Murray Goulburn Co-Operative Company Ltd v The New South Wales Dairy Corporation
[1990] FCA 81
•12 Mar 1990
JUDGMENT No. .... H! ##.* !v? #a,a ?,L
IN THE FEDERAL COURT OF AUSTRALIA )
| NEW SOUTH WALES DISTRICT REGISTRY ) | NO. G218 of 1989 |
| GENERAL DIVISION |
ON AN APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA
B E T W E E N :
MURRAY GOULBURN CO-OPERATIVE
COMPANY LIMITED
Appellant
- and -
THE NEW SOUTH WALES DAIRY
CORPORATION
Respondent
CORAM: LOCKHART, PINCUS & VON DOUSSA JJ.
DATE: 12 MARCH 1990
| PLACE: SYDNEY | 19 MAR 1990 |
REASONS FOR JUDGMENT
THE COURT
dismissed.
On 12 February 1990 the Court published its reasons for
judgment in this matter and said in the three last paragraphs:
"In summary, we consider the appeal should be allowed. The declaration that the appellant's use of the MOO mark in the course of trade and in relation to milk and flavoured milk was likely to deceive or cause confusion within the meaning of sub.s.28(a) of the Trade Marks Act, and the order for rectification of the Register, should be set aside. The consequential injunction should also
be set aside. The cross-appeal should be The respondent should pay the costs of the appellant and of Healthway Dairy Products Pty Ltd of the proceedings at first instance and the costs of the appellant of this appeal.
The trial Judge, on the basis of his findings that the Register should be rectified by expunging the MOO entry in relation to milk under s.22, and that the appellant had established sufficient use of the MOO mark only in respect of flavoured milk and cheese, proceeded to exercise his discretion by ordering the expungement of the balance of the H00 entry for non-use so as to achieve a result whereby the appellant retained rights only in respect of cheese. The success of the appeal by the appellant against the order for rectification under s.22 displaces the basis for the exercise of the discretion of the trial Judge. It is necessary that the discretion in relation to the non-use application be exercised afresh. We will hear the parties as to the order which should now be made on that application."
On Friday 16 February 1990 the Court heard further submissions from counsel as foreshadowed in the earlier reasons.
Counsel for the appellant submitted that the Court should exercise its discretion afresh in relation to the respondent's application for removal of the appellant's trademark "MOO"
pursuant to S. 23 of the Trademarks Act 1955 ("the Act"); that the position at the end of the trial before the learned primary
| Judge was that the appellant retained its trademark with respect | to cheese only and that the effect of its success in the appeal | |
| is that the appellant retains the 1400 mark for at least milk and milk products as well as cheese. It was further submitted on behalf of the appellant that the Court should now exercise its discretion leaving the appellant's MOO registration intact or alternatively modify the order of the prlmary Judge so that the Register is rectified by limiting the goods in respect of which the trademark "MOO" is registered to cheese, milk and milk products. Counsel submitted that the following three matters constituted "sufficient reason" for leaving the trademark "MOO" upon the Register without limitation, relying upon what was said by Kitto J. in Re Car1 Zeiss Pty. Limited's Application (1969) 122 CLR 1 at 11 that "omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there". The three matters upon which reliance was placed by counsel for the appellant were: | ||
| (a) there was no evidence of any past, present or intended use by the respondent of its "MOOVE" trademark with respect to any products other than flavoured milk. Reference was made to - Re KODIAK Trade Mark [l9871 RPC 269 at 273; | ||
| (b) there was evidence before the primary Judge of contemplated use by the appellant of its "MOO" mark upon other products; and | ||
| ||
| weigh in favour of the exercise of discretion against it. | ||
| Counsel for the respondent submitted that the correct order to make in light of our earlier reasons for judgment is to modify the order made by the primary Judge, which limited the goods in respect of which the appellant's trademark was registered to cheese, by allowing the appellant's trademark to remain on the Register with respect to "cheese and flavoured milk" only. It was submitted that this was the consequence of this Full Court's | ||
| decision and that the mark should not otherwise be allowed to remain on the Register. It was also submitted that the matters relied upon by counsel for the appellant to maintain the registration of the "MOO" mark intact were in substance dealt with by the primary Judge and answered against the appellant. | ||
| Much of what counsel for the appellant asked us to consider in the exercise of the Court's discretion was submitted to and dealt with by the primary Judge. His Honour considered the submission that in the exercise of its discretion the Court should limit the expungement of the M00 registration so that, whilst "milk" was excised therefrom, the balance of the registration should be preserved. His Honour referred to the judgment of Kitto J. in the Car1 Zeiss Case and said, in our view correctly, that Kitto J. approached the question of the exercise of discretion under sub-S. 23(1) of the Act, first, (at 5-6) by referring to what was said in English decisions to the effect that "exceptional circumstances" may arise which would make it just to refuse an application for removal and then (at 11) by | ||
| ||
| Gummow J. considered the submission of counsel for the appellant that "sufficient reason" appeared from documentary and oral evidence given on behalf of the appellant in confidential session which dealt with the question of possible "line" extensions by the appellant. This was in substance the same submission that was made to us by counsel for the appellant that there was evidence before the primary Judge of contemplated use by the appellant of its mark upon other products. His Honour dealt with that submission by saying that the evidence did not disclose, either at the relevant date for the non-use application (6 June 1988) or at the date of the hearing: |
"... the existence of anything like a firm purpose
on the part of the first respondentr (the appellant); at most, there was consideration of what conceivably might be done at some future time. Nor, in my view, is there substance in the submission by the first respondent that there is some weight in its favour from the circumstance that in this case there has been user in respect of some, albeit not all, descriptions of goods falling within the category 'dairy products'. As the first respondent readily conceded; the public interest in the integrity of the Register entitles the applicant (the respondent) to an order for removal from the Register unless sufficient reason appears for leaving the registration there, subject only to the excision of 'milk'.
For its part the applicant pointed in particular to the circumstances that the mark had been registered with effect from 26 August 1966, that there had been use by the second respondent (Healthway Dairy Products Pty. Limited) of the trade mark upon a reduced fat cream product for about seven years preceding March 1974, that there then had been a complete hiatus until the first respondent had become registered proprietor in the circumstances described in the reasons for judgment; there was then use in relation to
milk. cheese, and limited use in relation to flavoured In my view, no sufficient reason appears for leaving the registration MOO intact in respect of any goods for which it would otherwise be liable to removal for non-use. Accordingly, the registration should remain only in respect of
cheese. "
We accept the submission of counsel for the respondent that the proper approach under both sub-ss. 22(1) and 23(1) of the Act is that, if the condition of exercise of the Court's power has been established, the entry of the mark should be expunged or the mark should be removed, as the case may be, "unless sufficient reason appears for leaving it there". In addition to Kitto J. 'S observations in the Carl Zeiss Case counsel for the respondent referred us to - re "Astronaut" Trade Mark [l9721 RPC 655 at 672 and Ritz Hotel Limited v Charles of the Ritz Limited (1988) 15 NSWLR 158 per McLelland J. at 221, cases which reflect the approach of Kitto J. in the Carl Zeiss Case.
we are satisfied that the trademark "MOO" should be left on the Register with respect to cheese and flavoured milk but not otherwise. No "sufficient reason" has been established for leaving the appellant's mark "MOO" on the Register without diminution.
We do not propose to make orders today but, as requested by counsel for both parties, we shall direct the parties to bring in short minutes to give effect to these reasons for judgment and those of 12 February 1990.
In our earlier reasons we said that "the respondent should pay the costs ... of Healthway Dairy Products Pty. Limited of the proceedings at first instance ...". Counsel for the respondent in argument on 16 February 1990 asked the Court to reconsider that order. He submitted that no order should be made against the respondent with respect to the costs of Healthway Dairy Products Pty. Limited of the proceedings at first instance because it played no active
part in them which led the primary Judge to make no order for costs for or against it. We agree with this submission, but otherwise the order for costs should be as we indicated in our earlier reasons. The appellant must pay the costs of the respondent of the hearing before the Court on 16 February 1990.
I certify that this and the preceding six
(6) pages are a true copy of the reasons
for judgment herein of the Court.
Associate 4 0 - Date: 12 March 1990
Counsel for the Appellant: Mr. M. Einfeld Q.C.
Ms. R. KayeSolicitors for the Appellant: Swaab & Associates Counsel for the Respondent: Mr. J.N. Ireland
Solicitors for the Respondent: Clayton Utz Date of Hearing: 16 February 1990 Date of Judgment: 12 March 1990
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