''Aston v Harlee Manufacturing Co.''
[.] is a significant legal decision involving Australian
trademark law. 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 iced milk restaurants into Australia. Aston, formerly based in
Honolulu,
Hawaii, United States, was a
Dairy Queen 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 Mountain ...
. Harlee Manufacturing Co., run by its founder L. S. Maranz, was a business similar to Dairy Queen, based in
Illinois, 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
Shell may refer to:
Architecture and design
* Shell (structure), a thin structure
** Concrete shell, a thin shell of concrete, usually with no interior columns or exterior buttresses
** Thin-shell structure
Science Biology
* Seashell, a hard ...
'',
[.] 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