Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55

High Court of Australia Kitto J. Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55

ORDER Appeal dismissed with costs.

Cur. adv. vult.

Oct. 8 Kitto J. delivered the following written judgment:—

This is an appeal under s. 46 of the Trade Marks Act 1955-1958 Cth to the High Court as the Appeal Tribunal constituted by that Act from a refusal by the Assistant Registrar of Trade Marks to accept an application for the registration of a trade mark.

The application was for the registration of the word Michigan as a trade mark in respect of tractor shovels, front-end loaders, crawler-type and truck-mounted excavator cranes, power shovels and cranes, bulldozers, tractor dozers, tractor scrapers, tractor loggers, and accessories and attachments therefor. The application was made before the commencement of the Trade Marks Act 1955 Cth. That Act came into force while the application was still unaccepted, and thereupon the Assistant Registrar, at the appellant's request and by authority of s. 5 (5) of the Act, treated the application as an application for registration in Part B of the Register and dealt with it accordingly. He refused the application because of the geographical signification of the word.

The provisions of the Trade Marks Act 1955 upon which the appeal depends are in ss. 25 and 26. The former section makes a trade mark registrable in Part B of the Register if it is distinctive, or is not distinctive but is capable of becoming distinctive, of goods in respect of which the registration is sought and with which the applicant for registration is or may be connected in the course of trade. Sub-section (1) of s. 26 provides that for the purposes of the Act a trade mark is not distinctive of the goods of a person unless it is adapted to distinguish goods with which that person is or may be connected in the course of trade from goods in respect of which no such connexion exists. Then sub-s. (2) provides that in determining whether a trade mark is distinctive, regard may be had to the extent to which (a) the trade mark is inherently adapted so to distinguish, and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish.