McCormick & Company Inc v McCormick [2000] FCA 1335

McCormick & Company Inc v McCormick [2000] FCA 1335

Mary McCormick's marks are deceptively similar to those of McCormick & Co and are used on goods of the same description. Although her use was initially honest and concurrent, the evidence of significant sales and reputation of McCormick & Co's marks, and the real likelihood of confusion, mean registration should be refused. Section 60 operates independently as a ground of opposition and is not subject to the honest concurrent use exception in s 44(3).

Jurisdiction
Australia
Judgment Date
15 September 2000
Procedural Posture
Appeal and Cross Appeal From the Registrar of Trade Marks Decision / Post Hearing Judgment on Appeal and Cross Appeal
Outcome
Appeal allowed; cross-appeal dismissed; registration refused
Legal Topics
['trade Marks' 'honest Concurrent Use' 'opposition to Registration' 'reputation of Marks' 'expert Opinion Evidence']
['intellectual Property' 'evidence'] ['trade Marks' 'honest Concurrent Use' 'opposition to Registration' 'reputation of Marks' 'expert Opinion Evidence']

Case Brief

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Procedural Posture

Appeal and Cross Appeal From the Registrar of Trade Marks Decision / Post Hearing Judgment on Appeal and Cross Appeal

Legal Issues

  1. 1 ["Whether Mary McCormick's marks were deceptively similar to McCormick & Co's marks under s 44(1) of the Trade Marks Act 1995 (Cth)" "Whether the goods covered by the parties' marks were of the same description within s 14(1) of the Trade Marks Act 1995 (Cth)" 'Whether honest concurrent use entitled Mary McCormick to registration under s 44(3)' 'Whether the registration should be territorially limited' "Whether McCormick & Co's marks had a reputation for the purpose of s 60" 'Whether s 60 is subject to the honest concurrent use exception in s 44(3)' 'Admissibility and scope of expert and lay opinion evidence']

Ratio Decidendi

Mary McCormick's marks are deceptively similar to those of McCormick & Co and are used on goods of the same description. Although her use was initially honest and concurrent, the evidence of significant sales and reputation of McCormick & Co's marks, and the real likelihood of confusion, mean registration should be refused. Section 60 operates independently as a ground of opposition and is not subject to the honest concurrent use exception in s 44(3).

Court Disposition

Appeal allowed; cross-appeal dismissed; registration refused

Orders

  • ['The appeal be allowed.' 'The cross appeal be dismissed.' "The decision of the delegate of the Registrar of Trade Marks that the word marks 'mccormick's' and 'mccormick's instant batter simply add water' be registered (with endorsement for use limited to Queensland and New South Wales) be set aside." "In lieu of...