because it had used the mark "Buz" for insecticides prior to its registration, was still in business, and the registration of the mark by the respondent would materially assist the respondent in any potential legal action against the applicant for passing off or infringement. Regarding the issue of fraud, the court found that the respondent's managing director, Bennetts, had engaged in dishonest conduct. Bennetts had made a promise to the applicant's managing director, Goldman, to cease using the mark "Buz" once existing stock was depleted, a promise made in response to Goldman's assertion of the applicant's rights to the mark. However, Bennetts subsequently applied for and obtained registration of the mark behind Goldman's back, after having previously searched the register and found that the mark was not registered. The court concluded that this conduct constituted fraud, not limited to fraud on the Registrar but encompassing fraud on another trader, and that the registration was therefore invalid.

Consequently, the court ordered that the register of trade marks be rectified by expunging the trade mark "Buz" and ordered the respondent to pay the costs of the applicant and the Registrar of Trade Marks.