Rothman's Ltd v W D and H O Wills (Australia) Ltd [1955] HCA 45

Dist At Cons. Appl Pionee foundy WD&HO — Camival = betronie ual ne

ee ee en

~ 92 C.L.R.] OF AUSTRALIA. 131

[HIGH COURT OF AUSTRALIA.]

ROTHMAN'S LIMITED . : : f 3 APPLICANT ;

AND

W. D. & H. 0. WILLS (AUSTRALIA) LIMITED ResPponpent.

Trade Mark—Removal from register—Absence of bona fide user for requisite period H.C. or A. —Proprietor not manufacturing or selling trade marked goods—Manufacture 1955. by American corporation of trade marked goods—Private persons in Australia = ~~ ordering direct from American corporation—Payment in America by person MELBOURNE, ordering—Goods sent direct by American corporation to person ordering— June 6, 73 Periodic accounting by American corporation to proprietor in respect of share of Gam, profit on such sales—Trade Marks Act 1905-1948 (No. 20 of 1905—No. 76 of Aug. 11.

1948), s. 72.

Fullagar J. Section 72 of the Trade Marks Act 1905-1948 provides that: (1) The Court

may, on the application of any person aggrieved, if it is shown that there has been no bona fide user of a trade mark for a consecutive period of three years since the date of the last registration thereof, order its removal from the register, unless it was at the date of the application in bona fide use and had been so for a period of six months immediately prior to the date of the appli- cation, (2) For the purpose of this section bona fide user or use means user or use of a trade mark in respect of the goods in respect of which it is registered for the purposes of trade by the proprietor or registered user of the trade mark or a predecessor in title.

Held, that the user or use must be (1) for the purposes of trade, (2) by the proprietor or a registered user, (3) in respect of the goods in respect of which the mark is registered, (4) for the purpose of indicating or so as to indicate, a connection in the course of trade between the goods and the proprietor of the registered mark, (5) in Australia.