Rothmans Ltd v WD & HO Wills (Aust) Ltd [1955] HCA 45

High Court of Australia Fullagar J. Rothmans Ltd v WD & HO Wills (Aust) Ltd [1955] HCA 45

ORDER Order that trade marks Nos. 18437 and 22947 be removed from the Register of Trade Marks. Order that respondent pay applicant's costs of this application.

Cur. adv. vult.

Fullagar J delivered the following written judgment:—

Aug. 11 Fullagar J

This is a motion by Rothman's Ltd. (a company incorporated in England) relating to two registered trade marks of which W. D. & H. O. Wills (Australia) Ltd. (which is also a company incorporated in England) is the proprietor. Both marks are registered in class 45 in respect of all goods comprised in that class, viz. "Tobacco manufactured or unmanufactured", and they are entered on the register as "associated marks" under s. 29 of the Trade Marks Act 1905-1948. The first mark, which is No. 18437, consists simply of the words "Pall Mall"; it was originally registered on 17th June 1915, and the registration has been duly renewed from time to time. The second mark, which is No. 22947, consists of a label or device, the features of which are an eagle in the top left-hand corner, a seal in the bottom right-hand corner, and in the centre the words "Pall Mall" in large capitals. This mark was originally registered on 13th April 1918, and the registration has been duly renewed from time to time.

The motion seeks an order under s. 72 (1) of the Trade Marks Act 1905-1948 for the removal of the two marks from the register on the ground of what is shortly called "non-user". It is really only the user of the first mark that is in issue, because the respondent does not claim to have used the second mark at all at any time. There is an alternative application under s. 71 (1) (c) of the Act for an order excluding cigarettes from the class of goods in respect of which the marks are registered. This alternative application, however, may be disregarded, because the respondent company does not claim to have used the first mark in respect of any goods in class 45 other than cigarettes. If, therefore, non-user of that mark in respect of cigarettes is established, the applicant is prima facie entitled to an order under s. 72 (1). If, on the other hand, sufficient user of that mark by the respondent in respect of cigarettes is proved, the order sought under s. 71 (1) (c) obviously cannot be made.