Case: Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1
Outcome: cited
For the following reasons the circumstances of this case do not render it necessary to determine the extent, if at all, to which the above authorities differ on the issue of the proper approach to the exercise of the power of a prescribed court to order that the Register be rectified. I am satisfied that the respondent is "an aggrieved person" within the meaning of s 88(1) as it is, as I have found, using as a trade mark a logo that is deceptively similar to the Trade Mark (see [55]-[75]). The respondent has applied by its cross-claim for an order that the Register be rectified by cancelling the registration of the Trade Mark on a ground identified in s 88(2)(a). That ground has been made out (see [41] above). In the circumstances it seems to me that the respondent is entitled to an order that the Register be rectified by cancelling the registration of the Trade Mark unless sufficient reason appears for leaving it there (see Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 per Kitto J at 11). For the reasons that follow I am not satisfied that sufficient reasons appear for leaving the registration in place. 51 The applicants' submissions on the issue of the Court's discretion under s 88(1) were premised on the assumption that if the Court were to find that Anakin was not the owner of the Trade Mark at the critical time, its finding would be that Mempoll was the owner of the Trade Mark. I have in fact concluded that Gold Kings was the owner of the Trade Mark at the critical time. Should that conclusion be wrong, it would seem necessary to conclude that the ownership of the Trade Mark remains with Mempoll as its financial statements suggest. It is therefore appropriate to read the applicants' submissions as set out below on the basis that the references to Mempoll should also, indeed should primarily, be understood as references to Gold Kings: The applicants submit that the following should be taken into account in the beneficial exercise of the Court's discretion not to cancel or remove the Trade Mark: (a) the applicants and the persons standing behind the applicants apprehended that Anakin's use of the Trade Mark entitled it to be registered as owner; (b) Mempoll did not object to the use of the Trade mark by Anakin, nor its application for registration of the Trade Mark; (c) substantially the same persons own and control each of Mempoll and Anakin; (d) there is no real public interest served in cancelling the registration; (e) there is no useful purpose to be served by removing the Trade Mark from the Register simply for the purpose of, in effect, compelling a fresh application to be made. The Trade Mark, newly registered, but with additional expense would remain within the same group of companies and persons and be used in relation to the same restaurant services. The Trade Mark as registered should be preserved as an established mark associated with a business that has existed for over 25 years and which is well known to the public. (footnotes omitted) 52 After giving the matter anxious consideration I have concluded that, having regard to the totality of the evidence before me, it is not appropriate to refrain from ordering that the Register be rectified by cancelling the registration of the Trade Mark. To do otherwise would, as it seems to me, be to allow the applicants to benefit from the "informal" way in which their affairs have been handled (see [35] above). Whether or not the applicants so intended, this informality has resulted, as the evidence suggests, in failures to comply with requirements of the Corporations Act and earlier legislation concerning the proper operation of companies (see Ch 2G of the Corporations Act ). It has also resulted in failures, as the evidence suggests, to comply with the requirements of the 1920 Act with, as I infer, appreciable loss of revenue to the State of New South Wales (see Part 3 of the 1920 Act ). The applicants did not offer any acceptable explanation of these failures.