250 / 270
GAZETTE
JULY-AUGUST
1980
aforesaid by him, except by leave of the
Court".
Griffin J. contrasted the provisions of Section
25(7) of the Act of 1963 with Section 26
which provides for the situation in which
there is opposition to registration, and in
which Section 26(9) provides that:
"On the hearing of an appeal under
Section 57 of this Act against a decision
of the Controller under this Section any
party may, either in the manner
prescribed or by special leave of the
Court, bring forward further material for
the consideration of the Court".
Held:
(per Kenny J. with concurring
judgments from Griffin and Parke, JJ.): that
the words "except by leave of the Court"
applied only to the grounds of objection taken
by the Controller. The High Court had no
power to allow any further materials to be
introduced after the Controller had stated his
decision; it is an appellate Court when dealing
with appeals from the Controller and not a
Court of first instance. The affidavit by Mr.
Smaltz on behalf of the applicant should not
have been admitted or considered by the trial
judge for he had not power to do so; and
without that affidavit there was no evidence
that the applicant had used or intended to use
the trade mark in the State.
Per Parke J. (in a concurring judgment):
"The onus of establishing the monopoly
which is conferred by the registration of a
trade mark clearly lies on the applicant at all
stages. If he fails to discharge this onus at the
hearing before the Controller (for which the
applicant himself has applied) he should not
be allowed to mend his hand on the appeal by
producing evidence or other material which
the Controller had no opportunity of
considering. The Act vests in the Controller,
in the first instance, the right and duty to
decide whether a proposed mark should be
registered. It is only when his decision is
unfavourable to the applicant that an appeal
lies to the Court. If the applicant could
produce evidence or material at that stage the
proceedings would no longer be an appeal,
but a trial at first instance in which the Court
would be substituting its own judgment for
that of the Controller".
Note:
At the end of his judgment Kenny J.
stated:
"It is lamentable that an application
lodged in 1972 should not be disposed of
by the Controller until 1976. It is equally
lamentable that this appeal came before us
in 1979 when the Controller had stated
his reasons in 1976. These great delays
are a feature of most trade mark
applications and do considerable harm to
the commercial reputation of this
country".
In the matter of the Trade Marks Act,
1963. Arby's Limited (Applicant).
Supreme
Court, (per Kenny J. with concurring
judgments from Griffin and Parke JJ.)
April, 1979 - unreported.
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