W D & H O Wills (Australia) Ltd v Rothmans Ltd

W. D. & H. O. Wills (Australia) Ltd. (the appellant) appealed to the Full Court of the High Court of Australia from an order of Fullagar J. that its trade mark "Pall Mall" be removed from the Register of Trade Marks. The application for removal was made by Rothmans Ltd. (the respondent), a United Kingdom company that had been unable to register its own "Pall Mall" trade mark in Australia due to the appellant's existing registration. The dispute centred on whether the appellant had made bona fide use of its "Pall Mall" trade mark in Australia for the requisite periods under section 72 of the *Trade Marks Act 1905-1948* (Cth).

The court was required to determine whether the appellant had made bona fide use of the "Pall Mall" trade mark in Australia for the six months preceding 15 September 1954, the date of the respondent's application for removal. Specifically, the court had to consider whether the importation and distribution of "Pall Mall" cigarettes from the United States to Australia, under arrangements involving the appellant and the British-American Tobacco Co. Ltd., constituted a "bona fide user" of the trade mark in Australia for the purposes of trade by the appellant, as defined by the Act.

The court reasoned that for a trade mark to be in bona fide use, it must be used in relation to goods for the purposes of trade, indicating a connection in the course of trade between the goods and the proprietor. The evidence showed that while "Pall Mall" cigarettes were imported into Australia, the entire trading in these cigarettes, including the offer, sale, payment, and delivery, took place in the United States. The cigarettes were purchased and paid for in the US by individuals or American corporations operating in Australia, and were then consigned to them. The court concluded that once the goods left the United States, they were no longer in the course of trade, and the trading in them had concluded with their acquisition by the consumer. The stickers affixed to the packets, stating they were "Made in U.S.A. for the proprietors in Australia, W. D. & H. O. Wills (Australia) Ltd.", were not considered sufficient to establish use of the trade mark in Australia for the purposes of trade by the appellant.

The appeal was dismissed, and the order for the removal of the trade mark from the register was affirmed. The court held that the whole trading in the cigarettes occurred in the United States, and it was only there that the trade mark was used for the purposes of trade.