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

High Court of Australia Kitto J. Kendall Co v Mulsyn Paint & Chemicals [1963] HCA 1

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

Cur. adv. vult.

1963, Jan. 29 Kitto J. delivered the following written judgment:—

This is an appeal against a decision of an Acting Deputy Registrar of Trade Marks granting an application for registration of a trade mark. As the application was lodged on 12th October 1956, that is to say before the commencement of the Trade Marks Act 1955 Cth (1st August 1958), the jurisdiction of the Court to entertain the appeal exists under s. 45 of the Trade Marks Act 1905-1948 Cth, and the appeal must be decided on the provisions of that Act: see s. 5 (4) of the 1955 Act.

The trade mark of which registration was sought and granted consisted of the word " Polykin ", and the registration is in class 50 (10) in respect of "coverings and wrappings for use in the heat, moisture and/or electrical insulation of pipes, boilers, roofing and other articles used in industry, none of the said goods being in the nature of paints, enamels or varnishes". The application was and is opposed by the present appellant, a Massachusetts corporation, on the ground, broadly, of the similarity of the proposed mark with a mark consisting of the word "Polyken" which the appellant has used for some years in respect of similar goods. It is obvious, and the respondent agreed, that the two words so closely resemble one another that if they were used on the same description of goods confusion would be likely to result. Accordingly a question arises for decision under s. 114 of the Act.

There is really no other question in the case. Two grounds of opposition independent of s. 114 have been mentioned in the course of the argument, but they may be disposed of briefly. One is the ground provided by s. 25. That section, however, applies only where there is identity or similarity between the mark for which registration is sought and a mark belonging to a different proprietor which is already on the register. Since "Polyken" is not on the register, the section has no bearing on the present case. The other ground is that the respondent (it is a firm, but for convenience I shall speak as if it were a corporation) is not entitled to registration of the mark, because it has not made good the assertion necessarily involved in its application that it is the "proprietor" of the mark in the sense of s. 32. The respondent's selection of the word "Polykin", it is said, is an obvious appropriation of "Polyken" with an immaterial variation, and "really and in conscience" (as Isaacs J. would have expressed it: Blackadder v. Good Roads Machinery Co. Inc. [1] ) the respondent should not be considered the proprietor of it. But proprietorship in the relevant sense may exist in virtue of selection or adoption for use in Australia as and for a trade mark (coupled with an intention so to use it and with the statutory equivalent of actual use, viz. the applying for registration), provided that the mark has not yet been so used here or made the subject of an application for registration here. This is so notwithstanding that the mark is registered and used in another country as the mark of someone else in respect of the same goods; though of course it is otherwise if the claim to proprietorship is in fraud of, or in breach of a duty owed to, the person who is the proprietor in the other country: see Shell Co. of Australia Ltd. v. Rohm and Haas Co. [2] ; Re Yanx [3] ; Aston v. Harlee Manufacturing Co. [4] . If, in the present case, it were proved that before October 1956 the appellant had used the mark "Polyken" at all in the Australian market in respect of relevant goods, the claim of the respondent to be the proprietor of "Polykin" would have been defeated, as the cases cited show, even though the appellant's use of "Polyken" had not been sufficient to create a reputation for that word; for the notion in s. 32 of proprietorship of a mark before registration, that is to say the notion of being the person entitled to be registered as proprietor (Kerly on Trade Marks, 8th ed. (1960) p. 34), is satisfied by user even without the establishment of a reputation: cf. Hall v. Barrows [5] . But there is no evidence here that "Polyken" was ever used as a mark in Australia before October 1956, and therefore, there being no proof of fraud or of any relationship between the parties disentitling the respondent to adopt either word as its own mark in this country, there is no valid answer to the respondent's claim that its selection of "Polykin" as a trade mark, its proved intention to use the word upon and in connexion with goods of the relevant description, and the making of its application for registration, combine to entitle it to maintain the application as proprietor.