Case: Burger King Corporation v Registrar of Trade Marks [1973] HCA 15 ; (1973) 128 CLR 417
Outcome: followed
applicant submitted that all of the journal articles originally published overseas, the overseas dictionaries and the excerpts from the two textbooks originally published overseas should all be rejected as not being relevant to distinctiveness as at 6 December 2006 because none of those publications could conceivably be relevant to the Court's determination of that question. The applicant also submitted that, given that a trade mark is a purely territorial concept which is legally operative and effective only within the territory within which it is used and for which it is registered or for which it is to be registered, it was of no moment that, in various publications originally published overseas, there was demonstrated a use of the letters "BSS" which could arguably support the respondent's contention that the letters had become descriptive of "balanced salt solution". In support of its objection, the applicant relied upon the following passage in the judgment of Gibbs J (as he then was) in Burger King Corporation v Registrar of Trade Marks [1973] HCA 15 ; (1973) 128 CLR 417 at 422 423: On the other hand, the evidence that the word has been extensively used in the United States of America and has there become widely known as indicating the goods of the applicant only, is in my opinion in a different situation. On this point counsel for the Registrar referred me to certain authorities whose effect is summed up in the following passage from the judgment of Tomlin J. (as he then was) in Impex Electrical Ltd. v. Weinbaum [(1927) 44 R.P.C. 405 , at p. 410], which has been accepted, by this Court as well as in the United Kingdom, as a correct statement of the law (see Re Notox Ltd.'s Application [(1930) 48 R.P.C. 168 , at p. 178]; Re Gaines Animal Foods Ltd's Application [(1951) 68 R.P.C. 178 , at p. 179]; de Cordova v. Vick Chemical Co. [(1951) 68 R.P.C. 103 , at p. 107]; and The Seven Up Co. v. O.T. Ltd. [(1947) [1947] HCA 59 ; 75 C.L.R. 203 , at pp. 215, 216]): "For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard. For that purpose foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods." Those cases are authority for the proposition that in deciding whether a mark is distinctive, user within the jurisdiction only is to be taken into account. However, in the present case the question is a different one, namely, whether evidence of user overseas is admissible on the issue whether a trade mark is capable of becoming distinctive. Decision on Admissibility I think that these submissions made on behalf of the applicant in support of its objection to all of the overseas material sought to be tendered by the respondent are correct. In my view, it is a long bow for the Court to draw to find that use in the relevant trade in Australia can be established by the availability here of journals, dictionaries and textbooks published overseas which, to some extent, may have been read or looked at by persons participating in that trade. The evidence as to who read this material and when is vague and general. Further, the dictionaries and textbooks can only prove use in the places to which they relate. There was no evidence to suggest that these latter sources related to Australia. For these reasons, I will not admit these overseas materials into evidence for the purpose of establishing that the letters "BSS" did not, as at 6 December 2006, distinguish the applicant's BSS balanced salt solution from sterile ophthalmic irrigating solutions supplied by others within s 234(2) of the Act. Distinctiveness in fact as at 22 March 1988 may be relevant to the respondent's case for cancellation of the applicant's BSS trade mark pursuant to ss 88(1)(a), 88(2)(a), 57 and 41 of the Act. For the same reasons as those advanced for not admitting into evidence the material to which objection was taken for the purpose of establishing lack of distinctiveness as at 6 December 2006, I will not admit that material for the purpose of establishing lack of distinctiveness in fact as at 22 March 1988.