Case: F H Faulding &amp; Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1964] HCA 38 ; (1965) 112 CLR 537
Outcome: cited
Sections 24 and 25 of the 1995 Act are based on s 56 of the 1955 Act which owes its formulation in substantial part to s 15 of the United Kingdom Trade Marks Act 1938. Section 56(1) of the 1955 Act provided that the registration of a trade mark did not become invalid by reason only of the use, after the date of registration, of a word or words which the trade mark contained or of which it consisted, as the name or description of an article. As to invalidity, the Court in Campamor Sociedad, Limitada &amp; Anor v Nike International Limited &amp; Anor [2000] HCA 12 ; (2000) 202 CLR 45 per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ, approved the view of Taylor J in F H Faulding &amp; Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd [1964] HCA 38 ; (1965) 112 CLR 537 at 560-561 that s 56 operated as a provision intended to define exhaustively what manner of use after registration of a registered word trade mark would operate to invalidate the mark. Section 56(2)(b) of the 1955 Act provided that where an article was formerly manufactured under a patent, a period of two years had elapsed since the patent ceased or expired and the word which the trade mark contained or of which it consisted, was the only practicable name or description of the article, particular consequences arose. They were these. If the trade mark consisted solely of that word, the registration of the trade mark 'so far as regards registration in respect of the article ... or of any goods of the same description, ... shall be deemed for the purposes of s 22 to be an entry wrongly remaining in the Register' (s 56(3)). Section 22(1) of the 1955 Act provided that a prescribed Court 'may, on the application of a person aggrieved or the Registrar, order the rectification of the Register by [among other things] the expunging or amendment of an entry wrongly made in or remaining in the Register'. If, however, the trade mark contained that word and other matter, s 56(4) provided that a prescribed Court, in deciding whether the trade mark ought to remain in the Register in relation to the article or any goods of the same description, 'may, in the case of a decision in favour of the trade mark remaining in the Register, require as a condition that the proprietor shall disclaim any right to the exclusive use of that word in relation to that article or to any goods of the same description ... but no such disclaimer affects any rights of the proprietor of the trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made'. Section 56(5) contained a provision which had the effect of deeming rights of the registered owner to have ceased. That provision was in these terms: (5) For the purposes of any other legal proceedings relating to the trade mark - (a) if the trade mark consists solely of that word, all rights of the registered proprietor to the exclusive use of the trade mark; or (b) if the trade mark contains that word and other matter, all rights of the registered proprietor to the exclusive use of that word, in relation to the article ... or to any goods of the same description ... shall be deemed to have ceased on the date at which the use mentioned in paragraph (a) of sub-section (2) first became well-known and established, or at the expiration of the period of two years mentioned in paragraph (b) of that sub-section.