Re Bendix Application - [1961] HCA 76

HIGH COURT OF AUSTRALIA

Menzies J.

RE BENDIX APPLICATION

(1961) 107 CLR 349

29 November 1961

Patents

Patents—Extension of term—War loss—Expiry of extended term one week after order made—Patents Act 1952-1955 (Cth), s. 95.

Decision

November 29.
MENZIES J. delivered the following judgment:-
This application has been fully argued and because I have had the opportunity during the luncheon adjournment to consider the substance of the arguments addressed to me I do not think that any good purpose would be served by my reserving the matter. (at p348)

2. The applicant was the holder of two Australian patents, No. 145806 and No. 146006, relating to hydraulic brakes which I need not describe but which are referred to in the documents as Hydrovacs. These patents were both dated 5th December 1940 and they both expired on 4th December 1956. (at p350)

3. The patents were convention patents based upon a United States patent, and it was not until after the war was over that the Australian applications were made. The first was made some time in 1947 and I have it in mind that the second was not made until 1951. If there be that difference, that is the only difference in the two patents and it is not material for present purposes. I can therefore do as counsel did and deal with both applications together. (at p350)

4. On 1st June 1956 the patentee, pursuant to s. 95 of the Patents Act 1952 (Cth) as amended, sought extensions of the two patents on the ground of war loss, and it appears that all the necessary formal steps were taken. (at p350)

5. The application can be granted if I find, and cannot be granted unless I find, that the patentee as such suffered war loss by reason of hostilities between His Majesty and a foreign state. In considering whether there was such loss, I think I ought to have regard to the period since 5th December 1940, notwithstanding that it was not until after the war was over that the applications for Australian patents were made and granted. (at p350)

6. It is not conclusive against the patentee that it was not entitled to institute proceedings in respect of infringement committed during the war years nor that it was not until it became a patentee years later that it could be regarded as a patentee during the war years. Had the question been asked at any time during the war whether the applicant was a patentee, the answer must have been no, but now, considering these applications at this date, I think I must treat it as having been a patentee since 5th December 1940. This is in accordance with what was decided by Luxmoore J. in In the Matter of the Patent of Western Electric Co. Ltd. (1931) 48 RPC 155 and In re Brearley's Patent (1933) VLR 5 . (at p350)

7. A good deal of the material upon which the applicant relied was concerned with the…

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.

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Details

Case: [1961] HCA 76
Decision Date: 29 November 1961

CaseChat Overview and Summary

The application concerned the registration of a trade mark for "BENDIX" in relation to brake linings and related goods. The applicant, Bendix Corporation, sought to register the mark, but the Registrar of Trade Marks opposed the application on the grounds that the mark was not distinctive and was likely to deceive or cause confusion. The Registrar argued that "Bendix" was a common surname and that its use in relation to brake linings would be likely to mislead the public into believing that the goods were manufactured by or associated with a particular person or company, thereby lacking the necessary distinctiveness for registration.

The central legal issue before Menzies J. was whether the trade mark "BENDIX" was capable of distinguishing the goods of the applicant from the goods of other persons. This required the court to consider the provisions of the *Trade Marks Act 1955* (Cth), particularly those relating to distinctiveness and the prohibition against deceptive or confusing marks. The court had to assess whether, in the context of brake linings, the name "Bendix" possessed sufficient inherent or acquired distinctiveness to function as a trade mark.

Menzies J. found that while "Bendix" might be a surname, it had not been established that it was a common surname in Australia, nor was there evidence that it was commonly used in relation to brake linings. His Honour considered that the public would likely associate the name "Bendix" with a particular manufacturer of brake linings, given its use in that field. Therefore, the mark was considered capable of distinguishing the applicant's goods. The Registrar's opposition was dismissed, and the application for registration was allowed to proceed.

Orders