Bedggood and Company v Graham [1909] HCA 9

Bedggood and Company v Graham [1909] HCA 9

There was strong evidence of honest concurrent user of the trade mark by the applicants in New South Wales prior to and since the respondent's registration, and special circumstances existed. The marks were not the same or nearly identical, but even if they were, registration should be permitted under section 28 of the Trade Marks Act 1905. The Registrar was wrong to refuse registration for New South Wales.

Parties
Applicant/appellant: Bedggood & Company; Respondent/opponent: Graham
Jurisdiction
Australia
Judgment Date
26 March 1909
Procedural Posture
Appeal / Appeal From Decision of Registrar of Trade Marks Regarding Registration for New South Wales
Outcome
Appeal allowed
Legal Topics
Trade Marks, Registration, Honest Concurrent User, Special Circumstances
Intellectual Property Trade Marks Registration Honest Concurrent User Special Circumstances

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 3 Party arguments 2
Sign in to unlock

Parties

Bedggood & Company

Applicant/appellant

Graham

Respondent/opponent

Procedural Posture

Appeal / Appeal From Decision of Registrar of Trade Marks Regarding Registration for New South Wales

Legal Issues

  1. 1 Whether the applicant's trade mark and the opponent's mark are the same or nearly identical for the purposes of registration in New South Wales
  2. 2 Whether there has been honest concurrent user or special circumstances under sec. 28 of the Trade Marks Act 1905 to justify registration
  3. 3 Whether the Registrar was correct to refuse registration for New South Wales

Ratio Decidendi

There was strong evidence of honest concurrent user of the trade mark by the applicants in New South Wales prior to and since the respondent's registration, and special circumstances existed. The marks were not the same or nearly identical, but even if they were, registration should be permitted under section 28 of the Trade Marks Act 1905. The Registrar was wrong to refuse registration for New South Wales.

Court Disposition

Appeal allowed

Orders

  • Application for registration to be granted for New South Wales with modification to specify essential particulars (a distinctive device containing the word 'Premier')
  • Respondent to pay the costs of the appeal