''Aston v Harlee Manufacturing Co.''. is a significant legal decision involving Australian

trademark A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from ot ...

law Law is a set of rules that are created and are enforceable by social or governmental institutions to regulate behavior,Robertson, ''Crimes against humanity'', 90. with its precise definition a matter of longstanding debate. It has been vario ...

. It involved separate businesses which both sought to use the

Tastee Freez Tastee-Freez is an American franchised fast-food restaurant specializing in soft serve ice cream. Its corporate headquarters is in Newport Beach, California, and it has stores in seven states, with two stores located in Illinois. The first Taste ...

name in Australia. Both men had

American American(s) may refer to: * American, something of, from, or related to the United States of America, commonly known as the "United States" or "America" ** Americans, citizens and nationals of the United States of America ** American ancestry, pe ...

businesses which were planning or contemplating expansion of

soft serve Soft serve, also known as soft ice, is a frozen dessert, similar to ice cream but softer and less dense due to air being introduced during freezing. Soft serve has been sold commercially since the late 1930s in the US. In the US, soft serve is ...

iced milk Ice milk, or iced milk, is a frozen dessert with less than 10 percent milk fat and the same sweetener content as ice cream. Ice milk is sometimes priced lower than ice cream. A 1994 change in United States Food and Drug Administration rules allow ...

restaurants into Australia. Aston, formerly based in

Honolulu Honolulu (; ) is the capital and largest city of the U.S. state of Hawaii, which is in the Pacific Ocean. It is an unincorporated county seat of the consolidated City and County of Honolulu, situated along the southeast coast of the isla ...

Hawaii Hawaii ( ; haw, Hawaii or ) is a state in the Western United States, located in the Pacific Ocean about from the U.S. mainland. It is the only U.S. state outside North America, the only state that is an archipelago, and the only stat ...

, United States, was a

Dairy Queen Dairy Queen (DQ) is an American chain of soft serve ice cream and fast food restaurants owned by International Dairy Queen, Inc. (a subsidiary of Berkshire Hathaway since 1998) which also owns Orange Julius, and formerly owned Karmelkorn and ...

operator there who moved to

Sydney Sydney ( ) is the capital city of the state of New South Wales, and the most populous city in both Australia and Oceania. Located on Australia's east coast, the metropolis surrounds Sydney Harbour and extends about towards the Blue Mounta ...

. Harlee Manufacturing Co., run by its founder L. S. Maranz, was a business similar to Dairy Queen, based in

Illinois Illinois ( ) is a state in the Midwestern United States. Its largest metropolitan areas include the Chicago metropolitan area, and the Metro East section, of Greater St. Louis. Other smaller metropolitan areas include, Peoria and Rock ...

, 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

een Een ːnis a village in the Netherlands. It is part of the Noordenveld municipality in Drenthe. History Een is an ''esdorp'' which developed in the middle ages on the higher grounds. The communal pasture is triangular. The village developed dur ...

used...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