Seven Up Co v OT Ltd

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.