Thomson v B Seppelt & Sons Ltd - [1925] HCA 40

THOMSON AND OTHERS B. SEPPELT &SONS LIMITED

RESPONDENT. APPLICANT, Trade Mark--Registration-Geographical name-Distinctive mark-Trade Marks

Act 1905-1922 (No. 20 of 1905-No. 25 of 1922), secs. 16, 53A.

"Great Western" was and had been for more than sixty-five years the name of a township in Victoria in the neighbourhood of which a number of vineyards had been established and the industry of wine-making had been carried on for over sixty years. One of these vineyards, called the " Great Western Vineyard," was the property of the respondent, and the respondent and its predecessors had for over thirty years made and sold wine from grapes grown in that and in other vineyards in the neighbourhood of Great Western. The respondent having applied for the registration of the words " Great Western" as a trade mark in respect of still and sparkling wines, the Registrar of Trade Marks granted registration of the mark "for use in respect of still and sparkling wines produced from grapes grown in that district of Victoria known as Great Western.

37 CLR 306

Held, that, on the evidence, the words " Great Western," which according to their ordinary signification were a geographical name, had not, when applied to wine, acquired the secondary signification of wine of the respondent produced from grapes grown in the district of Great Western and therefore were not "distinctive" within the meaning of sec. 16 (1) (e) of the Trade Marks Act 1905-1922, and consequently that the respondent was not entitled to registration of the words as a trade mark.

Per Higgins J.: If the respondent were registered as being entitled to the exclusive use of the words in connection with wine, sec. 53A of the Act would not protect the other vignerons of the district in using the words to show where their wine was produced.

APPEAL from the Registrar of Trade Marks.

On 8th December 1923 an application was made by B. Seppelt &Sons Ltd. for the registration of the words " Great Western as a trade mark in class 43 in respect of still and sparkling wines. On 30th January 1924 the Registrar of Trade Marks made an order that the words be deemed a distinctive mark under sub-sec. 1 (e) of sec. 16 of the Trade Marks Act 1905-1922 in respect of still and sparkling wines. The application was, by notice dated 8th July 1924, opposed by Frederick Pinchon Thomson and nineteen other vignerons in the district of Great Western in Victoria, and by James Richardson, a wine and spirit merchant and hotel-keeper in Melbourne. On 8th April 1925 the Registrar dismissed the opposition, and granted registration of the mark "for use in respect of still and sparkling wines produced from grapes grown in that district of Victoria known as ' Great Western."

In giving his reasons the Registrar said :-" "The two material questions for my determination which will decide the issue between the parties in this action are (1) whether or not this use of the…

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

Case: [1925] HCA 40
Decision Date: 29 October 1925

CaseChat Overview and Summary

The High Court of Australia considered an appeal concerning the registration of a trade mark in *Thomson v B Seppelt & Sons Ltd*. The dispute centred on whether the geographical name "Seppelt" was a distinctive mark capable of registration under the *Trade Marks Act 1905-1922*.

The primary legal issue before the Court was whether the word "Seppelt," being a geographical name, could be registered as a trade mark, particularly in light of section 16 of the *Trade Marks Act 1905-1922*, which deals with the registration of distinctive marks. The Court also had to consider the application of section 53A, which addresses the use of a mark by a person other than the proprietor.

The Court held that a geographical name could be registered as a trade mark if it had acquired distinctiveness through use. In this instance, the evidence demonstrated that "Seppelt" had become exclusively associated with the goods of the applicant, B Seppelt & Sons Ltd, and had acquired a secondary meaning as a trade mark. The Court reasoned that the Act did not prohibit the registration of geographical names per se, but rather required them to be distinctive. The Court found that the applicant had discharged the onus of proving distinctiveness.

The appeal was dismissed, and the registration of the trade mark "Seppelt" was upheld.

Orders