Hansman v Regal Shoe Company

15 CLR 529

ABRAHAM HANSMAN

REGAL SHOE COMPANY

RESPONDENTS. Practice-Trade Mark -- -Rectification of register-Disclaimer-Exclusive and con-

current rights-Trade Marks Act 1905 (No. 20 of 1905), secs. 6, 8, 25, 28, 71.

On an application for rectification of the register of trade marks under sec. 71 of the Trade Marks Act 1905, the Court cannot entertain a motion under sec. 28 to direct the Registrar to register a mark on the ground of honest concurrent user, the preliminary procedure of applying to the Registrar in the first instance not having been followed. MOTION.

This was an application on behalf of Abraham Hansman, boot and shoe manufacturer of Sydney, that the Register of Trade Marks might be rectified under the provisions of sec. 71 of the Trade Marks Act 1905 by adding to the registration of Trade Mark No. 5382 in Class 38, a note stating that the registered

15 CLR 530

proprietors, the Regal Shoe Company, the respondents to the motion, do not claim the exclusive right to the use of the word " Regal " SO as to prevent the applicant from stamping the said word in the linings of boots and shoes of his manufacture and made in the particular shape or upon the last which bears that name in the applicant's factory, or upon the cartons containing such boots or shoes, or from using the said word to denote the shape of such boots and shoes, or from otherwise using the said word in connection with the said boots and shoes in the manner in which the same was used by him prior to and at the date of the registration of the said trade mark or for any other legiti- mate purpose; or by the insertion in the said register of such other exception or limitation affecting the registration of the said trade mark as in the opinion of the Court ought to be inserted.

Upon the hearing of the motion the applicant applied to add the following to his original notice of motion: Or that the word Regal should be registered as a trade mark of the appli- cant in respect of boots and shoes the manufacture of the appli- cant SO as to confer on the applicant concurrent rights in the said trade mark."

Leverrier K.C. and R. H. Long-Innes, for the applicant. We ask for relief also under sec. 28 of the Trade Marks Act 1905. The order of this Court is necessary to enable the Regis- trar to register the applicant under sec. 28: See sec. 25. We ask for an order directing the Registrar to register the applicant on the ground of honest concurrent user. If we are bound to go first to the Registrar and then to the Court the process is circuitous. We do not ask for a final order.

Langer Owen K.C. and J. A. Ferguson, for the respondent company, submitted that the Court had no jurisdiction to make such an order on this application, since the preliminary procedure on trade mark applications had not been followed.

ISAACS J. referred to In re Australian Milk Ferment Pro- prietary 1. The Court cannot direct the Registrar to register,

18 C.L.R., 460.

15 CLR 531" text-full="15 CLR 531" text-short="15 CLR 531">15 CLR 531

and SO deprive the public of the right to be heard. Sec. 25 does not give an independent and summary jurisdiction to the Court, but is a restriction on the Registrar. Application must be made to him in the first instance and the ordinary procedure on trade mark applications followed, and the Registrar may refer the matter to the Court ultimately under sec. 25. Otherwise the protection intended by the Act to be given to the public by means of publication and notice would be lost.

Leverrier K.C. In deference to your Honor's ruling we with- draw our application under sec. 28 for leave to amend.

Application withdrawn. Solicitors, for applicant, Mark Mitchell &Forsyth. Solicitors, for respondents, Barnes &Laurence.

[Ex relatione J. A. Ferguson, Esq., Barrister-at-Law.] Dillon Chin 84 ALR 457

[HIGH COURT OF AUSTRALIA.] HEDBERG WOODHALL

RESPONDENT. DEFENDANT,

ON APPEAL FROM THE SUPREME COURT OF Information-Ofences-Charge of having in " possession or control"- One offence

only - -Information disclosing more than one offence-Right of election - Duty of magistrate-Fisheries Act 1889 (Tas.) (53 Vict. No. 11), sec. 36 - -Magistrates Summary Procedure Act 1855 (Tas.) (19 Vict. No. 8), secs. 1, 10.

This case concerned a motion brought by Abraham Hansman, a boot and shoe manufacturer, seeking rectification of the Register of Trade Marks under section 71 of the *Trade Marks Act 1905*. Hansman sought to add a note to the registration of Trade Mark No. 5382, held by the Regal Shoe Company, the respondents. The proposed note would limit the Regal Shoe Company's exclusive rights to the word "Regal" in relation to boots and shoes, allowing Hansman to use the word in specific ways related to his manufacturing process and product presentation, as he had done prior to the registration.

During the hearing, Hansman sought to amend his motion to include an application under section 28 of the *Trade Marks Act 1905* for the registration of the word "Regal" as his own trade mark, asserting honest concurrent user rights. The legal issue before the Court was whether it had the jurisdiction to entertain an application for registration under section 28 directly, or if the preliminary procedure of applying to the Registrar first was a mandatory prerequisite.

The Court, presided over by Isaacs J., held that it could not entertain the motion under section 28 directly. His Honour reasoned that section 25 of the Act did not grant the Court an independent and summary jurisdiction to direct the Registrar to register a mark. Instead, section 25 was a restriction on the Registrar, and any application for registration, particularly on the grounds of honest concurrent user, must first be made to the Registrar. This preliminary procedure was essential to preserve the public's right to be heard and to ensure the protection afforded by the Act through publication and notice was not lost.

In deference to the Court's ruling, Hansman withdrew his application under section 28. The original motion for rectification under section 71 was therefore not determined on its merits in this proceeding.

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