The Comptroller-General of Customs has forwarded for advice the following memorandum:

With reference to my memo of the 16th August 1924 and previous correspondence relative to the registration as a trade mark of the brand and word ‘Kangaroo’ for application to certain butter and cheese exported from the Commonwealth, which brand is being regarded as Australia’s national brand of quality when applied to such produce, I desire to enclose herewith for information and advice copy of a cablegram which has been received from the High Commissioner’s Office in London.

The facts are that the establishment of the Kangaroo brand was suggested by the Australian Dairy Council as a means of improving the quality generally of Australian butter and cheese on the London market.

Application for the registration of the brand as a trade mark was made by the Australian Dairy Council and was approved but when it was realized that the Council owned no butter or cheese and possessed no statutory powers whereby the mark could be applied to butter and cheese shipped by all exporters, arrangements were made for the ownership of the brand to be transferred to the Comptroller-General of Customs. Such arrangements were completed on 13th September, 1924, and the trade mark in question is now owned by this Department. Number 34531 has been allotted to this brand.

In order to give effect to the brand a proclamation under the Customs Act was issued on the 18th September, 1924, which prohibits the exportation of all butter and cheese graded at
92 points and over unless such goods bear the Kangaroo standardization trade mark
number 34531.

Butter and cheese are now being shipped to England and elsewhere bearing this trade mark, but no action has been taken to have the brand registered outside Australia.

Advice is desired as to whether the brand because of its registration in Australia is in any way protected in England or any other country, and if not, what action, if any, can be taken to safeguard the brand abroad particularly in England.

It will be observed that the brand Kangaroo is registered in England by McAlister of Liverpool for use on butter and other produce.

The cablegram received from the High Commissioner’s Office in London is in the following terms:

Confidential–Have ascertained Kangaroo Brand registered 1911 by McAlister, Liverpool, for certain foodstuffs specifically including butter. Registration still in force. Have received no hint of possible objection and am making investigations whether firm still operating. In likely event of objection being lodged please advise urgently what action desired.

In my opinion, the registration of the brand as a trade mark in Australia does not in any way afford protection in England or any other country outside Australia to the proprietor of the brand.

The only means by which protection can be obtained in England or elsewhere is by registration under the laws of the country in which application is made for registration.

Any such application in England would be liable to provoke opposition from McAlister of Liverpool, but if McAlister is not using the mark, proceedings may perhaps be taken for the removal of his trade mark from the English register under section 37 of the English Trade Marks Act 1905.

[Vol. 21, p. 404]