Case: Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1
Outcome: followed
If the condition of exercise of the Court's power has been established, the trade mark should be removed " unless sufficient reason appears for leaving it there ": Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 481 2 per McLelland J. In Re Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , Kitto J similarly concluded (at 11): It has been urged upon me that no deception of any particular purchaser has been proved, and that there is no practical interest of the public to be served by removing the mark from the register. This seems to me to put the matter the wrong way round. The Stiftung's omission to use the mark for the statutory period entitles the applicant to have the mark removed from the register unless sufficient reason appears for leaving it there. ... One fundamental consideration to be taken into account is the public interest: Paragon Shoes Pty Ltd v Paragini Distributors (NSW) Pty Ltd (1988) 13 IPR 323. Woodward J there considered that the existence of the discretion was " clear " and continued at 345: There are several points which emerge from this line of authority. The first is the importance of the public interest -- whether anyone has been deceived or is likely to be if the mark remains on the register; whether, on the other hand, the public has an interest in the preservation of an established mark. The second is the significance of an unimpeached title to the mark and its continuous use in good faith by the person entitled to it. Finally, if the public interest is not adversely affected and such title and use are shown, then technicalities or defects in legal formalities may be overlooked. One aspect of the " public interest " is thus the public interest in the integrity of the Register: NSW Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 14 IPR 75 at 79 per Gummow J. 197 In applying the terms of the discretion previously conferred by s 23(1) of the Trade Marks Act 1955 (Cth), Foster J observed that it was a discretion only to be exercised in " exceptional circumstances ": Jonathan Ross Sceats v Jonathan Sceats Design Pty Ltd (1990) 17 IPR 28. Foster J there observed at 29 30: The section to which I have just made reference has been the subject of consideration by courts of high authority. It is quite clear that the word "may", used in the section, requires that a court, in determining whether relief should be granted, exercise a discretion. Accordingly, a court in considering the matters raised by s 23 may, even though it be satisfied that the desiderata of the section have been made out, nevertheless refrain from ordering the removal of the trade mark in the manner contemplated by the section. The question of the operation of this discretion is considered in Shanahan's Australian Trade Mark Law and Practice, 1982 ed, p 212, under the heading, "Discretion under s 23(1)". The learned author refers to the decision of Kitto J in Carl Zeiss Pty Ltd's Application [1969] HCA 17 ; (1969) 122 CLR 1 , which clearly establishes the existence of the residual discretion in the court, to which I have made reference. It is also clear, as the learned author points out, that the discretion is one of general application and not restricted specifically to sections of the Act. However, he also goes on to say: "It has been said that the discretion should be exercised only in 'exceptional circumstances'; however, there may well be cases where the public interest requires that the registration be retained." Reference is made to the case of J Lyons &amp; Co Ltd's Application [1959] RPC 120 at 130. I consider that the law is quite clear in this regard: although the discretion not to make an order of removal exists even though the enabling circumstances required by the section are proved, the discretion to refuse such an order is only to be exercised in the exceptional circumstances referred to.