GF Heublein & Bro Inc v Continental Liqueurs Pty Ltd

No question now arises concerning the locus standi of the respondent, as a "person aggrieved" within the meaning of s. 72 of the earlier Act, to make the application when it did. But it was argued that the section required the applicant to prove that there had been no bona fide user of the trade mark during any period of three years between the last registration thereof and the making of the application. Alternatively, it was said, the appellant had shown that at the date of the application the trade mark was in bona fide use and that it had been so for a period of six months prior to that date.

The first proposition is concerned with the construction of the earlier part of sub-s. (1) of s. 72. In terms, the sub-section provided that "The Court may if it is shown that there has been no bona fide user of a trade mark for a consecutive period of three years since the date of the last registration thereof, order its removal from the register ". We agree with Kitto J. that the condition prescribed by these words is satisfied if it be shown that for any consecutive period of three years since the last registration there has been no bona fide user of the trade mark. The sub-section does not require proof that there has been no consecutive three year period of user since the last registration. It is enough if it be shown that for any period of three years there has been no bona fide user. This view has already been acted upon in this Court (Rothmans Ltd. v. W. D. & H. O. Wills (Australia) Ltd. [1] and, on appeal, W. D. & H. O. Wills (Australia) Ltd. v. Rothmans Ltd. [2] and we agree that Kitto J. rightly rejected the appellant's submission on this point.

1. (1955) 92 C.L.R. 131, at p. 134. 2. (1956) 94 C.L.R. 182, at p. 186.

We also agree with his Honour that the appellant failed to prove that at the date of the application the trade mark was in bona fide use within the meaning of the section and that it had been so for a period of six months immediately prior to the date of the application. The plain fact is that it was not used in this country by the registered proprietor during this period though it was, with a substitution of one legend for another in the mark, used by Gilbeys Limited. The character of this substitution was referred to by his Honour and was described in the reasons delivered by this Court in Heublein Inc. v. Continental Liqueurs Pty. Ltd. [1] and it is enough for present purposes to say that the substitution had the effect of identifying the mark as altered with the goods of Gilbeys Limited and, at the same time, of denying any connexion between the mark and the goods of the appellant as the proprietor. The mark as altered was used by Gilbeys Limited with the consent of the appellant and, no doubt, it was intended that an application should be made under the Trade Marks Act for an order authorizing the registration of that company as a registered user. Such an application was made but it was dismissed as also was the appeal against the order of dismissal. (See Heublein Inc. v. Continental Liqueurs Pty. Ltd. [1] .) A majority of the Court in the appeal, which was decided after the order now under appeal had been made, considered that the use by Gilbeys Limited of the trade mark in its entirety would purport to indicate an absence of any connexion between that company and the goods of its manufacture in respect of which it wished to use the mark and a non-existent connexion between the registered proprietor and those goods. Conversely, the use by Gilbeys Limited of the trade mark with the substituted legend, whilst indicating a connexion between that company and the goods in respect of which the mark as altered was used, denied any relationship between the mark as so used and the goods of the registered proprietor. In those circumstances it is impossible, we think, to see how the use by Gilbeys Limited of the mark in that form can, in any sense, be regarded as a use by the registered proprietor or how the appellant can derive any assistance from the provisions of s. 30 of the Trade Marks Act 1905-1948.

1. (1960) 103 C.L.R. 435. 2. (1960) 103 C.L.R. 435.

It is therefore necessary for us to determine whether the respondent was at liberty to pursue its application after the Trade Marks Act 1955 came into operation on 1st August 1958. Kitto J. was of the opinion that it was because of the provisions of pars. (c) and (e) of s. 8 of the Acts Interpretation Act 1901-1957 Cth. In reliance upon Abbott v. Minister for Lands [2] he held that, having made its application before the new Act came into operation, the respondent had a "right acquired" and that, since there was nothing in the new Act to displace the operation of the Acts Interpretation Act, it was entitled to proceed with its application.

We think, however, that a close examination of the statutory provisions reveals difficulties in the way of accepting this view as a solution of the problem. In examining these provisions it is convenient, first of all, to refer again to s. 72 of the earlier Act. That section gave to the Court, upon the application of an aggrieved person, authority to order the removal of a trade mark from the register. According to the respondent's argument the register in this section means "the Register of Trade Marks under this Act"; that is to say, the register established pursuant to the directions contained in Pt VI of the Act. Accordingly it is said that if the respondent, as a "person aggrieved", acquired a right prior to 1st August 1958, it was a right to an order that the trade mark should be removed from that register. But s. 5 (2) of the Act of 1955 provides that that Act is to apply "to and in relation to trade marks registered under the repealed Acts" and that "those trade marks shall be deemed to be registered in Part A of the Register". The register in this section means "the Register of Trade Marks under this Act". Here, of course, the register is that which s. 14 directs shall be kept at the Trade Marks Office. Sub-section (1) of that section provides that there shall be kept at the Trade Marks Office (a) a register of trade marks in which shall be entered particulars of registered trade marks and (b) such other matters as are prescribed. The register is to be divided into four parts which shall be known as Part A, Part B, Part C and Part D respectively and, subject to an immaterial exception, "the Register of Trade Marks existing at the commencement of this Act shall be incorporated with and form part of Part A of the Register under this Act". The language of s. 14 may, perhaps, be compared with that of s. 1 of the English Trade Marks Act, 1938 which provided that there should continue to be kept at the Patent Office for the purposes of the Act the record called the Register of Trade Marks. In these circumstances the appellant contended that the Trade Marks Act 1955 speaks of the register of trade marks which s. 14 directs to be kept and the register of trade marks existing immediately prior to the commencement of that Act as, in substance as well as form, two separate and distinct things. If this be the situation one may ask whether an accrued right pursuant to s. 72 of the earlier Act was of any value to the respondent for in terms that section, naturally enough, gave authority merely to direct the removal of trade marks from the register under that Act. But putting this argument aside we return to the explicit provision made by the 1955 Act that it shall apply to trade marks registered under the repealed Act and that those trade marks shall be deemed to be registered in Part A of the register under that Act (s. 5 (2)). Then when we look at s. 23 of the later Act, which in effect replaces s. 72 of the earlier Act, we find that it prescribes somewhat different provision with respect to removal for non-user. In terms, sub-s. (1) (b) of that section provides that the High Court may, on application by a person aggrieved, order a trade mark to be removed from the register on the ground that, up to one month before the date of the application, a continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark and during which 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. It seems to us that immediately this section came into force an application under it might have been made founded on non-user of a mark for a period of three years ending in July 1958 and that such an application might have been opposed upon the ground specified in sub-s. (4) of s. 23. Further any order made upon any such application might have incorporated conditions or limitations of the character specified in sub-s. (3). But if it were held that an application pursuant to s. 72 of the earlier Act based on non-user during the same period continued to subsist notwithstanding the coming into operation of the later Act it would fall to be decided without regard to these somewhat special provisions of the later Act. We think it reasonable to suppose that no such anomaly was intended and that we should not give to the legislation an operation which would produce this result unless it compels us so to do by plain and unambiguous language.

These arguments which we have discussed are not without importance but in the end we think that the conclusive consideration in the case is the form and content of the special transitional provisions contained in the 1955 Act. We refer in particular to sub-ss. (4) and (6) of s. 5. The first of these sub-sections provides that "the repealed Acts apply, notwithstanding their repeal, to and in relation to applications for the registration of trade marks made before the commencement of this Act" and sub-s. (6) provides that "The repealed Acts apply, notwithstanding their repeal, to and in relation to applications for the registration of a person as the registered user of a trade mark made before the commencement of this Act". Close consideration of the special provisions of s. 5 induces us to think that the express provision which it makes with respect to applications pending under the earlier Act must be read as exhaustive and that there is, therefore, no room for the application of s. 8 of the Acts Interpretation Act, even if it were otherwise possible to bring the case within its terms. Accordingly, we have come to the conclusion that the appeal must be upheld and the respondent's application dismissed as incompetent.