Legal Research
Cases
Hunter Douglas Australia Pty Ltd v Perma Blinds

Hunter Douglas Australia Pty Ltd v Perma Blinds

Link copied

Case Copied 19 June 1969 38 min read

Contents

On this page

HIGH COURT OF AUSTRALIA

Kitto J. Barwick C.J., Menzies, Windeyer and Walsh JJ.

HUNTER DOUGLAS AUSTRALIA PTY. LTD. V. PERMA BLINDS

(1970) 122 CLR 49

19 June 1969

Trade Marks

Trade Marks—Registration of mark—Removal from register—Non-user for three years—Three-year period "elapsed during &hich the trade mark was a registered trade mark"—Whether critical date is date of application for registration or actual date of registration—Trade Marks Act 1955-1966 (Cth), ss. 23 (1) (b)*, 53 (2)**.

Decisions

1969, June 19.
KITTO J. delivered the following written judgment: -
Perma Blinds, a firm whose members are persons aggrieved within the meaning of sub-s. (1) of s. 23 of the Trade Marks Act 1955-1966 (Cth), appeals under sub-s. (7) of that section against decisions of the Assistant Registrar of Trade Marks dismissing applications by that firm under par. (b) of sub-s. (1) for the removal from the register of two trade marks, No. 174,066 and No. 174,067. In order to succeed with respect to either trade mark the appellant firm had to establish that up to one month before the date of the application for removal, which was 14th February 1966, a continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to the relevant goods (i.e., in one case venetian blinds, and in the other case awnings and blinds) by the registered proprietor or a registered user of the trade marks for the time being. The Assistant Registrar, after a hearing, held, for reasons which he gave in a careful statement, that the appellant's case had been made out so far as non-use of the trade marks was concerned, but that it failed because the trade marks had not been registered trade marks for as long as three years before 14th January 1966. (at p50)

2. The trade marks had in fact first been entered in the register on 21st February 1964. Consequently the Assistant Registrar's decision was plainly right if the expression in s. 23 (1) (b) "three years . . . during which the trade mark was a registered trade mark" refers, as prima facie it does, to a period during which the trade mark has in fact appeared on the register. The appellant firm relies, however, upon the provisions of s. 53 (2), namely that, subject to the Act, a trade mark shall be registered as of the date of the lodging of the application for registration, and that that date shall be deemed for the purposes of the Act to be the date of registration. (at p50)

3. The Assistant Registrar was of opinion that while s. 53 (2) has the effect that any rights arising from the registration of a trade mark commence not from the date upon which the registration is effected but from the date of the lodgment of the application for registration, its provisions are not relevant to…

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.

Keep reading for free

Create a free CaseChat account to read Hunter Douglas Australia Pty Ltd v Perma Blinds and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [1970] HCA 63
Decision Date: 19 June 1969

CaseChat Overview and Summary

Hunter Douglas Australia Pty Ltd (Hunter Douglas) appealed to the High Court of Australia against a decision of the Full Court of the Supreme Court of New South Wales, which had affirmed a judgment in favour of Perma Blinds. The dispute concerned the infringement of a patent for a type of blind, specifically the method of operating the blinds. Hunter Douglas, the patentee, alleged that Perma Blinds had infringed its patent by manufacturing and selling blinds that employed the patented mechanism.

The High Court was required to determine whether the blinds manufactured and sold by Perma Blinds infringed the patent held by Hunter Douglas. This involved a close examination of the patent claims and a comparison of the Perma Blinds product against those claims to ascertain whether the essential integers of the patent were present in the alleged infringing product. A key issue was the interpretation of the patent claims and whether Perma Blinds’ construction fell within the scope of those claims, either literally or by equivalence.

The Court, applying the principles of patent law, undertook a detailed analysis of the patent specification and the evidence presented regarding the construction and operation of both the patented blinds and those manufactured by Perma Blinds. The judges considered the doctrine of equivalents, which allows for infringement even if a product does not precisely match the wording of the patent claims, provided it performs substantially the same function in substantially the same way to achieve substantially the same result. After careful consideration of the technical aspects and the legal tests for infringement, the High Court found that Perma Blinds’ product did not infringe the patent. The appeal was therefore allowed, and the judgment of the Supreme Court of New South Wales was set aside.

Orders