Farbenfabriken Bayer Aktien gesellschaft v Bayer Pharma Pty Ltd; R v Ashton

Accordingly when the new Act came into force the trade mark of which the Australian Company was the registered proprietor ceased to be registered under the repealed Act and became registered under the repealing Act. The transitional provisions of the latter Act did not keep on foot applications, such as the one with which this case is concerned, made before the new Act came into force nor did it permit such applications to be dealt with under the new Act. And, since the transitional provisions were exhaustive, s. 8 of the Acts Interpretation Act could not be called in aid: G. F. Heublein and Bro. Inc. v. Continental Liqueurs Pty. Ltd. [1] . In the result, therefore, the Australian Company's application of November 1956 ceased to be effective when the new Act came into force on 1st August 1958 and an application for leave to alter the trade mark under s. 21 of the new Act could only be made and dealt with under that section. No such application was, however, made. Nevertheless on 5th September 1958 Mr. Ashton announced his decision to grant the Australian Company's application of November 1956 but made it clear, by the reasons which he gave, that he was doing so under s. 21 of the new Act and in his capacity as an Assistant Registrar appointed under that Act. In taking this course he fell into error and the German Company, equally mistakenly and in purported pursuance of s. 21, lodged an appeal to this Court. When it came on for hearing before Kitto J., counsel for the Australian Company took the preliminary objection that no appeal lay and, at the request of the parties, the learned Judge thereupon stated for the opinion of the Full Court the question whether the appeal was competent. Following the taking of the objection to competency the German Company obtained from his Honour an order nisi for a writ of prohibition directed to Mr. Ashton and the Australian Company to prohibit the former from proceeding further upon his decision.

When the matters were heard before us, counsel for the Australian Company submitted that Heublein's Case [1] had been wrongly decided and asked that it be reconsidered. Upon the Court indicating that it was not prepared to take this course counsel conceded, and rightly so, that in the light of that decision the application to alter the trade mark made under the repealed Act must be regarded as having ceased to exist when the new Act came into force and that, in the absence of a fresh application made under s. 21 of that Act, the appeal to Kitto J. was incompetent. The question asked in the stated case should therefore be answered "No".

It is necessary then to consider whether the order nisi for prohibition should be made absolute. On this, counsel appearing for the Assistant Registrar made a number of submissions, some of which were supported by counsel for the Australian Company. Counsel for the Assistant Registrar argued that the Assistant Registrar might properly treat the application made under s. 70 of the repealed Act as being one made pursuant to s. 21 of the new Act and deal with it on that basis, but the argument cannot be sustained. The coming into force of the new Act had put an end to the only application that had been made and, in the absence of a fresh application made under the new Act, s. 21 could have no operation.

Counsel also submitted that prohibition would not go to the Assistant Registrar because, so he contended, his functions under s. 21 were purely administrative. In support of this contention he referred us to R. v. Commissioner of Patents; Ex parte Weiss [2] , in which there was some discussion of the question whether prohibition would, in any circumstances, lie to the Commissioner of Patents. Latham C.J. and Evatt J. rejected the view that it would not, while Starke J. thought that the particular function which the Commissioner had performed in that case was a purely administrative one, not involving any duty to act judicially, and that the writ would not lie. It seems to us, however, to be beyond question that the Registrar or an Assistant Registrar, exercising a delegated authority, acting under s. 21 of the present Act exercises a quasi-judicial function which affects the rights of private persons and that in a proper case what he does may be controlled by prohibition.

Counsel also submitted that the Registrar or an Assistant Registrar, acting under s. 21, had power to decide whether he had before him a valid and effective application. His decision in a particular case might be wrong but, if it was, he was nevertheless acting within the limits of the powers conferred upon him. We cannot agree that this is so. His power to make a decision under s. 21 granting or refusing an application to alter a trade mark on the new Register set up under the Act depends upon the existence of an application made to him under that section. Its existence is an essential preliminary to the exercise of the powers conferred by the section and, in its absence, he has no power to act.

Finally it was contended that, as a matter of discretion, the writ should be refused. The argument was based upon the fact that the German Company had lodged an appeal to this Court and thereby, so it was said, treated the Australian Company's application as having been made, contrary to the fact, under s. 21. In other words it had attempted to exercise a non-existent right of appeal and for that reason the Court, in its discretion, should refuse to prohibit the carrying into effect of the Assistant Registrar's decision. We do not agree. In our opinion the order nisi should be made absolute.