Case: Aston v Harlee Manufacturing co [1960] HCA 47 ; (1960) 103 CLR 391
Outcome: considered
Malibu Boats West Inc v Catanese (2000) 51 IPR 134 it was said by Finkelstein J, at [25]: ... Proprietorship can arise in one of two ways. In the case of a mark that has never been used, the proprietor is the person who is the "author" of the mark and who has applied for its registration with the intention of using the mark: Re Hudson's Trade Marks (1986) 32 Ch D 311 at 319; Seven-Up Co v OT Ltd [1947] HCA 59 ; (1947) 75 CLR 203 ; [1947] ALR 436 ( Seven-up Co); Shell Co of Australia Ltd v Rohm &amp; Haas Co [1948] HCA 27 ; (1949) 78 CLR 601 at 626 [1948] HCA 27 ; ; [1949] ALR 661 ; 1A IPR 438 ( Shell Co of Australia ). Authorship in this context is not confined to the person who originated the mark. A person may be the author even if he has copied a foreign mark; he or she need only be the first person to have applied the mark in Australia: Aston v Harlee Manufacturing co [1960] HCA 47 ; (1960) 103 CLR 391 at 400 [1960] HCA 47 ; ; [1960] ALR 605 citing Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corp Ltd [1951] HCA 28 ; (1951) 82 CLR 199 at 202 ( Re Registered Trade Mark "Yanx"). A person is also the proprietor of a mark if, at the time of application for registration, he or she is entitled to the exclusive use of that mark under the common law: Shell Co of Australia at 625, 627. At common law that is the person who first used the mark. For Danley, it was submitted that: It cannot affect the Applicant's proprietorship of the trade mark in Australia, by authorship or by first use, that the trade mark belongs to one of the Respondents in foreign countries. Indeed, it is clear that the owner of a trade mark in Australia "... may be the "author" of a trade mark, although he has deliberately copied or adapted a mark registered in a foreign country in respect of the same description of goods. [ Aston v Harlee Manufacturing Co [1960] HCA 47 ; (1960) 103 CLR 391 at 400]. It was accepted that: It would be otherwise if the foreign owner (one of the Respondents or a company associated with them) had previously used the mark in Australia. In Aston it was said by Fullagar J, at 400: Again, it is otherwise if the opponent or person aggrieved has used the mark, for prior user by the foreign proprietor negatives the claim of the Australian applicant to "authorship". But the user must be user in Australia: the most extensive user by another person in foreign countries will not avail by itself to defeat an applicant for registration in this country. It has been said, however, that the Courts frown on these borrowings from abroad, and very slight evidence of user in Australia has been held sufficient to protect the proprietor of a foreign trade mark: The Seven Up Co v O.T. Ltd [1947] HCA 59 ; [(1947) 75 CLR 203 at 211]... But, where there has clearly been no user at all in Australia, an applicant for a trade mark identical with a mark registered in a foreign country is entitled to be regarded, so far as Australia is concerned, as the "author" of the mark. I can see no reason why that should not be so. (See also the case of Thai Gypsum Products Co Ltd v Waring and Gillow Pty Ltd (1994) 29 IPR 99). It was submitted that the respondents used the Trade Mark "Pecaform" in 33 countries, and they have used "Pecaform" and "Pecafil" in 66 countries. That conduct is irrelevant to the question of first use of the Trade Mark in Australia, as the observations from Aston set out above indicate. The question of first use in Australia being by Danley is challenged by the respondents. It was said, first of all, that a Mr O'Grady of Smorgon said: Smorgon was the first company to bring Pecaform product into Australia from Germany before Danley, sometime in the late 1980s. This hearsay evidence, says Danley, is not borne out by the facts which show that there was a single order by Smorgon on 10 August 1989, and a shipment to Smorgon of "Pecafil" product.