RESPONDENTS. RESPONDENTS, Trade Mark-Rectification of register-Expunging mark-Similar mark used
extensively in foreign country-No user in Australin-Absence of fraud Knowledge of existence of similar foreign mark-Trade Marks Act 1905-1936 (No. 20 of 1905-No. 75 of 1936), 88, 71, 72, 114.
In the absence of fraud it is not unlawful for a person to become the regis- tered proprietor under the Trade Marks Act 1905-1936 of a mark which has been used, however extensively, by another person as a mark for similar goods in a foreign country provided the foreign mark has not been used at all in Australia at the date of the application for registration.
The knowledge that a mark is registered in another country is irrelevant in considering whether the registration of the mark would be likely to cause deception in Australia.
Decision of W illiams J. affirmed.
APPEAL from Williams J.
Upon an application made on 12th March 1940 on behalf of the Seven Up Company, a corporation duly registered and incorporated under the laws of the State of Missouri, United States of America, for the registration of the trade mark
(hereinafter referred to as "7Up") in class 44, the Registrar of Trade Marks stated that pursuant to S. 25 of the Trade Marks Act 1905-1936 he would not register that trade mark because of the prior registration of the trade mark
(hereinafter referred to as "8 UP") in the UP same class by O.T. Ltd. of Prahran, Victoria.
The Seven Up Co. was at all material times registered pursuant to the laws of the United States of America as the proprietor of trade mark "7Up"
SEVEN UP
By a motion taken out under SS. 71 and 72 of the Trade Marks Act 1905-1936, the Seven Up Co. sought the rectification of the register of trade marks by expunging, or, alternatively, removing therefrom the entry relating to the trade mark 8 UP " on the grounds (i) that the entry of that trade mark on the register of trade marks was wrongly made; and (ii) that there had been no bona-fide user of that trade mark for a consecutive period of three years since the date of the last registration thereof.
The facts appear in the judgments hereunder. R. L. Taylor, for the applicant. Hardie and Macfarlan, for the respondent company. Thomas, for the Registrar of Trade Marks.
Cur. adv. vult.
WILLIAMS J. delivered the following written judgment - This is a motion made by the Seven Up Company, which is incorporated in the United States of America, under SS. 71 and 72 of the Trade Marks Act 1905-1936 to rectify the register of trade marks by removing therefrom the trade mark " 8 UP" of which the respondent, an Australian company incorporated in Victoria, is the registered proprietor for a term of fourteen years from the date of application on 17th August 1939. The trade mark is registered in class 44 in…
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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AGLC
Seven Up Co v OT Ltd [1947] HCA 59
Case
[1947] HCA 59
Decision Date
CaseChat Overview and Summary
The Seven Up Company (the applicant) sought to have the trade mark "8 UP", registered by O.T. Ltd. (the respondent), expunged from the Australian trade marks register. The applicant argued that the registration was wrongly made and that the mark had not been genuinely used for a consecutive period of three years. The application was heard by Williams J. in the Supreme Court of Victoria, who dismissed the motion. The applicant then appealed to the Full Court of the High Court of Australia.
The legal issues before the Full Court were whether the registration of the "8 UP" trade mark was wrongly made, and consequently, whether the register should be rectified by expunging the mark. Specifically, the court had to determine if the respondent's registration was invalid due to the prior extensive use of a similar mark, "7Up", by the applicant in foreign countries, even though the applicant's mark had not been used in Australia. The court also considered whether the respondent's knowledge of the applicant's foreign trade mark constituted fraud or disentitled the respondent to registration under section 114 of the *Trade Marks Act 1905-1936*.
The Full Court affirmed the decision of Williams J., holding that in the absence of fraud, it is not unlawful for a person to register a trade mark that has been extensively used by another in a foreign country, provided the foreign mark has not been used in Australia at the time of the application for registration. The court reasoned that for the purpose of determining distinctiveness and potential deception, regard must be had solely to the Australian market. Knowledge of a foreign trade mark's existence or registration abroad is irrelevant unless it has led to actual use or identification of the foreign mark within Australia. The court found no evidence of fraud or breach of confidential relations, and no use of the "7Up" mark in Australia by the applicant, nor any association of the mark with the applicant's goods in the minds of the Australian public.
Consequently, the appeal was dismissed. The court concluded that the respondent's registration of "8 UP" was lawful because the applicant's "7Up" mark had not been used in Australia, and therefore, the respondent's knowledge of the foreign mark did not render its own registration wrongful or likely to deceive the Australian public.