Seven Up Company v OT Ltd [1947] HCA 59

Seven Up Company v OT Ltd [1947] HCA 59; (1947) 75 CLR 203 (19 August 1947).

The Seven Up Company, the US owner of the US soft drink trademark “7 UP” brought a motion to remove the Australian owned name “8 Up” from the Australian register of trademarks. Williams J dismissed the motion and an appeal to the Full Court was dismissed.

Per Williams J:

“… in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia. It is not then a mark which another trader is entitled to apply to register under the Trade Marks Act because it is not his property but the property of the foreign trader. The registrar is entitled to refuse to register the mark for such goods. If it has been registered the court may rectify the register on the ground that the mark is wrongly entered on the register.”

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