Farmer & Co Ltd v Anthony Hordern & Sons Ltd [1964] HCA 58

Farmer & Co Ltd v Anthony Hordern & Sons Ltd [1964] HCA 58

The respondent's use of the associated trade mark 'Miss Sydney' in relation to women's shoes did not constitute use of the trade mark 'Young Miss Sydney' in relation to frocks, suits and coats for feminine wear, and use by the wholly owned subsidiary Hordern Bros. Limited could not be treated as use by the respondent. The Court must exercise the s.38 discretion restrictively and, in the absence of circumstances justifying equivalence, the mark must be removed for non-use.

Jurisdiction
Australia
Procedural Posture
Appeal / High Court Determination of Appeal From Registrar of Trade Marks
Outcome
Appeal allowed
Legal Topics
['trade Marks' 'removal for Non Use' 'associated Trade Marks' 'use Requirements']
['intellectual Property'] ['trade Marks' 'removal for Non Use' 'associated Trade Marks' 'use Requirements']

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Procedural Posture

Appeal / High Court Determination of Appeal From Registrar of Trade Marks

Legal Issues

  1. 1 ["Whether the trade mark 'Young Miss Sydney' should be removed from the Register for non-use under s. 23(1)(b) of the Trade Marks Act 1955-1958 (Cth)" "Whether use of an associated trade mark ('Miss Sydney') or use by a wholly owned subsidiary can satisfy the requirement of use by the registered proprietor" 'Discretion under s. 38 of the Act to treat use of an associated mark as equivalent']

Ratio Decidendi

The respondent's use of the associated trade mark 'Miss Sydney' in relation to women's shoes did not constitute use of the trade mark 'Young Miss Sydney' in relation to frocks, suits and coats for feminine wear, and use by the wholly owned subsidiary Hordern Bros. Limited could not be treated as use by the respondent. The Court must exercise the s.38 discretion restrictively and, in the absence of circumstances justifying equivalence, the mark must be removed for non-use.

Court Disposition

Appeal allowed

Orders

  • ["Trade mark 'Young Miss Sydney' registered on 5 February 1952 to be removed from the Register of Trade Marks" 'Respondent to pay costs']