''Aston v Harlee Manufacturing Co.''
[.] is a significant legal decision involving Australian
trademark
A trademark (also written trade mark or trade-mark) is a form of intellectual property that consists of a word, phrase, symbol, design, or a combination that identifies a Good (economics and accounting), product or Service (economics), service f ...
law
Law is a set of rules that are created and are enforceable by social or governmental institutions to regulate behavior, with its precise definition a matter of longstanding debate. It has been variously described as a science and as the ar ...
. It involved separate businesses which both sought to use the
Tastee Freez name in Australia.
Both men had American businesses which were planning or contemplating expansion of
soft serve
Soft serve, also known as soft ice, is a frozen dessert and variety of ice cream, similar to conventional ice cream, but softer and less dense due to more air being introduced during freezing. Soft serve has been sold commercially since the lat ...
iced milk restaurants into Australia. Aston, formerly based in
Honolulu
Honolulu ( ; ) is the List of capitals in the United States, capital and most populous city of the U.S. state of Hawaii, located in the Pacific Ocean. It is the county seat of the Consolidated city-county, consolidated City and County of Honol ...
, Hawaii, United States, was a
Dairy Queen
International Dairy Queen, Inc. (DQ) is an American multinational fast food chain founded in 1940 and currently headquartered in Bloomington, Minnesota. The first Dairy Queen was owned and operated by Sherb Noble and first opened on June 22, ...
operator there who moved to
Sydney
Sydney is the capital city of the States and territories of Australia, state of New South Wales and the List of cities in Australia by population, most populous city in Australia. Located on Australia's east coast, the metropolis surrounds Syd ...
. Harlee Manufacturing Co., run by its founder L. S. Maranz, was a business similar to Dairy Queen, based in
Illinois
Illinois ( ) is a U.S. state, state in the Midwestern United States, Midwestern United States. It borders on Lake Michigan to its northeast, the Mississippi River to its west, and the Wabash River, Wabash and Ohio River, Ohio rivers to its ...
, USA.
The court maintained that authorship does not require the applicant be the first and true inventor of the mark. (Aston's application for special status and use of the name first, in 1952. Notice of opposition was filed by Harlee in 1956, and its own registration application was submitted in 1957.) The court further stated that trademark registration and determining its award is a question of whether anyone else has a right to use the word prior to that of the person claiming authorship.
The court followed ''
Shell Co of Australia Ltd v Rohm and Haas Co'',
[.] that "right to registration depends...on proprietorship of a mark" but like ''Shell'' adheres to the English case ''In re Hudson's Trade Marks''
[''In re Hudson's Trade Marks'' (1886) 32 311.] when the "trade mark...has never
eenused...at all". ''Shell'' continued that "an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on...the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration".
Like ''
The Seven Up Co v OT Ltd'',
[.] the court would not give weight to the use of the registered mark in foreign locations.
Even though Aston deliberately copied or adopted or intended the use of the registered name from a foreign country, there was no evidence of fraud.
Further, the court decided:
References
External links
*{{cite web, url=http://www.austlii.edu.au/cgi-bin/LawCite?cit=1960+HCA+47 , title=Cases and articles referring to ''Aston v Harlee Manufacturing Co'' , website=LawCite
High Court of Australia cases
1960 in case law
1960 in Australian law