Weeks, J. Pty Ltd v. Foodland Association Ltd & Ors [1986] FCA 271

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Trade Marks - application under Trade Practices Act to restrain use of name and mark - prior application for removal for non-use pending betore Registrar of Trade Marks - application to remove

trade mark proceedings into Federal Court ~ whether Federal Court

a prescribed court under Trade Marks Act - whether application to

Registrar within associated jurisdiction of Federal Court - power

of court to order removal of application

Federal Court of Australia Act 1976 ss.23, 32 Trade Marks Act 1955 $.23

JOHN WEEKS PTY. LTD. v. FOODLAND ASSOCIATED LIMITED and RONALD MULLIGAN and JOSEPH GUIPPA and NEVILLE GALE

No. WA G50 of 1986

TOOHEY J. PERTH 4 JULY 1986

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IN THE FEDERAL COURT OF AUSTRALIA

) ) WESTERN AUSTRALIA ) No. WA G50 of 1986 ) )

DISTRICT REGISTRY GENERAL DIVISION

BETWEEN :

JOHN WEEKS PTY. LTD.

Applicant

and FOODLAND ASSOCIATED LIMITED

First Respondent

and

RONALD MULDLIGAN and JOSEPH GUIPPA

Second Respondents and NEVILLE GALE

Third Respondent

CORAM: TOOHEY J. 4 duly 1986

REASONS FOR JUDGMENT

Before the Court is a dispute between the applicant and the first respondent as to the use of "Bi-Lo" both as a name and as a trade mark in the business of wholesale distributor and

retailer of groceries which each company carries on.

The applicant is the registered proprietor of trademark No. B370,430 consisting of the trade mark Bi-Lo registered

in Part B of the Register of Trade Marks in respect of retailing

through supermarkets, being services included in Class No. 42.

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Registration of the mark was «ranted to the applicant on 20 December 1984 and subsists for a period of seven

years from 14 January 1982.

The applicant was incorporated in South Australia and since May 1979 or thereabouts it has carried on business in that State. The first respondent was incorporated in Western Australia and it has registered the name Bi-Lo pursuant to the provisions of the Business Names Act 1962 of this State. The first respondent uses the name Bi-Lo in the course of its business and it has, by franchise agreements, given the other respondents the right to use