Hunter Douglas Australia Pty Ltd v Perma Blinds

High Court of Australia|1969-06-19|Before: Kitto J, Walsh JJ

High Court of Australia Kitto J. Barwick C.J. Menzies, Windeyer and Walsh JJ. Hunter Douglas Australia Pty Ltd v Perma Blinds

ORDER Appeal No. 2 of 1969:Appeal allowed with costs. Decision appealed from set aside. In lieu thereof orders as follows:

(1) that the registered trade mark No. 174,066 be removed from the register in respect of venetian blinds;

Appeal No. 3 of 1969:Appeal allowed with costs. Decision appealed from set aside. In lieu thereof orders as follows:

(1) that the registered trade mark No. 174,067 be removed from the register in respect of awnings and blinds;

(2) that the proprietor of the said trade mark pay the costs as certified under reg. 52 of the Trade Marks Regulations of the applicant for removal, but not to extend beyond the notice of opposition.

Perma Blinds, a firm whose members are persons aggrieved within the meaning of sub-s. (1) of s. 23 of the Trade Marks Act 1955-1966 Cth, appeals under sub-s. (7) of that section against decisions of the Assistant Registrar of Trade Marks dismissing applications by that firm under par. (b) of sub-s. (1) for the removal from the register of two trade marks, No. 174,066 and No. 174,067. In order to succeed with respect to either trade mark the appellant firm had to establish that up to one month before the date of the application for removal, which was 14th February 1966, 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 the relevant goods (i.e., in one case venetian blinds, and in the other case awnings and blinds) by the registered proprietor or a registered user of the trade marks for the time being. The Assistant Registrar, after a hearing, held, for reasons which he gave in a careful statement, that the appellant's case had been made out so far as non-use of the trade marks was concerned, but that it failed because the trade marks had not been registered trade marks for as long as three years before 14th January 1966.

The trade marks had in fact first been entered in the register on 21st February 1964. Consequently the Assistant Registrar's decision was plainly right if the expression in s. 23 (1) (b) "three years during which the trade mark was a registered trade mark" refers, as prima facie it does, to a period during which the trade mark has in fact appeared on the register. The appellant firm relies, however, upon the provisions of s. 53 (2), namely that, subject to the Act, a trade mark shall be registered as of the date of the lodging of the application for registration, and that that date shall be deemed for the purposes of the Act to be the date of registration.

The Assistant Registrar was of opinion that while s. 53 (2) has the effect that any rights arising from the registration of a trade mark commence not from the date upon which the registration is effected but from the date of the lodgment of the application for registration, its provisions are not relevant to an inquiry under s. 23 (1) (b) as to the period during which a trade mark was registered. I find myself unable to share this opinion, for I think that s. 23 (1) and s. 53 (2) must be read together, so that the three year period referred to in s. 23 (1) may begin on or after the date which is deemed to be the date of registration of the trade mark.

It is true, as the respondent's counsel has contended, that the terms of s. 23 (1) (b) are unambiguous; but the operation of s. 53 (2) is not limited to the resolution of ambiguities. Its manifest purpose is to control the meaning and application of every provision of the Act relating to the date of registration of the trade mark, except any provision, such as s. 109, that cannot be so controlled because it makes a different provision for its own special purposes. A reference in general terms, without qualification, to a period during which a trade mark was a registered trade mark, far from excluding the application of s. 53 (2), provides a plain case for its application; for the operation of s. 53 (2) is that of an addendum or proviso to every provision of the Act for the purposes of which the date of registration of a trade mark needs to be ascertained and which does not itself prescribe a different method of ascertaining that date.

The view which found favour with the Assistant Registrar depends upon looking first at s. 23 (1) (b) by itself, and then treating s. 53 (2) as inapplicable because of the clear meaning which s. 23 (1) (b) as read by itself undoubtedly has. But, with respect, it is erroneous to begin by reading s. 23 (1) (b) by itself; it must be read always in the context of the whole Act, including s. 53 (2), and that means that in the very first reading of s. 23 (1) (b) the command of s. 53 (2) must be obeyed, since there is nothing to require otherwise.

It is said that s. 23 (1) (b) refers to a period during which a fact existed: "the trade mark was a registered trade mark", and that the undeniable fact in the present case was that the trade mark was not a registered trade mark earlier than 21st February 1964. But to say this is to say what s. 53 (2) forbids you to say. You must deem the date of registration in the present case to have been 31st May 1962; and it is impossible at the same time to say that the trade mark was not a registered trade mark until 1964.

Section 53 (2) is not a mere definition of the expression "the date of registration". If it were, there might be room for a contention that as s. 23 (1) (b) does not use that expression s. 53 (2) has nothing to say to it. What s. 53 (2) does is notionally to alter a fact, and to require that the general provisions of the Act shall be applied accordingly. It is true, as the Assistant Registrar has observed, that after entry of the trade mark on the register, s. 53 (2) ensures that the rights which under s. 58 depend upon the registration shall be treated as having accrued at the date of the application for registration; but that is not an exhaustive statement of what the subsection provides. In clear terms it requires that "for the purposes of this Act" - for all the purposes of the Act including those of s. 23 (1) (b) - the date of the application is to be deemed the date of registration, except where the contrary is provided. The contrary is not provided in s. 23 (1) (b), either by its express terms or by any implication from its terms or subject matter.

In my opinion the decision of the Assistant Registrar should be reversed, and orders should be made for the removal from the register of trade mark No. 174,066 in respect of venetian blinds and of No. 174,067 in respect of awnings and blinds.

These are two appeals by leave of this Court from orders of my brother Kitto exercising the jurisdiction of this Court as the Appeal Tribunal for the purposes of the Trade Marks Act 1955-1966 Cth (the Act), see ss. 111 and 112 of the Act. His Honour heard together two appeals from the Assistant Registrar of Trade Marks, each concerned with the same trade mark but registered in respect of different goods. The appeals to the Appeal Tribunal involved the same point of law. His Honour's decision which disposed of both appeals was that by reason of the terms of s. 53 (2) of the Act, the period during which the trade mark was a registered trade mark for the purposes of s. 23 (1) (b) of the Act commenced on the date of the application for the registration of the mark. The appellant contends that upon the true construction of the Act, that period does not commence until the date on which the entry of registration of the mark was actually made in the Register of Trade Marks.

By a certificate of registration of trade mark, it was certified that the trade mark "Permalum" had been registered in Pt A of the Register of Trade Marks in respect of outdoor furniture and venetian blinds, all being goods made from aluminium - being goods in Class No. 20, and that the appellant had been entered in the register as the proprietor of the trade mark. The certificate bears date 21st February 1964 and is the certificate required by reg. 17 of the Trade Mark Regulations and Form 4 in the first schedule thereto to be sent to the registered proprietor as soon as practicable after the registration of a trade mark. The certificate does not expressly state the date of the registration, though inferentially it does so as it states that the registration is for a period of seven years from 31st May 1962, see ss. 55 and 61 of the Act. Again, the certificate does not say so but in fact 31st May 1962 was the date of the appellant's application for the registration of the trade mark. No indication is given in the body of the certificate as to the date when the entry of registration was made in the register.

By another certificate of registration of trade mark bearing the same date like information was stated with respect to the trade mark "Permalum" registered in respect of "awnings and blinds".

On 10th February 1966, the respondent, Perma Blinds, applied under s. 23 (1) (b) of the Act to remove this trade mark from the register "in respect of all or any of the following goods in respect of which it is registered", namely "Venetian Blinds", on the ground that "up to one month before the date of this application a continuous period of not less than three years has 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 venetian blinds by the registered proprietor or a registered user of the trade mark for the time being".

There was a similar application in respect of non use of the mark on awnings and blinds.

The appellant opposed these applications upon the grounds -

(i) that the trade mark had not been registered in fact until or about 21st February 1964.

(ii) that the appellant had used an associated registered trade mark "during the period in question" in good faith in respect of aluminium siding being goods in respect of which such mark is registered, the appellant requesting that such use be treated as equivalent to use of the registered trade mark "Permalum" on venetian blinds.

On 18th February 1969 the Assistant Registrar dismissed the respondent's applications to remove the mark from the register. He was satisfied that the trade mark "Permalum" had not been used at all on venetian blinds or awnings and blinds but that it had been used by the appellant on other goods prior to the respondent's application. He held that use on the other goods on which he found the trade mark to have been used was not the equivalent of its use by the appellant on venetian blinds or awnings. However, he decided that the trade mark could not be regarded as having been a registered trade mark until the date on which the relevant entry had been made in the Register of Trade Marks. Except for some note possibly kept or entered by the office of the Registrar of Trade Marks, the actual date of the making of the entry is not discoverable.

The evidence given before the Assistant Registrar has not been reproduced in the appeal book - and bearing in mind the issues raised on the appeal, quite understandably. There is no provision in the Act or in the Regulations made thereunder which requires the actual date on which the entry of registration is physically made in the Register of Trade Marks to be there or for that matter elsewhere recorded or entered. Thus, whatever the Assistant Registrar's source of information as to the actual date on which the relevant entry was made in the register it was not from material necessarily available to the public. The Assistant Registrar seems to treat, as the applicant treats, the date of the certificate of registration as the actual date, or the appropriate date, of the making of the entry in the register. But that in my opinion is not necessarily correct. I would expect the entry of registration of the mark in the register to be made prior to the day of the issue of the certificate of registration though it is possible but perhaps unlikely in the absence of some particular urgency that on occasions both occur on the same day. The date of the making of the entry is not made significant by the Act or Regulations, unless of course the appellant is right in the submission he makes as to the meaning of s. 23 (1) (b).

The Assistant Registrar, being of opinion that s. 23 (1) (b) in the expression "during which the mark was a registered mark" refers to the period commencing with the actual date of the making of the entry of registration of the mark in the register, decided that the respondent's applications to remove the trade mark for non use was premature. He therefore dismissed them.

From this decision of the Assistant Registrar the respondent appealed to the Trade Mark Tribunal upon the sole ground, though variously expressed in the notice of appeal, that the Assistant Registrar had misunderstood s. 23 (1) (b) of the Act in not holding that the period during which the trade mark in question was a registered trade mark, once it was registered, commenced upon the date of the application for its registration.

My brother Kitto in giving his reasons for accepting this view of s. 23 (1) (b) and for reversing the decision of the Assistant Registrar said [1] :

The view which found favour with the Assistant Registrar depends upon looking first at s. 23 (1) (b) by itself, and then treating s. 53 (2) as inapplicable because of the clear meaning which s. 23 (1) (b) as read by itself undoubtedly has. I find myself unable to share this opinion, for I think that s. 23 (1) and s. 53 (2) must be read together, so that the three year period referred to in s. 23 (1) may begin on or after the date which is deemed to be the date of registration of the trade mark.

Section 53 (2) is not a mere definition of the expression "the date of registration". If it were, there might be room for a contention that as s. 23 (1) (b) does not use that expression s. 53 (2) has nothing to say to it. What s. 53 (2) does is notionally to alter a fact, and to require that the general provisions of the Act shall be applied accordingly. It is true, as the Assistant Registrar has observed, that after entry of the trade mark on the register s. 53 (2) ensures that the rights which under s. 58 depend upon the registration shall be treated as having accrued at the date of the application for registration; but that is not an exhaustive statement of what the subsection provides. In clear terms it requires that "for the purposes of this Act" - and for all the purposes of the Act including those of s. 23 (1) (b) - the date of the application is to be deemed the date of registration, except where the contrary is provided. The contrary is not provided in s. 23 (1) (b), either by its express terms or by any implication from its terms or subject matter.

His Honour's orders removed the mark only in respect of venetian blinds and awnings and blinds as sought in the respondent's applications. The effect of these orders is in substance to limit the registration of the mark to the residue of the goods in respect of which it is registered, i.e. after elimination of "venetian blinds" and "awnings and blinds". This course is in conformity with the provisions of the Act. Cf. In re Edwards' Trade Mark; Edwards v. Dennis [1] and other cases cited in Kerly, Law of Trade Marks and Trade Names, 9th ed. (1966), at p. 417 .

Section 53 (1) requires the Registrar of Trade Marks in the circumstances to which it applies, to register the trade mark and the applicant as its proprietor in the appropriate part of the Register of Trade Marks. Section 53 (2) provides that that registration shall be made as of the date of the application to register the mark. By way, chiefly, of reinforcement of that provision the subsection proceeds to deem the date of the application to be the date of registration. There can of course be no registration of a trade mark without the registration of the proprietor of that mark. Thus, if the trade mark is to be registered as of the date of the application for registration, it is inescapable, in my opinion, that the person who is registered as the proprietor of the mark must be taken to have been the registered proprietor thereof on and from the date of the application for registration.

A provision in the terms of s. 53 was in the trade mark legislation which was current in Great Britain when a provision in the terms of s. 23 was inserted by amendment. Indeed, the date of application to register a mark, or the date of the receipt of such an application had long been treated as the date of the registration of the mark either by virtue of an express provision such as s. 53 or by regulations made under trade mark legislation. The amendment inserting the equivalent of s. 23 was consequent upon the decision of the House of Lords upholding the decision of Romer J. in Re John Batt & Co.'s Registered Trade Marks; Re Carter's Application [1] . In that case, registered marks of which there had been no actual user and which it was found were registered without any bona fide intention on the part of the applicant for registration to use them were expunged under a provision the equivalent of s. 22 of the Act on the ground that the entry of registration had wrongly been made. Rather than allow such a situation to be governed for the future merely by the judicial decision, the legislature enacted the equivalent of s. 23 (1). That section provides -

(1) - Subject to this section and to section ninety-three of this Act, the High Court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods in respect of which it is registered, on the ground -

(a) that the trade mark was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those goods by him or, if it was registered under sub-section (1) of section forty-five of this Act, by the body corporate or registered user concerned, and that there has, in fact, been 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 earlier than one month before the application; or

(b) 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.

No attempt was made by the legislature, either to qualify the equivalent provision of s. 53, or expressly to relate the commencement of the period during which the mark was registered to the date of the actual entry of its registration in the Register. 1. [1898] 2 Ch. 432; (1898) 15 R.P.C. 262 and 534; on appeal: [sub nom. John Batt & Co. v. Dunnett ] [1899] A.C. 428; (1898) 16 R.P.C. 411.

Judicial decision has so far indicated that the intention to use which is part of the definition of a trade mark (see s. 6 of the Act) and to which s. 23 (1) (a) refers need not be an intention to use immediately. Shell Co. of Australia Ltd. v. Rohm and Haas Co. [2] and Aston v. Harlee Manufacturing Co. [3] . Further, it has been decided that the power to remove which is given by the section is discretionary, see Re Carl Zeiss Pty. Ltd.'s Application [1] .

(1949) 78 C.L.R. 601, at p. 627. 2. (1960) 103 C.L.R. 391, at p. 401. 3. (1969) 122 C.L.R. 1.

Whilst the introduction in 1905 into the trade mark legislation of Great Britian of the new definition of a trade mark did not alter the basic nature of a trade mark as a mark indicating the origin or trade source of goods, it did represent a departure from the common law notion of a trade mark with reputation acquired by user, see Aristoc Ltd. v. Rysta Ltd. [2] and Shell Co. of Australia Ltd. v. Rohm and Haas Co. [3] . At the same time as the new definition was enacted, the provision that registration should be the equivalent of the public use was dropped from the legislation. Thus, although use before application for registration was no longer necessary, registration would not in any sense dispense with use though, by reason of the equivalent of s. 58 of the Act, there would be no need for the proprietor in asserting his rights to or under the mark to prove use. Indeed, the former provision as to the effect of registration vis à vis public use had not been allowed in Batt's Case [4] to support the registration of a mark not used before application for registration, not then intended to be used nor thereafter in fact used. The effect of the changes made in 1905 may be said to have rendered unnecessary the prior use of the mark by the applicant for registration who had then a bona fide intention to use the mark. But did it mean that the applicant for registration, whether or not he had used the mark before making his application, need not in any case use it between the date of his application and the registration of the mark? That he may use it is plain enough. Indeed, it would appear that once registered, the proprietor's exclusive rights granted by s. 58 are exercisable in respect of acts done by other persons in the interim between application for registration and the registration with the consequences fixed by s. 53 (1). It seems to have been accepted by the Court of Appeal in Tavener Rutledge Ltd. v. Specters Ltd. [5] that an applicant for registration might properly commence a suit for infringement of his mark in respect of acts done in the period after the date of his application for registration of the mark and before the entry of its registration. Doubtless, such proceedings could not succeed unless before the time for the making of the order or decree the mark had been registered. But having been registered, the former applicant for registration who had commenced suit before registration was held entitled to succeed in respect of the acts I have referred to, regarded as infringements of a registered mark.

[1945] A.C. 68, at pp. 89 et seq. 2. (1949) 78 C.L.R., at pp. 627 et seq. 3. [1898] 2 Ch. 432; (1898) 15 R.P.C. 262 and 534; on appeal: [1899] A.C. 428; (1899) 16 R.P.C. 411. 4. [1959] R.P.C. 355.

I should mention that I have found no assistance in answering the question whether the applicant for the registration of a mark intended to be used is, as it were, excused from its use pending registration, from a consideration of such cases as Re Palmolive Trade Mark [1] , Shell Co. of Australia Ltd. v. Rohm and Haas Co. [2] or "Polymat" Trade Mark [3] , to which we were referred in argument.

[1932] 49 R.P.C. 269. 2. (1949) 78 C.L.R. 601. 3. [1968] R.P.C. 124.

It was submitted on behalf of the applicant that s. 53 (2) did not apply to or govern s. 23. It was said that the "deeming" only related to what was said to be the "title" of the applicant. Whatever else was meant by this submission, it must concede that upon registration the applicant thereupon and thereafter must be regarded as having been the registered proprietor of the mark as on and from the date of that application. But it was at the same time insisted that the applicant for registration could not be regarded at any time between the date of the application for registration and the registration of the mark as the registered proprietor of the mark for the time being within the meaning of s. 23 (1) (b). Both submissions cannot be right for they are to my mind mutually contradictory. As to the second of them, the meaning of s. 23 (1) (b) is, in my opinion, plain. Within the stated period of three years and one month there must have been a bona fide use of the mark in relation to the goods in respect of which it is registered by a person who at the time of the use was the registered proprietor or a registered user of the mark. In my opinion, the reference to the registered proprietor for the time being in s. 23 (1) (b) adds nothing to the appellant's case. He has, in my opinion, but one point, namely, that none of the period which elapses between the application for registration of a mark and its registration occurs at a time when the mark viewed from the date of the application for its removal was a registered trade mark. Unless that proposition is accepted, the appellant must, in my opinion, fail in these appeals. Section 23 as a whole operates as of a time subsequent to the actual registration of a trade mark. Thus the tense of the expression "during which the trade mark was a registered trade mark" is appropriate whichever date is taken as the commencement of the period of the registration of the mark.

To say as the appellant's counsel submits that s. 53 in antedating the registration only affects the proprietor's "title" to the mark does not seem to me to solve anything. The relationship of s. 53 and s. 23 remains to be determined.

Section 53 (2) in terms requires the registration to be effective as of the date of the application to register. In my opinion, s. 53 cannot be confined to infringement proceedings - as in substance the appellant on one branch of his argument sought to do. The opening words of subsection (2) "Subject to this Act" are satisfied at least by the presence of ss. 45 and 109 in the Act and cannot be used to prevent s. 53 (1) from operating upon and with s. 23. There is, in my opinion, no basis for limiting the operation of the plain words of s. 53 (2) by reference to any particular purpose or discernible policy of the Act. Cf. Ex parte Walton; In re Levy [1] ; Hill v. East and West India Dock Co. [2] ; Hocking v. Western Australian Bank [3] . I see no escape from the conclusion to be drawn from both sections read together that, viewed as of a date subsequent to registration, a mark once registered must by reason of what to my mind are the unequivocal words of s. 53 (2) be regarded as having been a registered trade mark as on and from the date of the application for its registration. Nor do I find that consequence in any sense disconformable to what I consider to be the scheme of the Act. On the other hand, I would find it inconsistent with the Act to deny to the registered proprietor of a registered trade mark in an application made under s. 23 (1) (a) to remove his mark, the benefit of his use of the mark during the period elapsing between the date of his application for the registration of the mark and the time of its registration. Yet, that according to the appellant must follow if the language of s. 53 (2) is not given its full and natural meaning.

(1881) 17 Ch. D. 746, at p. 756. 2. (1884) L.R. 9 App. Cas. 448, at p. 457. 3. (1909) 9 C.L.R. 738, at p. 745.

I entirely agree with the reasoning of my brother Kitto which I have earlier quoted and also with the conclusion which that reasoning supports.

I cannot escape from the conclusion that, by virtue of s. 53 (2) of the Trade Marks Act, a trade mark has been registered for the purposes of s. 23 (1) (b) of the Act from the date of the application for the registration of the mark. I agree with the reasons for the judgment of Kitto J., against which these appeals have been brought, and with those of the Chief Justice upon these appeals. The appeals must, I think, be dismissed.

Section 23 (1) par. (b) of the Trade Marks Act 1955-1966 Cth provides for the removal of a trade mark from the Register of Trade Marks "in respect of any of the goods in respect of which it is registered, on the ground" -

Section 53 (2) of the Act states that: Subject to this Act, a trade mark shall be registered as of the date of the lodging of the application for registration and that date shall be deemed for the purposes of this Act to be the date of registration.

The question in this case depends simply on what bearing, if any, the latter provision has upon the former. For determining whether a "continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark", must all the time to be counted have elapsed after the date of actual entry of the trade mark in question on the register? Or, may time be counted which had elapsed before that date but after the date of the lodging of the application?

I think that the latter is the correct position. I appreciate the seeming contradiction involved in saying that for a period of time before the entry of the mark upon the register it "was a registered trade mark". But that is simply because any event, matter or thing is ordinarily said to be registered when an appropriate entry is made in the prescribed manner in the appropriate register book and not before then: cf. Great West Permanent Loan Co. v. Friesen [1] . But when registration of an event, matter or thing is required by a statute, that statute may prescribe the consequences which flow from registration or from failure to register: and it can prescribe when those consequences will accrue. This can be done by prescribing the date when the fact of registration is to have effect: and that date need not be the actual date of entry on the register. It depends entirely upon what the statute in question says. In the present case the words of s. 23, "three years had elapsed during which the trade mark was a registered trade mark", must be read in accordance with the provision, in s. 6, that " "registered trade mark" means a trade mark which is registered under this Act". And a trade mark registered under the Act is a trade mark which is registered "as of the date of the lodging of the application for registration". That is the only basis on which a trade mark can be registered. It is what registration under the Act means. When a mark is in fact registered the rights and title which registration gives commence and take effect at, and are to be reckoned from, the date of lodging of the application. The requirement that the mark shall be registered "as of" that date produces that result. The phrase "as of" a given time has long been used for legal purposes: see Jarvis v. South [1] ; Alcock v. Sutcliffe [2] . It appears not only in s. 53 (2) of the Trade Marks Act, but in s. 109 (1) also. It appears too in s. 67 of the Patents Act 1952-1966, a provision which is comparable with that here in question. Section 26 of the Designs Act 1906-1950, with s. 13, has a similar result, the words there being "the registration shall take effect as from the lodging of the application ".

[1925] A.C. 208, at pp. 217, 218. 2. (1844) 13 M. & W. 152 [153 E.R. 63]. 3. (1847) 16 L.J.Q.B. 129.

The provision which is now s. 53 (2) of the present Act is of long standing in trade mark statutes. It can be traced back to the amending Patents, Designs and Trade Marks Act, 1888 of the United Kingdom. Section 17 of that Act substituted as from 1876 a new provision for s. 75 of the principal Act, the Patents, Designs and Trade Marks Act, 1883. The immediate predecessor in Australia of s. 53 (2) was s. 47 of the Trade Marks Act 1905 (as amended by Act No. 19 of 1912, s. 17). This was the section that was considered by this Court in Shell Co. of Australia Ltd. v. Rohm and Haas Co. [3] . By what seems to have been an error in copying the corresponding English enactment, the words in the Australian 1905 Act, s. 47, were then "as on" not "as of": " the Registrar shall register the trade mark as on the date of the lodging of the application". The provisions for the removal from the register of a trade mark for non-user, which now appear as s. 23 of the present Act, are of later origin than the requirement that registration shall be as of the date of application. That is so both in Australia and in the United Kingdom. But the impact of the provision about the date of registration upon the period of non-user "during which the trade mark was a registered trade mark" may perhaps be not quite the same in the United Kingdom as here, for there - by s. 68 of the Act of 1938 U.K., derived from s. 3 of the Act of 1905 U.K. - a registered trade mark means "a trade mark that is actually on the register".

Counsel for the appellant sought support for his argument in the history of trade mark legislation and changes made in it from time to time: but beyond what I have already mentioned and the matters to which the Chief Justice has referred in his judgment, I do not think that much is to be gained from this history. We must take the words of the Act as they now stand.

An application for registration of a trade mark is by force of the Act an application that the trade mark applied for may be registered as of the date when the application is made. That is what an applicant seeks. That, if his application be successful, is what he will get. If he wishes to avoid the risk of later having his mark removed for non-user he ought so to commence and continue to use it that no continuous period of three years' non-user elapses after the time he lodged his application. It is true that it is registration which gives him his rights as a registered proprietor of the mark. But pending registration he is not precluded from using the mark: and he can upon registration complain of earlier infringements of rights which upon registration were assured to him as at an earlier date: see Tavener Rutledge Ltd. v. Specters Ltd. [1] and J. Thorn Ltd. v. East Anglia Portable Buildings Ltd. and Julian Thorn [2] .

[1959] R.P.C. 83 and 355. 2. [1960] R.P.C. 260.

However, we do not have to decide in this case what remedies an applicant for a trade mark may be able to assert in respect of anything done while his application was still pending. The Act does not deal with this expressly. There is no section similar to s. 3 (5) of the Registered Designs Act 1949 of the United Kingdom: nor is the position the same as, in respect of letters patent, is created by the Patents Act 1952-1966, ss. 54C, 67, 124. And neither do we have to decide in what manner an applicant may in law or in equity assign his expectant rights. These topics were discussed in the course of the argument; but they are on the edge of the main question. It depends simply on the fact that registration under the Act takes effect as of the lodging of the application. The period when a mark once registered was a registered mark in my view must be calculated accordingly.

I have said enough to shew why I would dismiss the appeals without resorting at all to the later words of s. 53 (2), namely that the date of the lodging of the application "shall be deemed for the purposes of this Act to be the date of registration". Those words add nothing so far as the present question is concerned to the requirement that the mark shall be registered as of the stated date. They are, I consider, merely consequential. Their only distinct effect, it seems to me, is to give a meaning to the expression "the date of registration" where it actually appears in the Act: e.g., in s. 56 ("after the date of the registration") or in s. 61 ("the date of the original registration").

However, counsel for the appellant, founding his proposition on the presence of the word "deemed", sought by it to colour the whole of s. 53 (2). He called it "a deeming provision" and used this description as in some way curtailing the effect of the subsection, which he said created a statutory fiction. This expression, apparently coined by James L.J. in Ex parte Walton; In re Levy [1] , was adopted by Lord Cairns in Hill v. East and West India Dock Co. [2] . It has had much currency since then as a heading in Beal's Cardinal Rules of Legal Interpretation. In Muller v. Dalgety & Co. Ltd. [3] , Griffith C.J. said that "deemed" is commonly used "for the purpose of creating a "statutory fiction" that is, for the purpose of extending the meaning of some term to a subject matter which it does not properly designate. When used in that sense it becomes very important to consider the purpose for which the statutory fiction is introduced". This passage has been often quoted in Australian courts. It is a recognition that the verb "deem", or derivatives of it, can be used in statutory definitions to extend the denotation of the defined term to things it would not in ordinary parlance denote. This is often a convenient device for reducing the verbiage of an enactment. But that the word can be used in that way and for that purpose does not mean that whenever it is used it has that effect. After all, to deem means simply to judge or reach a conclusion about something. A judge, or a juryman, is a deemster, although, except in the Isle of Man, that name has long been archaic. The words "deem" and "deemed" when used in a statute thus simply state the effect or meaning which some matter or thing has - the way in which it is to be adjudged. This need not import artificiality or fiction. It may be simply the statement of an indisputable conclusion, as if for example one were to say that on attaining the age of twenty-one years a man is deemed to be of full age and no longer an infant. Hundreds of examples of this usage of the word appear in the statute books. I take two or three only by way of illustration. In England, Lord Brougham'sAct, 13 & 14 Vict. c. 21, s. 7, provided that "every Act passed after the 10th June 1850 shall be deemed and taken to be a public Act and shall be judicially taken notice of as such unless the contrary be expressly provided and declared by such Act". No fiction is involved in that. In New South Wales the Real Property Act, 1900, s. 35, states when a grant, certificate of title or instrument affecting land under the provisions of the Act shall be deemed to be registered, and adds that "the person named in any grant, certificate of title, or other instrument so registered as seised of or taking any estate or interest shall be deemed to be the registered proprietor thereof". This provision of the Torrens system is a definition of registered proprietor, not based in any sense on a fiction. Innumerable further examples might be given. Two will suffice, which I take from the Trade Marks Act now before us. Section 107 (2) provides that "a trade mark shall be deemed to be applied to goods if (inter alia) it is applied to the goods themselves". No fiction is involved in saying that. No deemster could deem otherwise. Similarly nothing contrary to fact is involved in s. 106 which states the circumstances in which "a person shall be deemed to forge a registered trade mark". In short, I can see no reason at all for any reading down of s. 53 (2) because it is "a deeming provision". There is a marked contrast between it and s. 43 (2) which provides that if the Registrar so directs a further application shall be deemed to have been lodged on the date when an earlier application was lodged. There the Registrar is enabled to treat an application when made as having been lodged before it was in fact lodged. In the case of registration, on the other hand, the Act requires that it be as of the date of the application. That is what registration in accordance with the Act means and involves. It is of the essence of registration under the Act that it has that effect. That seems to me far removed from saying that the result is fictitious. At the most it is factitious. We are not concerned only with a statement that the date of the application is to be deemed to be the date of registration. If that stood alone different considerations would arise: see for example the decision of Sugerman J. in In re Hunt [1] , a case under the New South Wales Crown Lands Act, which might then be regarded as remotely analogous. Even if we had to consider only the effect of the word "deemed" in s. 53 (2), I would still not be convinced that what Griffith C.J. said in Muller v. Dalgety & Co. Ltd. [2] which he in effect repeated in Hocking v. Western Australian Bank [3] , was directly apposite. If it be necessary in this case to consider the purpose for which the words "that date shall be deemed for the purposes of this Act to be the date of registration" were introduced, it seems to me obvious that, as I have said, they are consequential. They do not cut down what precedes them. The Act requires that registration be as of the date of the application, that is, effective as from that date: the words that follow are merely consistent.

(1881) 17 Ch. D. 746, at p. 756. 2. (1884) 9 App. Cas. 448, at p. 456. 3. (1909) 9 C.L.R. 693, at p. 696. 4. (1950) 29 L.V.R. 9. 5. (1909) 9 C.L.R., at p. 696. 6. (1909) 9 C.L.R. 738, at p. 745.

There is no presumption, still less any rule, that wherever the word "deemed" appears in a statute it demonstrates a "fiction" or some abnormality of terminology. Sometimes it does. Often it does not. Much depends upon the context in which the word appears, as appears among other cases from Minister for Lands v. Everingham [1] and more recently in the judgment of Walsh J. in the Supreme Court in Ex parte Armstrong; Re Hughes [2] . Much more could be said of the word "deem". But that would be to stray into fields of etymology and philology. I have said so much only because of the earnest arguments we heard on both sides.

(1915) 15 S.R. (N.S.W.) 311. 2. (1962) 80 W.N. (N.S.W.) 566, at p. 568.

As to some other contentions put forward by the appellant I have nothing to add to what the Chief Justice has said for rejecting them. The appeals should I consider be dismissed.

The question of construction raised by these appeals and the different answers given to that question by the Assistant Registrar and by Kitto J. are set out in the judgment of the Chief Justice.

I have considered the arguments advanced in support of the contention that the conclusion to which Kitto J. came was erroneous. It was submitted that the history of the relevant provisions of the Trade Marks Act 1955-1966 Cth and of their equivalents in the trade mark legislation in Great Britain and the course of judicial decision indicated that s. 53 (2) of the Act should be construed as having a limited area of operation and as having no application to the provisions of s. 23 (1) (b). But I have not been persuaded by those submissions to think that Kitto J. was wrong in concluding that s. 23 (1) (b) and s. 53 (2) must be read together and that the operation of the former provision is not to be determined without reference to the latter. It is not necessary for me to refer in detail to the submissions on behalf of the appellant. In my opinion they are answered by the reasons for judgment of the Chief Justice, with which I agree.

I wish to add that, in my opinion, the argument for the appellant is not assisted by the decision or by the reasoning in Shell Co. of Australia Ltd. v. Rohm and Haas Co. [1] to which we were referred by counsel for the appellant. In that case Dixon J., as he then was, [2] and McTiernan J. [3] referred to some aspects of the history of trade mark legislation. But the question which is now before the Court did not in that case arise for consideration and what was said does not provide, in my opinion, an answer to that question.

(1949) 78 C.L.R. 601. 2. (1949) 78 C.L.R., at pp. 625-629. 3. (1949) 78 C.L.R., at pp. 632-634.

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