Riv-Oland Marble Co (Vic) Pty Limited v Settef S.p.A

The applicant, Riv-Oland Marble Co (Vic) Pty Limited, sought leave to appeal to the High Court of Australia against a decision concerning the registration of a trade mark. The dispute centred on the validity of this registration, with unchallenged findings at trial indicating that the mark was not distinctive of the registered proprietor's goods at the time of registration or since, but was instead distinctive of the applicant's goods and its use by the registered proprietor would likely cause confusion.

The High Court was required to determine fundamental questions regarding the nature and registrability of trade marks, specifically arising under section 28 of the relevant Act. The core issues involved whether a trade mark should be considered a badge of origin and quality that consumers can rely upon, or merely a mechanism for establishing priority and facilitating enforcement. This also encompassed the proper construction of section 28, particularly in relation to conduct that might render a mark unregistrable.

The applicant argued that the court below had erred in its construction of section 28. The majority in the court below had considered English and New Zealand provisions but found them of limited assistance. One judge indicated an inclination to uphold the trial judge's decision, acknowledging the difficulty of the question and expressing a leaning against a construction of section 28 that would deny or lead to the loss of registration due to blameworthy conduct by a proprietor.