Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktienge sellschaft [1965] HCA 71

High Court of Australia Kitto J. Barwick C.J. Taylor, Menzies, Windeyer and Owen JJ. Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktienge sellschaft [1965] HCA 71

ORDER Appeals allowed. Appeals allowed. Decision of the Deputy Registrar of Trade Marks set aside. In lieu thereof, order that application numbers 100642 and 100643 for registration of a trade mark be refused. Order that the respondent pay the appellant's costs of the appeals (including reserved costs). Appeals dismissed with costs, including costs of Registrar of Trade Marks.

Cur. adv. vult.

1960, May 11 Kitto J . delivered the following judgment:—

I have before me two appeals from decisions of the Deputy Registrar of Trade Marks. Each decision dismissed an opposition by the appellant to an application by the respondent for the registration of a trade mark. The applications were lodged on 9th November 1949 under the provisions of the trade marks legislation then in force, namely the Trade Marks Act 1905-1948 Cth, and they sought registration of a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter "Y" is common to both, the whole being enclosed within a circle. One application, numbered 100642, was for registration in class 2, in respect of chemical substances used for agricultural, horticultural and veterinary purposes; and the other, numbered 100643, was in class 3, in respect of chemical substances prepared for use in medicine and pharmacy.

By each application, as originally framed, the respondent claimed to be the proprietor of the trade mark, and sought an order of the Registrar, Law Officer or the Court (under s. 16 (1) (e) of the Act) that "the mark" be deemed a distinctive mark. This was in accordance with form B3, as required by reg. 41 of the Trade Marks Regulations 1913. However, within a few days the request for the order as to distinctiveness was withdrawn, the applicant lodging in each case an application in accordance with form B to the regulations, differing from the original application in two respects: it omitted the statement that an order under s. 16 (1) (e) was desired, and it specifically stated: "We do not claim the registration of this Trade Mark under the special provisions of Section 16 (1) (e) of the Trade Marks Act 1905-1948 in regard to names, signatures, or words." This was done at the suggestion of the supervising examiner, who expressed the view that as the mark was not "a surname per se" the provision for an order did not appear to be applicable. The new forms were accompanied by a letter from the applicant's agent requesting that they be substituted for the original forms. They were treated by the office as effecting amendments of the original applications and were substituted for them accordingly.