Farmer & Co Ltd v Anthony Hordern & Sons Ltd [1964] HCA 58

High Court of Australia Taylor J. Farmer & Co Ltd v Anthony Hordern & Sons Ltd [1964] HCA 58

ORDER Appeal allowed with costs. Order that the trade mark Young Miss Sydney registered on the application of the respondent on 5th February 1952 be removed from the Register of Trade Marks.

Cur. adv. vult.

Oct. 14 Taylor J. delivered the following written judgment:—

This is an appeal pursuant to s. 23 (7.) of the Trade Marks Act 1955-1958 Cth from the dismissal by the Registrar of Trade Marks of an application made by the appellant for the removal from the register of the respondent's trade mark "Young Miss Sydney" which was registered on 5th February 1952 in class 38 in respect of "frocks, suits and coats for feminine wear". Class 38 at that time related to "Articles of clothing. Such as hats of all kinds. Caps and bonnets. Hosiery, Gloves, Boots and shoes. Other ready-made clothing". The ground upon which the application was made was that specified in s. 23 (l.) (b) of the Act, that is to say that, up to one month before the date of the application, a continuous period of not less than three years had elapsed during which the trade mark was a registered mark and during which there was no use in good faith of the trade mark in relation to the goods in respect of which it was registered. The application to remove the mark was made on 5th May 1961 so that the relevant continuous period of three years was that which began on 4th April 1958 and ended on 4th April 1961.

The evidence concerning the non-user of the mark was not entirely satisfactory but no case was made by the respondent that the mark had ever been used and in the end it was conceded that there had, in fact, been no direct user of the mark during the relevant period. What was relied upon was, first of all, consistent use during the relevant period by the respondent of an associated trade mark—"Miss Sydney"—of which it was the registered proprietor and which was registered on 20th June 1958 in class 38 in respect of "women's shoes". That there was a consistent user by the respondent of this associated mark in relation to women's shoes is not open to question. Secondly, the evidence shows that since 1959 the respondent has been the beneficial owner of the whole of the ordinary capital of Hordern Bros. Limited, the owner of another department store in Sydney, and that since that year the mark "Miss Sydney" has been consistently used in relation to women's frocks and other wearing apparel sold at that company's store. There was some unsatisfactory evidence that in 1959 the employees of Hordern Bros. Limited became the employees of the respondent and that, in effect, the operations conducted in the former's store were directly conducted by the respondent. Upon this evidence it was suggested that the use of the mark "Miss Sydney" in relation to women's clothing sold in this store was a direct use by the respondent but it is a suggestion which, in my view, cannot be entertained. Indeed, I intimated as much to counsel for the respondent during the hearing and afforded him an opportunity to adduce further evidence in relation to this matter if he wished to persist in the contention that the business operations conducted in the store of Hordern Bros. Limited were directly conducted by the respondent at any relevant time. No advantage was taken of this opportunity and I have no doubt that this was not the situation. It may be true that the respondent had, in one sense, full control of its subsidiary company but the use of the mark in Hordern Bros. Limited's store was a use by that company. Nevertheless, the respondent, relying upon the decision in the Radiation Case [1] , contended that this use by Hordern Bros. Limited was equivalent, for all practical purposes, to a use by the respondent.