use of the mark: section 92(4)(b)(i)
25 Removal of the trade mark was ordered by the primary judge pursuant to s 92(4)(b)(i) of the TM Act which provides as follows:
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; …
26 The bottles of wine offered for sale and sold in Australia bore the BAREFOOT mark and accordingly the mark was "used" in relation to those goods in Australia within the meaning of s 7(4) of the TM Act. The question is whether this use was by the registered owner as a consequence of use by Barefoot Cellars as authorised user.
27 As Gallo formulated the question it is whether, when a registered trade mark is used in Australia on, or in physical or other relation to the goods, which are offered for sale and sold here but manufactured overseas by an owner or authorised user of the mark who applied the mark to them, the use of the mark constitutes a use by the owner, even though that person may not know that the goods are being offered for sale or sold in Australia but rather sold them to a foreign distributor for resale without any limitation on where they might be resold.
28 There is no direct authority on this question.
29 That answer to the question, Gallo submitted, follows from three basic propositions of trade mark law:
(a) first, the term "use" in ss 92(4)(b) and 100(3)(a) of the TM Act refers to more than mere physical use of the mark, it refers to use of the mark as a badge of origin in the sense that it indicates a connection in the course of trade between goods and the owner of the mark. That is consistent with the definition of a trade mark, in s 17 of the TM Act, as "a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by another person";
(b) secondly, whether or not there has been use of a trade mark in this sense is to be determined objectively, and not by reference to the subjective intentions or knowledge of the person said to have used the mark; and
(c) thirdly, in the case of goods, use of a mark in the relevant sense commences when goods bearing the mark as a badge of origin enter the course of trade and ends only when the goods are bought for consumption.
30 In our opinion, it is not the content of these propositions which is controversial, rather these propositions themselves which pose but do not answer important questions. For example what is meant by "used … in the course of trade … by a person": s 17 TM Act, when goods bearing a trade mark registered in Australia have entered this country.
31 Gallo submitted that, consistently with these propositions, when Barefoot Cellars applied, under licence from Mr Houlihan, the BAREFOOT mark to its bottles of wine and exported them, it commenced to use the mark as a badge of origin indicating a connection in the course of trade between the trade mark owner and those bottles. The mark continued to perform this functionwhile the bottles of wine bearing the mark remained in the course of trade, including when they were offered for sale and sold in Australia by BAW. In this way, Barefoot Cellars (and, through it, the registered owner) continued to use the mark as a badge of origin in the course of trade until the bottles of wine were bought from BAW for consumption. Although neither Mr Houlihan nor Barefoot Cellars may have known that the particular bottles of wine in question were being offered for sale and sold in Australia, this cannot affect the objective question of whether there was a use of the BAREFOOT mark by the registered owner.
32 Gallo did not challenge any of the primary judge's findings of fact concerning Mr Houlihan's or Barefoot Cellars' lack of knowledge of the use of the mark in Australia. However it submitted that the BAREFOOT trade mark was used in Australia by the registered owner during the non-use period by virtue of the importation of some wine bearing the registered trade mark by BAW and its subsequent sale in Australia.
33 Gallo submitted that the registered mark was used in Australia because it was affixed with the authorisation of the registered owner to goods which entered the course of trade in Australia, the registered trade mark remained affixed to the goods as a badge of origin and "intention and knowledge are simply irrelevant to an objective assessment of trade mark use". It submitted that observations in Estex were not a statement of general principle regarding the projection of goods in the course of trade in Australia but rather a particular finding on the facts of the case. Gallo submitted that once a registered owner, or licensee, has affixed the trade mark to his goods, that trade mark continues to perform the function of distinguishing the owner's goods, whether they are imported or offered for sale and even if they are sold without his consent. This, Gallo submitted, constitutes use sufficient to satisfy the statutory requirement and avoid removal.
34 In our opinion, the conclusion of the primary judge was correct. The contention of Gallo that an owner of a registered trademark uses the mark in Australia simply because goods to which the owner (or an authorised user) has affixed the mark are traded in the ordinary course of trade in Australia should be rejected.
35 It is necessary to say something about the facts in Estex. The respondent was the registered owner under the Trade Marks Act 1955 (Cth) of two trade marks. The two marks were the word "Eastex" in slightly different forms. The respondent was a manufacturer in England of women's dresses, jersey suits and coats which it sold by wholesale. The applicant and later appellant, was a New South Wales company which also manufactured articles of women's clothing and used the word "Estex" on its garments seemingly as a trade mark. Indeed it had sought registration of that word as a trade mark. The appellant applied for an order that the respondent's two trade marks be removed on the ground that during a period of three years before the application was brought there was no use in good faith of the trade marks in Australia by the respondent.
36 The primary judge, Windeyer J, made findings to the following effect. During the relevant three year period, the respondent manufactured and sold to Australian retail traders, either directly or through its London buying agent, substantial quantities of garments with "Eastex" tags and labels sewn on or otherwise attached to the garments for resale in Australia. The sales made by the respondent to the Australian retail traders were made in England and the garments, in each instance, were the subject of an FOB contract and property in them passed upon shipment in London. However, during the three year period the garments were displayed for sale and sold in Australia by those retail traders.
37 The applicant contended unsuccessfully before Windeyer J that there had been no use by the respondent in Australia of the marks. The applicant appealed. The Full Court of the High Court dismissed the appeal. As to whether there had been use by the respondent of the marks in Australia, the Full Court said (at 271):
[The word "use"] denotation [in s 23] is not limited by any concept of the physical use of the tangible object and we have no doubt that when an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer. (Emphasis added)
38 In this passage, the Full Court identified two factors which, in the circumstances of that case, led to the conclusion that the respondent had used its marks in Australia. The second, referred to after the word "and", was that goods bearing the manufacturer's mark had been displayed or offered for sale or sold in Australia. The essence of Gallo's case in this matter is this is all that is necessary to establish use in Australia by the manufacturer or producer. However, that is not what the Full Court said. Projection by the manufacturer of goods bearing its mark into the course of trade in Australia was the other factor which, together with the display, sale or offering for sale, led to the conclusion that there had been use of the mark in Australia by the manufacturer and its owner. We think fairly plainly what the Full Court was saying was that for there to be use in Australia of the mark by the owner, the owner of the mark must have engaged in conduct of some type which the owner might reasonably contemplate would result in dealings with its goods marked with its mark in Australia while the goods were in the course of trade.
39 Later authorities which have considered this passage do not suggest it should be understood differently: Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495 at 510 per Gummow J; Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd (1999) 93 FCR 421 at [68]-[70] per the Full Court; Asia Television Ltd v Yau's Entertainment Pty Ltd (No 2) (2000) 49 IPR 264 at [9] per Gyles J; and Brother Industries Ltd v Dynamic Supplies Pty Ltd (2007) 163 FCR 530 at [42] and [45] per Tamberlin J; Pioneer Electronic Corporation v Registrar of Trade Marks (1977) 137 CLR 670 at 688; Ward Group Pty Ltd v Brodie & Stone plc (2005) 143 FCR 479 at 489.
40 In Estex, the London manufacturer knew that its goods had been sold to Australian retail houses for sale there, rather than in some other country. However, Gallo submitted that this knowledge formed no part of Windeyer J's reasoning on the critical issue in the case. Nor, Gallo submitted, could it properly have formed such a part given that whether there has been use of a mark is to be determined objectively. While the reasons of Windeyer J might be thought to have been subsumed by the Full Court, we advert to them in order to deal with Gallo's submission as it was formulated. Gallo submitted that the result in Estex would have been exactly the same had the London manufacturer not known to whom its garments had been sold or where they were bound. It is certainly the case that no part of the reasoning set out above would require adjustment to accommodate that change in the facts.
41 In support of this view of Windeyer J's reasons, Gallo referred to Jackson & Co v Napper (1886) 35 Ch D 162, which was the only authority his Honour cited on this issue and which he described as "instructive". In that case, in deciding whether German manufacturers of steel and hardware goods had used their mark in England, Stirling J said (at 178):
Now, in considering that, I do not think I can do better than refer to what Lord Westbury said in McAndrew v Bassett[4 D. J. & S. 380] with respect to the essential ingredients of a trade mark. He says [4 D.J. & S. 384]: `An element of the right to the property in a trade mark, may be represented as being the fact of the article being in the market as a vendible article, with that stamp or trade mark, at the time when the defendants imitate it. The essential ingredients for constituting an infringement of that right probably would be found to be no other than these: first, that the mark has been applied by the plaintiffs properly (that is to say) that they have not copied any other person's mark and that the mark does not involve any false representation; secondly, that the article so marked is actually a vendible article in the market; and, thirdly, that the defendants, knowing that to be so, have imitated the mark for the purpose of passing in the market other articles of a similar description.' It seems to me, according to that passage from Lord Westbury's judgment, that the trade mark has been used in England if you find that the articles marked with it have been actually vendible articles in the market in England; and that is the test which I proceed to apply...
42 Gallo submitted, that consistently with Windeyer J's judgment in Estex, this passage from Jackson reveals that Stirling J was concerned, not with the knowledge or intention of the proprietor in relation to whether its goods, to which its trade mark had been applied, were on the market in England, but merely with whether the goods so marked were on the market at all.
43 Many authorities deal, in a variety of ways, with the question of the use of a trade mark in Australia in the context of related overseas use. There are none of which we are aware that proceed on any basis other than use in Australia involved or comprehended some act that was known either to have had, or potentially have, the result that the goods to which the mark was attached would be dealt with in some way within Australia in the course of trade.
44 An example is Blackadder v Good Roads Machinery Company Inc (1926) 38 CLR 332. An Australian company had secured registration in Australia of the trade mark "Winner" in relation to machinery and agricultural and horticultural machines. This was achieved in circumstances where he had been aware that an American company had exported to Australia road-grading machines marked with the word "Champion" and later and in addition, marked with the word "Winner". However the Australian importer obliterated the word "Winner" on those machines so marked and substituted the word "Champion". One issue was whether the American manufacturer had used the mark "Winner" in Australia. In his reasons for judgment, Starke J recounted evidence which established that the American company had accepted orders from Australia for machines under the trade names "Champion" and "Winner", prepared advertisements and invoices and sent them to Australia, describing its machines under the same names and sent goods to Australia bearing a registered name and also the trade names. Later in his reasons (at 337), his Honour said that the American company "had lawfully used the word ["Winner"] in Australia in the limited way already mentioned". That was plainly a reference to the evidence to which we have just referred. That is, use involving conduct which did and was known to result in goods with the mark entering the course of trade in Australia.
45 Another example is Re the Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Limited (1951) 82 CLR 199. An English manufacturer of cigarettes sold them using the mark "Yanx". Another English company and trade competitor registered the mark in Australia, although it had not used the mark in Australia or elsewhere. The date of registration was 30 September 1946. One issue was whether the registered owner of the mark in Australia was, in truth, the owner of the mark at the time of registration. That, in turn, depended on whether the English manufacturer who actually used the mark on its cigarettes in, amongst other places, England, had used the mark in Australia. The facts were that before 30 September 1946 an order had been received from Australia by the manufacturer for several million "Yanx" cigarettes and the manufacturer had commenced shipping them to Australia, although they had not arrived by 30 September 1946. Justice Williams concluded that there had been use of the trade mark in Australia observing that as a matter of principle and common sense it would seem that a mark is used as a trade mark in Australia if it is used in Australia to designate the goods of a particular trader which are offered for sale in Australia under the mark whether the goods themselves are actually in Australia or not. His Honour said the goods are "put upon the Australian market" whether they are in Australia awaiting delivery upon sale or they may have to be imported for delivery after sale. His Honour was fairly clearly referring to the goods being "put upon the Australian market" by the actions of the English manufacturer.
46 A more recent example is Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402. In that matter an Italian manufacturer of building products had registered a trade mark (as of 30 June 1978) in Australia which was then being used by an Australian company which had originally been the distributor of the Italian manufacturer's products. The trial was conducted in the Supreme Court of Victoria. One issue was whether the Italian manufacturer had used the mark in Australia and thus was its proprietor at the time registration was secured. The trial judge reviewed, in detail, the evidence. The activities of the Italian manufacturer were discussed in relation to two periods. The first was the period preceding a visit to Italy by one of the principals of the Australian company in 1967. The second was the period following the visit. In the first period the Italian manufacturer had sent some small amounts of product bearing, it seems, the trade mark to another company in Sydney. The trial judge said at 417:
The size and composition of the consignment points in my view to the purchaser purchasing not for resale but for its own use despite the fact that it was a firm and received samples and brochures. I consider that it follows from the authorities that a mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which in a business sense had already been opened to Australia. The mark must be used for the purposes of trade: W D & H O Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 183 at 191. The forwarding of samples and brochures is not sufficient to indicate that… [the Italian manufacturer] was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for… [the Italian manufacturer] to export here. Use of the mark in such preliminary activities would not be use in the course of trade: Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) 59 ALJR 77 and 83. (Emphasis added)
The trial judge went on to conclude that there had been use by the Italian manufacturer having regard to the sale of the product and the provision of samples and brochures by it to the Australian company in the second period which were then sold or used to promote sales of the product in the Australian market. An appeal from this judgment was dismissed by a Full Court of this Court: Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569, although in the appeal it was conceded by the Australian company that there had been use of the mark by the Italian manufacturer before 30 June 1978. It is reasonably clear that the conclusions of the trial judge on that particular question, were not challenged in the appeal.
47 Turning to the provisions of the TM Act, registration of a trade mark creates a statutory monopoly in relation to its use. However, to secure the monopoly a person must claim to be the owner of the trade mark and, by dint of s 27(1)(b) of the TM Act, is using or intending to use the trade mark, has authorised or intends to authorise another person to use the trade mark or intends to assign the trade mark to a body corporate which will use the trade mark. "Use" (or user as it is sometimes spoken of) or "intended use" is use in Australia: see for example the discussions of Bowen CJ and Lockhart J in Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569at 570 and 601 respectively, as well as s 59. Ownership from "intended use" necessarily involves a conscious resolve on the part of the person alleging ownership of future use in Australia. No authority of which we are aware suggests that inadvertent, unknown and unintended use in Australia results in ownership of the mark for the purposes of registration under Australian law. As to s 27(1)(b), each of the several statutory preconditions to registration (except present use), are expressed in terms which appear to necessarily involve a consciousness on the part of the person claiming to be the owner that the use of the mark is proposed in Australia. That flows from the several concepts in s 27(1)(b) involving an intention to use in Australia, prior or proposed authorisation of someone else to use in Australia or intention to assign for use in Australia. A person cannot unwittingly intend to do something, unwittingly authorise someone else to do something or unwittingly intend to assign something. Context strongly suggests likewise that use by the person claiming to be the owner: s 27(1)(b)(i), is not unwitting or inadvertent use but deliberate use of the mark in Australia as a badge of origin.
48 Putting aside special provisions of the TM Act such as Pt 17 concerning defensive trade marks, the failure of a registered owner to continue to use the trade mark directly or indirectly or to give effect to the intention to use the trade mark (which ordinarily is presumed at the time registration is sought unless an opponent discharges the burden of proving the absence of intention) exposes the mark to removal from the Register under s 92. It is tolerably clear that for the statutory scheme of the TM Act to be a cohesive one, the use to which s 92 is directed is use of the same character which would warrant registration of the trade mark in the first place. That is conduct, by or on behalf of the owner, associated with a witting or deliberate use of the trade mark in Australia.
49 The primary judge, referring to the judgment of the Full Court in Estex, found that there had been no "projection" of the BAREFOOT wine by the proprietor of the BAREFOOT trade mark into the Australian market but only into the German market [146]. We respectfully agree.
50 The use of the like expressions "overseas manufacturer projects into the course of trade in this country …" or "projecting goods … on to the Australian market …" by the Full Court of the High Court in Estex at 271-2 is simply to characterise in that case what was the use of the trade mark by the registered proprietor in Australia. It is this which, according to the language of the legislation, is required to be considered.
51 Section 23(1)(b) of the Trade Marks Act 1955-1958 (Cth) was in substance similar to s 92(4)(b)(i) of the TM Act. Relevantly, it engaged amongst other things the question whether there "was no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being".
52 Gallo placed considerable reliance upon the following passage from the judgment of Windeyer J at first instance at 267:
The manufacturer who sells goods, marked with his mark, to warehousemen, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.
53 However, these observations must be seen in context. They are found sandwiched between the following passages:
After the goods have been sold by him his mark may still, using the definition of trade mark in the Act, be used in relation to those goods for the purpose of indicating a connection in the course of trade between them and him, the registered proprietor of the mark. [at 266 - 267]
And then:
Of course the use which s 23 speaks of is a use in Australia by the registered proprietor … [at 267].
54 Justice Windeyer, in our respectful opinion, correctly focused upon the definition of "trade mark" in the Act. Relevantly, that same enquiry ought to be made here. Section 17 of the TM Act provides:
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
55 Accordingly, the use of a trade mark is not use in a vacuum but rather it is use "in the course of trade by a person". The remarks of Windeyer J in the above passage relied upon by Gallo require them to be understood in the context of a course of trade in Australia between a person, in that case the registered owner, and someone else not being the ultimate consumer.
56 In this case the course of trade was between Gallo and the wholesale company in Germany. There was, objectively considered, no course of trade between Gallo and BAW or any other party in Australia. The primary judge was, in our respectful opinion, correct in so finding.
57 Part of Gallo's case raised the question of whether BAW used the BAREFOOT trade mark in Australia. Gallo submitted that BAW did not use the trade mark in selling or offering for sale bottles of wine bearing the mark and that it must have been a use by Barefoot Cellars and Houlihan. We do not accept this submission. A trade mark may be used by someone other than the registered owner or an authorised user. The Full Court in Transport Tyre Sales Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd (1999) 93 FCR 421 at [94] held that the mere sale by an importer of tyres in the side of which the registered proprietor had moulded the relevant mark overseas was a use of the mark in Australia by the importer. Pioneer Electronic Corporation v Registrar of Trade Marks (1977) 137 CLR 670 was to the same effect. In that case the Registrar of Trade Marks contended that the Australian subsidiary of Pioneer ought not to be registered as a user of the Pioneer registered marks because it merely imported goods manufactured by the parent company already bearing the marks and sold them. Aickin J said at 688:
It was argued that Estex Clothing Manufacturers Pty. Ltd. v. Ellis and Goldstein Ltd [(1967) 116 CLR 254] decided that a retailer who sold imported goods bearing an Australian registered trade mark did not use the mark, and that therefore a "distributor" did not use a mark which was already on the goods. In my opinion the Estex Case is not authority for that proposition.... It was not necessary in that case to consider whether the retailer also used the mark because the only relevant question was whether the registered proprietor himself had used the mark in Australia. ... Thus if Pioneer Australia had done no more than import the goods and sell them by retail it would have used the mark .... (Emphasis added)
As his Honour found at 686, by selecting the goods and selling them with the marks originally placed on them and by displaying them for sale, the local importer used the marks in Australia.
58 We do not accept Gallo's submission that Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton (1930) 1Ch 330 is authority in support of the proposition that the trade mark owner continues to use the goods wherever they end up in world trade and hence a parallel importer such as BAW does not use the mark because only the original proprietor uses the mark. As the respondent submitted, that case is not authority for that proposition. It was held that a registered proprietor could not sue for infringement a person selling goods to which the registered proprietor had applied the mark. As Branson J said in Parfums Christian Dior (Australia) Pty Limited v Dimmeys Stores Pty Limited (1997) 39 IPR 349at 353-354, citing Revlon Inc v Cripps & Lee Ltd [1980] FSR 85,it is reasonably argued that the philosophical basis for the rule in Champagne is that the registered proprietor consents to the use of its trade mark in those circumstances. That is entirely consistent with the introduction in the 1995 Act of s 123. That section provides that a defence to infringement is that the mark was applied to the goods with the consent of the registered proprietor. That is to say, it is a statutory recognition that absent s 123 the mere sale by an importer of goods already marked would be an infringing use of the mark by the importer.
59 Not all non-infringing use of a trade mark in the course of trade is use by the trade mark owner. As the respondent submitted, s 17 does not provide that a trade mark is a sign used to distinguish goods dealt with or provided in the course of trade by the owner of the trade mark. Rather, it distinguishes goods dealt with or provided in the course of trade by a person. This important distinction reflects Aickin J's elucidation in Pioneer of the ability of a retailer to associate itself with a particular mark by selecting for resale and selling goods bearing a particular mark.
60 We also accept the submission of Lion Nathan that the structure of the TM Act provides clear scope for non-infringing use of a trade mark other than by owners. "Use" in relation to goods is relevantly defined as "use of the trade mark upon, or in physical or other relation to, the goods (including second hand goods)". The grant of a licence to use a trade mark, in the absence of the control required by s 8, will result in use by the licensee that does not enure for the benefit of the owner under s 7(3). The relevant connection between the owner and the trade would be severed in such a case, consistent with the common understanding of the old law, that to grant a licence to use a trade mark invalidated it but if the licensee sold or advertised goods under the trade mark, there would undoubtedly be trade mark use: Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478.
61 In the result, the primary judge was correct in concluding that the trade mark BAREFOOT had not been used in Australia by Houlihan or Gallo and should be removed from the Register on the basis that the ground of removal in s 92(4)(b)(i) had been established. It is unnecessary in this appeal to consider the effect of s 100 in the face of a finding correctly made that there had not been use of the registered mark in Australia or, because of Lion Nathan's allegation of non-use, to consider what precisely Gallo would have had to establish in opposition to the revocation application having regard to s 100(3). Also, given this conclusion, it is unnecessary to deal with the question of use in good faith raised by Lion Nathan as a ground of removal: s 92(4)(b)(ii) and also two issues raised by Lion Nathan in its amended notice of contention, namely that any use was by Grape Links Inc which was not an authorised user and the trade mark used was not the registered mark BAREFOOT but rather was that word in conjunction with an image of a bare foot. We should, however, note that our conclusion that there was no use of the mark in Australia, necessarily means there was no use in good faith.
62 It is convenient, at this point, to deal with the cross appeal concerning the date upon which the removal order commenced to operate. If the primary judge was correct in deciding that the order could only, and in any event should, operate from the date the order was made, then it is necessary for us to consider the arguments raised in the appeal about infringement.
63 The only issue raised by the cross appeal is the effective date of removal from the Register of Australian Trade Mark No 787765 under ss 92 and 101. The date of removal, Lion Nathan contended, should have been 8 May 2007, not 27 June 2008. Lion Nathan submitted that ss 13 and 101 of the TM Act do not, either expressly or by implication, preclude, as the primary judge decided, an order being made for removal of the trade mark from 8 May 2007 and s 127 implies that this is possible. It submitted that not only is there power to make such an order but it should have been made. The construction adopted by the primary judge exposes Lion Nathan, it was submitted, to "considerable injustice in the form of pecuniary and other orders for trade mark infringement".
64 Section 101(2) is clear in its terms. Firstly, it makes plain that the power conferred on the Court to order the Registrar to remove the trade mark from the Register is a power exercisable at the end of the proceedings relating to an opposed application for the removal of a trade mark. The section identifies when the power can be exercised. Also, the terms and the character of the order are clear. It is an order directing someone to do something, namely the Registrar to remove the trade mark from the Register. Manifestly, that order can only operate prospectively. That is, the act directed by the order can only be done after the order is made. This consequence is reinforced by s 103 which requires the Court to cause a copy of the order be served on the Registrar and, additionally, mandates that the Registrar comply with the order.
65 From this point in the statutory scheme when the Court comes to make the order, the effect of the order is, in substance, determined by the TM Act itself. That is because the task the Registrar must perform is, as expressly identified in s 101(2), to "remove the trade mark from the Register". The expression "remove from the Register" (an expression in the active voice) is defined in s 6 and that definition draws attention to s 13. While that latter section, in terms, is in the passive voice and identifies the circumstances in which a trade mark is taken to have been removed from the Register, it nonetheless makes plain that the Registrar is obliged to make an entry in the Register to the effect that all entries in the Register relating to the trade mark are taken to have been removed from the Register. Accordingly, once the removal order is made by the Court, it must be complied with in the way prescribed by the TM Act. It is, in our opinion, a false issue to contemplate whether or not an order under s 101(2) can be made as a "retrospective" order. The TM Act does not authorise the Court to make an order requiring the Registrar to do anything other than what the TM Act itself prescribes.
66 It is, of course, an entirely different question as to what is the effect of the act of the Registrar when complying with the order. Does the act of making the entry in the Register have a legal effect on events which occurred before the entry was made? It is tolerably clear from s 127 that, apart from the effect of that section, it does not. The section proceeds on the basis that even if a ground for removal is made out and, by implication as at least one possibility, a removal order has been made, there nonetheless can be infringement of the trade mark whilst ever it is registered and before the entry is made.
67 This leads to a consideration of the other issues in these proceedings (including those raised by Lion Nathan's notice of contention) concerning the conclusion of the primary judge that there had been no infringement by Lion Nathan.