James F McKenzie and Co v Leslie and Leslie

This case involved an appeal to the High Court of Australia from decisions of the Registrar of Trade Marks. The appellants, James F. McKenzie & Co., sought to register two trade marks, one being the word "Excelsior" and the other a device incorporating that word, for use with baking powder. Their applications were opposed by the respondents, E. A. Leslie and J. R. Leslie, who were the registered proprietors of a trade mark containing the word "Excelsior" in New South Wales, registered under the state's Trade Marks Act 1865. The respondents argued that the appellants' marks were too similar to their own and that the appellants were not entitled to registration.

The primary legal issues before the High Court were whether the appellants' proposed trade marks so nearly resembled the respondents' registered trade mark as to be likely to deceive, and whether the appellants were entitled to registration in light of honest concurrent user in New South Wales. The Registrar had refused registration for New South Wales, limiting the appellants' registration to other states, on the grounds that the marks were too similar and that there had not been honest user by the appellants in New South Wales.

The High Court found that while the marks were not identical, there was evidence of honest concurrent user by the appellants in New South Wales for over 20 years, albeit in different districts to the respondents' user. The Court determined that the New South Wales Act did not confer an exclusive right to the word "Excelsior" in all circumstances, and that the Commonwealth Trade Marks Act 1905, particularly section 28, made provision for honest concurrent user. Applying section 44 of the Commonwealth Act, which allows for conditions to be imposed on registration, the Court held that to deprive the appellants of their long-standing trade mark would be unjust. Therefore, the appeals were allowed, with registration granted subject to conditions for use in New South Wales, including prefixing the word "McKenzie's" to the mark and not using it on yellow paper.