Burger King Corporation v Registrar of Trade Marks [1973] HCA 15

High Court of Australia Gibbs J. Burger King Corporation v Registrar of Trade Marks [1973] HCA 15

ORDER Appeal dismissed with costs, including reserved costs.

Cur. adv. vult.

Gibbs J delivered the following written judgment:—

May 11 Gibbs J

The applicant, Burger King Corporation, which is incorporated under the laws of Florida, one of the United States of America, made application for the registration of the word " whopper " as a trade mark in Pt B of the Register of Trade Marks in respect of "all goods in class 30 including sandwiches". The Registrar of Trade Marks refused the application and the present appeal is brought from his refusal.

Under the Trade Marks Act 1955-1966 Cth ("the Act") provision is made for the registration of trade marks in Pt B of the Register by s. 25 (1) which reads as follows:

A trade mark is 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 registration of the trade mark is sought and with which the applicant for registration is or may be connected in the course of trade. The term "distinctive" as used, not only in this section, but also in s. 24, which deals with registrations under Pt A, is defined by s. 26 (1) and (2) which provide:

(1) For the purposes of this 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 subsists, either generally or, where the trade mark is sought to be registered, or is registered, subject to conditions or limitations, in relation to use subject to those conditions or limitations.

(2) In determining whether a trade mark is distinctive, regard may be had to the extent to which—