WD & HO Wills (Australia) Ltd v Rothmans Ltd [1956] HCA 15

High Court of Australia Dixon C.J. McTiernan, Williams, Webb and Taylor JJ. WD & HO Wills (Australia) Ltd v Rothmans Ltd [1956] HCA 15

ORDER Appeal dismissed with costs.

Cur. adv. vult.

The Court delivered the following written judgment:—

April 13 Dixon C.J., McTiernan, Williams, Webb and Taylor JJ.

This is an appeal by W. D. & H. O. Wills (Australia) Ltd. from an order of this Court made by Fullagar J. [4] on 11th August 1955 under s. 72 of the Trade Marks Act 1905-1948 Cth., ordering that Trade Mark No. 18437 registered in the Register of Trade Marks under that Act on 12th June 1915 and Trade Mark No. 22947 registered on 13th April 1918 both in the name of the appellant in class 45 in respect of "tobacco whether manufactured or unmanufactured" be removed from the register. Section 72 of the Trade Marks Act provides, so far as material, 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 application (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". The order was made pursuant to a notice of motion filed by Rothmans Ltd., the respondent on this appeal, on 15th September 1954. The respondent is a company incorporated in the United Kingdom which had prior to this date built up an extensive business in Australia in the sale of cigarettes known as Rothmans Pall Mall cigarettes and had applied under the Trade Marks Act to register the words "Pall Mall" as a trade mark in Australia but was unable to do so because of the registration of the appellant's trade mark No. 18437. It is not contended that the respondent is not a person aggrieved within the meaning of s. 72.