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Re Carl Zeiss Pty Ltd's Application

Re Carl Zeiss Pty Ltd's Application

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Case Copied 2 May 1969 19 min read

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HIGH COURT OF AUSTRALIA

Kitto J.

RE CARL ZEISS PTY. LTD.'S APPLICATION

(1969) 122 CLR 1

2 May 1969

Trade Marks

Trade Marks—Removal from register—No use during period of three years—Whether discretion to refuse to remove—Principles upon &hich discretion should be exercised—Trade Marks Act 1955-1958 (Cth), s. 23 (1) (b), (4).*

Decision

May 2.
KITTO J. delivered the following written judgment: -
This is an application under s. 23 (1) (b) of the Trade Marks Act 1955-1958 (Cth) for the removal of trade mark No. 5018 from the register. The only ground upon which the application is pressed is that up to one month before the date of the application, that is to say up to 20th April 1965, 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 goods in respect of which it was registered, by the registered proprietor or a registered user. (at p3)

2. The respondents (I shall use that word as not including the Registrar of Trade Marks) are described in the notice of motion as "Carl Zeiss, Carl-Zeiss-Strasse, Jena, Germany, and V.E.B. Optik Carl Zeiss, Jena, Germany". It is common ground that the former of these descriptions refers to Carl Zeiss Stiftung, and the latter to V.E.B. Carl Zeiss, both of Jena in East Germany. (at p3)

3. The trade mark consists of the words "Carl Zeiss" over a horizontal line with the word "Jena" beneath the line, all being enclosed in an outline of the cross section of a lens, or a lens frame as it has been called. It is registered in class 8 in respect of optical instruments in 1907, the application for registration having been made in the name of "The firm trading as Carl Zeiss, of Carl-Zeiss-Strasse, Jena, Germany, Manufacturers of optical and philosophical instruments", and granted to "The firm trading as Carl Zeiss". There was no such firm if the word be taken to mean a partnership ; but at the address given a business of manufacturing optical and scientific instruments was then being carried on under the name "Carl Zeiss" by a legal entity the correct name of which was "Carl Zeiss Stiftung", and the trade mark was being used by that entity as a distinguishing mark for its goods. (The entity was also carrying on at Jena a glassworks enterprise under another "firm" name.) Apart from the Stiftung there was no person, partnership or entity carrying on any similar business at Carl-Zeiss-Strasse, Jena, and I find as a fact that the application for registration was made by the Stiftung, though under the name "Carl Zeiss". The description of the Stiftung as a "firm", both in the application and on the register, was at most a misdescription, thought I should prefer to call it an identification of the Stiftung by means of the name of its "house…

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: [1969] HCA 17
Decision Date: 2 May 1969

CaseChat Overview and Summary

The application concerned the registration of a trade mark, "ZEISS", by Re Carl Zeiss Pty Ltd. The application was opposed by Carl Zeiss Stiftung, who claimed to be the proprietor of the trade mark. The dispute ultimately came before Kitto J of the High Court of Australia.

The central legal issue before the Court was whether the applicant, Re Carl Zeiss Pty Ltd, had established a right to registration of the trade mark "ZEISS" in Australia, notwithstanding the opposition by Carl Zeiss Stiftung, who asserted prior and continuous use of the mark in Australia and elsewhere. This involved determining the respective rights of the parties to use the name "Zeiss" in relation to optical instruments and related goods.

Kitto J considered the history of the "Zeiss" name and its association with optical instruments, tracing its origins to the German optician Carl Zeiss. His Honour examined the evidence of use of the trade mark by both parties in Australia and the nature of their respective businesses. The Court applied principles of trade mark law relating to distinctiveness, prior use, and the potential for deception or confusion in the marketplace. The reasoning focused on whether the applicant's use of the mark was such that it had become distinctive of their goods, or whether it remained primarily associated with the opponent.

The Court found that the applicant had not established a right to registration of the trade mark "ZEISS" in Australia. Consequently, the application for registration was dismissed.

Orders