Rothman's Ltd v W D and H O Wills (Australia) Ltd

Rothman's Ltd. applied to the High Court of Australia for the removal of two trade marks, "Pall Mall" and a device incorporating those words, from the register. The trade marks were registered to W. D. & H. O. Wills (Australia) Ltd. The grounds for removal were non-use of the trade marks for a consecutive period of three years, as provided by section 72 of the Trade Marks Act 1905-1948. Rothman's Ltd. contended that W. D. & H. O. Wills (Australia) Ltd. had not genuinely used the trade marks in Australia for the requisite period, and that the marks should be removed to allow Rothman's Ltd. to register its own "Pall Mall" trade mark.

The court was required to determine whether W. D. & H. O. Wills (Australia) Ltd. had made bona fide use of the trade marks in Australia during the relevant periods. Specifically, the court had to consider whether the importations of "Pall Mall" cigarettes into Australia by private individuals, purchased directly from an American company and paid for in America, constituted use by the registered proprietor. The court also had to assess whether a private arrangement between W. D. & H. O. Wills (Australia) Ltd. and the British-American Tobacco Co. Ltd., whereby the former received a share of profits on such sales, amounted to bona fide use by the proprietor.

The court reasoned that for a trade mark to be considered in bona fide use under section 72, the use must be for the purposes of trade, by the proprietor or a registered user, in respect of the registered goods, and in Australia. The court found that the sales of "Pall Mall" cigarettes occurred in the United States, and that neither the British-American Tobacco Co. Ltd. nor W. D. & H. O. Wills (Australia) Ltd. had "used" the trade mark in any relevant sense in Australia. The court held that the private arrangement for profit sharing did not alter the reality that W. D. & H. O. Wills (Australia) Ltd. was a stranger to the transactions, and that the trade mark, in substance, denoted cigarettes manufactured or supplied by the British-American Tobacco Co. Ltd.

Consequently, the court ordered the removal of both trade marks from the register and ordered W. D. & H. O. Wills (Australia) Ltd. to pay Rothman's Ltd.'s costs.