Browne, E.A. v. S. Smith & Son Pty Ltd & Anor [1985] FCA 247

Browne, E.A. v. S. Smith & Son Pty Ltd & Anor [1985] FCA 247

The Federal Court could not order removal of the trade marks for non-use based on a period tied to the date of the application to the Registrar; s 23(1) requires the relevant period of non-use to be referenced to the date of application to the Court. Thus, leave to file the amended cross-claim was refused, and all further Court proceedings stayed until the Registrar determines the already-pending applications for removal.

Parties
Applicant: Ernest Arthur Browne; First Respondent; Cross Claimant: S. Smith & Son Pty. Limited; Second Respondent: John Sexton Productions Pty. Limited; Cross Respondent: Ernest Arthur Browne
Jurisdiction
Australia
Judgment Date
13 June 1985
Procedural Posture
Trade Mark Infringement and Related Trade Practices Proceeding With Cross Claim for Trade Mark Removal / Interlocutory Motion Regarding Leave to File Amended Cross Claim and Stay of Proceedings
Outcome
Application for leave to file defence and amended cross-claim refused. All further proceedings in this Court and upon the cross-claim stayed until determination by the Registrar of Trade Marks or further order. Costs of the motion to be costs in the proceeding.
Legal Topics
Trade Mark Infringement, Removal of Trade Mark for Non Use, Jurisdiction of Federal Court, Rectification of Register, Trade Practices Contraventions
Intellectual Property Law Commercial Law Trade Mark Infringement Removal of Trade Mark for Non Use Jurisdiction of Federal Court Rectification of Register Trade Practices Contraventions

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Parties

Ernest Arthur Browne

Applicant

S. Smith & Son Pty. Limited

First Respondent; Cross Claimant

John Sexton Productions Pty. Limited

Second Respondent

Ernest Arthur Browne

Cross Respondent

Procedural Posture

Trade Mark Infringement and Related Trade Practices Proceeding With Cross Claim for Trade Mark Removal / Interlocutory Motion Regarding Leave to File Amended Cross Claim and Stay of Proceedings

Legal Issues

  1. 1 Whether the Federal Court of Australia has jurisdiction to entertain a cross-claim for removal of a trade mark from the Register on the ground of non-use when an application for removal is already pending before the Registrar
  2. 2 Whether the period of non-use relevant for removal under s 23(1) Trade Marks Act 1955 (Cth) can be referenced to proceedings before the Registrar rather than the Court
  3. 3 Whether rectification can be ordered under s 22(1)(b) of the Trade Marks Act in these circumstances

Ratio Decidendi

The Federal Court could not order removal of the trade marks for non-use based on a period tied to the date of the application to the Registrar; s 23(1) requires the relevant period of non-use to be referenced to the date of application to the Court. Thus, leave to file the amended cross-claim was refused, and all further Court proceedings stayed until the Registrar determines the already-pending applications for removal.

Court Disposition

Application for leave to file defence and amended cross-claim refused. All further proceedings in this Court and upon the cross-claim stayed until determination by the Registrar of Trade Marks or further order. Costs of the motion to be costs in the proceeding.

Orders

  • The application by S. Smith & Son Pty. Limited for leave to file the defence and cross-claim refused.
  • All further proceedings upon the application filed in this Court and upon the cross-claim stayed until determination by the Registrar of Trade Marks or until further order.