Hy-Line Chicks Pty Ltd v Swifte [1966] HCA 19

High Court of Australia Windeyer J. Hy-Line Chicks Pty Ltd v Swifte [1966] HCA 19

Cur. adv. vult.

April 6 Windeyer J. delivered the following written judgment:—

This is an action for the infringement of a trade mark. It is of a somewhat unusual character. The plaintiff, a company incorporated in New South Wales, is a breeder of chickens. It is the registered proprietor of a trade mark, number A. 152,678, registered in class 31, for "chickens and all other bred poultry". The mark is the word "Hy-Line". It was registered on 16th February 1959 for a period of seven years and has been renewed until 16th February 1980. This invented word was apparently adopted by the original proprietor, from whom the plaintiff got it by assignment, because it is well known in the United States as the trade name of a particular breed or strain of poultry. It is not suggested that the poultry that the plaintiff breeds is of this strain. Indeed the only evidence before me suggests that this is not so. But the plaintiff claims that it breeds chickens "in accordance with genetic principles with the object of producing high quality poultry capable of volume production of either flesh or eggs". It sells its chickens to poultry farmers. It also sells them to persons who conduct what it calls "enfranchised hatcheries" and who are themselves registered users of the mark. They in turn breed, it is said, from this stock and sell the progeny under the name "Hy-Line". From their sales the plaintiff gets royalties.

The defendants, a husband and his wife, conduct in partnership a poultry farm and hatchery in South Australia. They began this business in 1955. Copying from the United States, they adopted the trade name "Hi-Line Poultry Farm". This name was on 22nd April 1958 registered as their business name under the Business Names Act, 1928-1955 S.A.. They had in fact been using the name ever since they commenced business, but in ignorance that they should register it: they were required to pay a penalty for the delay in registration. Their business was at first small, but they steadily built it up. On 9th September 1959 they had their registered business name altered to "Hi-Line Hatchery and Poultry Farm". In applying for registration of this new name they stated that their business was that of breeding and egg production and that it had been commenced on 3rd September 1959. They used the name in various ways. The male defendant gave evidence that a notice board that was near the gate of their premises for about three years from 1957 read "Hi-Line Chickens Ready Now". Later, and at some time after the business name was changed in 1959 a large sign was erected reading "Hi-Line Hatchery—Hi-Line chicks are champs". It apparently is still there. And since 1959 the defendants have been using the name "Hi-Line" fairly extensively in advertisements, labels on chicken boxes, and otherwise. They claim in these advertisements to be, and in fact are, conducting a hatchery and stud poultry farm under the name "Hi-Line Hatchery and Australorp stud farm". They have on occasions even adopted the plaintiff's spelling "Hy-Line". They do not deny any of this. Their defence is a claim of right. Their acts they say were not infringements because of their continuous use of the name "Hi-Line" before the registration of the plaintiff's trade mark "Hy-Line".