Trade Mark—Application for registration—Opposition by Massachusetts corporation using similar mark in respect of similar goods—Reputation in Australia at time of application—Proprietorship—"Being likely to deceive"—Trade Marks Act 1905-1948 (Cth), ss. 25, 32, 45, 114.
Decision
1963, January 29. KITTO J. delivered the following written judgment:- This is an appeal against a decision of an Acting Deputy Registrar of Trade Marks granting an application for registration of a trade mark. As the application was lodged on 12th October 1956, that is to say before the commencement of the Trade Marks Act 1955 (Cth) (1st August 1958), the jurisdiction of the Court to entertain the appeal exists under s. 45 of the Trade Marks Act 1905-1948 (Cth), and the appeal must be decided on the provisions of that Act: see s. 5(4) of the 1955 Act. (at p303)
2. The trade mark of which registration was sought and granted consisted of the word "POLYKIN", and the registration is in class 50(10) in respect of "coverings and wrappings for use in the heat, moisture and/or electrical insulation of pipes, boilers, roofing and other articles used in industry, none of the said goods being in the nature of paints, enamels or varnishes". The application was and is opposed by the present appellant, a Massachusetts corporation, on the ground, broadly, of the similarity of the proposed mark with a mark consisting of the word "Polyken" which the appellant has used for some years in respect of similar goods. It is obvious, and the respondent agreed, that the two words so closely resemble one another that if they were used on the same description of goods confusion would be likely to result. Accordingly a question arises for decision under s. 114 of the Act. (at p303)
3. There is really no other question in the case. Two grounds of opposition independent of s. 114 have been mentioned in the course of the argument, but they may be disposed of briefly. One is the ground provided by s. 25. That section, however, applies only where there is identity or similarity between the mark for which registration is sought and a mark belonging to a different proprietor which is already on the register. Since "Polyken" is not on the register, the section has no bearing on the present case. The other ground is that the respondent (it is a firm, but for convenience I shall speak as if it were a corporation) is not entitled to registration of the mark, because it has not made good the assertion necessarily involved in its application that it is the "proprietor" of the mark in the sense of s. 32. The respondent's selection of the word "Polyken", it is said, is an obvious appropriation of "Polyken" with an immaterial variation, and "really and in conscience" (as Isaacs J. would have expressed it: Blackadder v. Good Roads Machinery Co.…
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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Details
AGLC
Kendall Co v Mulsyn Paint and Chemicals [1963] HCA 1
Case
[1963] HCA 1
Decision Date
CaseChat Overview and Summary
The application concerned the registration of a trade mark by Smith Hayden & Co Ltd. The Registrar of Trade Marks opposed the registration.
The primary legal issue before the Court was whether the proposed trade mark, which consisted of the word "HAYDEN'S" accompanied by a drawing of a kangaroo, was capable of distinguishing the goods of Smith Hayden & Co Ltd from the goods of other persons. This involved an assessment of whether the mark was inherently adapted to distinguish or whether it had acquired distinctiveness through use.
Kitto J. considered the evidence of use of the mark and noted that the word "HAYDEN'S" alone had been used for a considerable period. His Honour reasoned that the addition of the kangaroo device, while potentially attractive, did not necessarily imbue the mark with a capacity to distinguish the goods in the absence of evidence demonstrating that the public associated the combined mark with the applicant's goods. The legal principle applied was that a trade mark must, in fact or by its inherent nature, serve to distinguish the goods of the proprietor from those of other traders.