Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd

Amalgamated Tobacco Corporation Ltd. (the applicant) sought to have a registered trade mark, "Yanx," expunged from the register of trade marks. The mark had been registered by Menzala Cigarette Co. Ltd. (the respondent) on 30th September 1946, for use in relation to cigarettes. The applicant contended that the registration was wrongly made. The matter was heard in the High Court of Australia before Williams J.

The primary legal issue before the court was whether the registration of the "Yanx" trade mark was wrongly made, specifically concerning whether the respondent was the proprietor of the mark at the time of registration, and whether the mark was registerable under the Trade Marks Act 1905-1936. This involved determining what constituted "user" of a trade mark in Australia, particularly when goods were ordered and shipped to Australia but had not yet arrived at the time of registration. A secondary issue was whether the mark was deceptive, suggesting the cigarettes were American when they were made in England.

Williams J. found that a trade mark is used in Australia if it designates goods offered for sale in Australia under that mark, irrespective of whether the goods are physically present in Australia at that moment. The evidence showed that prior to the respondent's registration date, the applicant's predecessor had manufactured "Yanx" cigarettes, offered them for sale in Australia, and received orders for them, with shipments en route to Australia. The respondent had never used the "Yanx" mark in Australia prior to its application for registration. Consequently, the court held that the respondent was not the proprietor of the mark at the time of registration, as the applicant's activities constituted prior user in Australia. The court also considered the deceptive nature of the mark, noting that the prominent use of "Yanx" combined with stars and stripes was likely to mislead consumers into believing the cigarettes were American, despite the "Made in England" notation.

The court ordered that the register of trade marks be rectified by expunging the trade mark No. 88717. The respondent was ordered to pay the applicant's costs of the motion, with a set-off for costs occasioned by an adjournment granted to the applicant.