Aston v Harlee Manufacturing Co [1960] HCA 47

High Court of Australia Fullagar J. Aston v Harlee Manufacturing Co [1960] HCA 47

ORDER Aston v. Harlee Manufacturing Company. Declare that for the purposes of Application No. 109,875 in the Trade Marks Office of the Commonwealth the applicant Ray Aston is entitled to be regarded, as at the date of the said application, the 14th day of May 1952, as the proprietor of the trade mark Tastee Freez. Order that the said application proceed accordingly. Order that Respondent, Harlee Manufacturing Company, pay costs of motion. Harlee Manufacturing Company v. Aston. Motion dismissed with costs.

Cur. adv. vult.

Fullagar J delivered the following written judgment:—

Aug. 4 Fullagar J

I have before me two motions relating to a trade mark. The mover in the one case is Ray Aston, to whom I will refer as Aston. The mover in the other case is Harlee Manufacturing Company, a company incorporated in Illinois, U.S.A., to which I will refer as Harlee. The two motions were heard together.

On 14th May 1952 Aston lodged in the Trade Marks Office application No. 109875 for registration of the words "Tastee Freez" as a trade mark in class 42 in respect of "Iced Milk". On 11th August 1955 acceptance of this application was advertised in the Official Journal. On 10th February 1956 notice of opposition was lodged by Harlee, and on 3rd April 1957 Harlee itself lodged application No. 131644 for registration of the words "Tastee Freez" as a trade mark in class 42 in respect of "Substances used as food or as ingredients in food". On 18th November 1957 the opposition came on for hearing before the Deputy Registrar of Trade Marks, and on 29th July 1958 the Deputy Registrar gave his decision.

The lapse of time disclosed by this sequence of dates is, of course, at first sight remarkable. The Registrar, however, in a statement filed in the Court, has explained that during these years there was an enormous increase in the number of applications for registration, and it was quite impossible to obtain a staff adequate to deal promptly with the increased work. The unavoidable consequence was that the work of the Office fell seriously into arrears. The Registrar also says that during these years there was a large number of applications by persons in Australia for the registration of marks known or believed by the Office to be registered or used by other persons in foreign countries. In many cases an application by a foreign proprietor or user was lodged after the lodging of an application by a person in Australia in respect of the same mark. In dealing with such cases it became the practice to follow the course in fact followed in this case.