Kendall Co v Mulsyn Paint & Chemicals [1963] HCA 1

Kendall Co v Mulsyn Paint & Chemicals [1963] HCA 1

Although "Polykin" and "Polyken" were sufficiently similar that confusion would be likely if used on the same description of goods, the evidence did not establish that, as at October 1956, a substantial number of relevant persons in Australia knew "Polyken" as the appellant's mark. Section 25 did not apply because...

Source-derived case information.

Jurisdiction
Australia
Procedural Posture
Trade Mark Registration Opposition Appeal / Appeal to the High Court of Australia From a Decision of an Acting Deputy Registrar of Trade Marks Granting an Application for Registration of a Trade Mark
Outcome
Appeal dismissed with costs including reserved costs (if any).
Legal Topics
['trade Mark Registration' 'opposition to Registration' 'likelihood of Deception or Confusion' 'proprietorship of Unregistered Trade Mark' 'prior Use and Reputation in Australia']
['intellectual Property' 'trade Marks'] ['trade Mark Registration' 'opposition to Registration' 'likelihood of Deception or Confusion' 'proprietorship of Unregistered Trade Mark' 'prior Use and Reputation in Australia']

Source-derived case record

Summary, issues, holding and outcome

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Procedural Posture

Trade Mark Registration Opposition Appeal / Appeal to the High Court of Australia From a Decision of an Acting Deputy Registrar of Trade Marks Granting an Application for Registration of a Trade Mark

Legal Issues

  1. 1 ['Whether use of the respondent\'s proposed trade mark "Polykin" in Australia would be likely to deceive because of its similarity to the appellant\'s mark "Polyken" under s. 114 of the Trade Marks Act 1905-1948 Cth.' 'Whether s. 25 applied where the appellant\'s mark "Polyken" was not on the register.' 'Whether the respondent was the proprietor of "Polykin" for the purposes of s. 32 despite the appellant\'s overseas use of "Polyken".']

Ratio Decidendi

Although "Polykin" and "Polyken" were sufficiently similar that confusion would be likely if used on the same description of goods, the evidence did not establish that, as at October 1956, a substantial number of relevant persons in Australia knew "Polyken" as the appellant's mark. Section 25 did not apply because "Polyken" was not registered, and the respondent's adoption and intended use of "Polykin" in Australia supported proprietorship in the absence of prior Australian use, fraud, or breach of duty. There was therefore no probability of deception under s. 114 disentitling the respondent to protection.

Court Disposition

Appeal dismissed with costs including reserved costs (if any).

Orders

  • ['Appeal dismissed with costs including reserved costs (if any).']