James Minifie and Company v Edwin Davey and Sons [1933] HCA 17

respondent as to be calculated to deceive. Held, that the use of the mark by the appellant was an infringement of the

respondent's mark within the meaning of sec. 53 of the Trade Marks Act 1905- 1922.

Decision of the Supreme Court of Victoria (Cussen A.C.J.): Edwin Davey & Sons v. James Minifie & Co., (1932) V.L.R. 477, affirmed.

EAL from the Supreme Court of Victoria. Inan action brought by the respondents against the appellants Special case was stated by the parties, pursuant to Order XXXIV.,

*Sec. 53 of the Trade Marks Act - respect of which it is registered, of a 1905-1922 provides: "The rights mark substantially identical with the quired by registration of a trade trade mark or so nearly resembling it

shall be deemed to be infringed _as to be likely to deceive." 'the use, in respect of the goods in

H.C. or A. rule 1, of the Rules of the Supreme Court 1916 (Vict.), for the opinio 1933.

of the Court, in the following terms : -

1. The plaintiffs are and have been at all times material

trade marks of the Commonwealth of Australia registered in respect of flour and other goods. 2

2. The defendant carries on business at Melbourne as a flour miller

3. Prior to the year 1925 the defendant had not used the trad mark complained of in this action in any way. One F. J. Hal rd of Singapore was in Melbourne about the beginning of January 1925 and had several interviews with the defendant in reference to proposal that he should be appointed defendant's agent in Singap and elsewhere. On 19th January 1925 a letter of which the follo is a copy was sent by the defendant to Hallard : - " Jany. 19
4. • Mr. F. J. Hallard, Singapore. - Dear Sir, - As a result of our recent interviews we confirm having appointed you our agent fo Singapore, Malay Peninsula, Siam, Ceylon and Dutch East with the exception of existing regular customers on the follo terms : - You will not sell any flour except through us. Commissi

• We will allow you three-quarters of one per cent (2%) on c.if. & e. price on all flour sold by your efforts. Such commissi

on our behalf. Travelling Expenses. - We will allow you £50 p annum, payable £25 in advance every six months. This agree can be terminated by either party by one month's notice in writing 4, Pursuant to the said letter the said Hallard thereafter a as defendant's agent in Singapore. The terms of his employme were later varied in respect of minor matters. Commencing in M 1925 he effected contracts between the defendant and various pet in Singapore. 5. The first occasion on which any business was done Messrs. A. Clouet & Company of Singapore was in about Septemb 1925. In about that month the following correspondence tot place : - " Adelphi Hotel Singapore 27th July *25. - Messrs. Minifie & Co. Melbourne. - Dear Sirs, - Re A. Clouet & Co. possible in the near future this firm will order flour but it

they may occasionally want 49 lbs. and if so I give you below rough sketch of brand they will require and leave it to yourselves c put in proper order. - F. J. Hallard." [In the judgments here- nder references are made to the nature of the mark appearing in the sketch which accompanied this letter, and to that of the plaintiff's istered mark. For the purposes of this report, it is unnecessary further to describe either mark.] " Order. - Sept. 18th '25. - From A. Clouet & Co. 7 Raffles Quay, Singapore. - To Minifie & Co., 410 Collins St., Melbourne- - 25 Tons Ist Grade Flour @ £16/10/- cif. & e. per ton of 2,000 Ibs. packed in 49 lb. bags. Brand, 'Rooster' as per sketch sent July 27th 1925. Shipment per s.s. 'City of Palermo' early October. Documents at sight through ng Kong & Shanghai Bank. Alb. C. For Jas. Minifie & Co. - J. Hallard." " Order. - 22nd Sept. '25. - From A. Clouet & Co. Raffles Quay, Singapore. - To Jas. Minifie & Co. 410 Collins St. lbourne. - 50 tons Ist Grade Flour @ £16/10/- per ton of 2,000

. packed in 49 lb. bags. C.i.f. &e. Brand ' Rooster.' Shipment 25 tons about 3rd week in October. Shipment 25 tons about Ist ek in November certain. Draw at sight. Documents through Kong & Shanghai Bank. Alb. C. For Jas. Minifie & Co.

_ 6. The expression " this firm " in the letter of 27th July 1925 set out above was a reference to Messrs. A. Clouet & Co.

. When the said flour was despatched an invoice was prepared ering it. The invoice, bill of lading and insurance policy were nded to defendant's bank in Melbourne, which also discounted a draft on Clouet & Co. with a right of recourse against the defendant in case of dishonour. The bank then presented these documents to et & Co. at Singapore through the bank named in the order and ceived payment.

8. The defendant caused bags to be branded in the manner asked

by the letter of 27th July 1925 set out above, and manufactured in

ave to be packed in either 150 Ibs. or 280 Ibs. Still on the other HC. oF A. 1933.

H.C. or A. Melbourne, and conveyed to the wharf there, and shipped therefron ae, to Singapore, flour as ordered, packed in such bags. JAMES 9. After the year 1925 the defendant has manufactured it

Dae Melbourne, and conveyed to the wharf there, and shipped therefrom pwr considerable quantities of flour packed in such bags to Singapore in paee: fulfilment of contracts made between A. Clouet & Co. and Hallard

• __as defendant's agent. :

10. In 1930 Hallard retired from business, and thereafter A. Clouet

& Co. have ordered flour direct from the defendant in the manner following. Defendant has cabled each week the ruling price for

the week, upon which Clouet & Co. have cabled quantities required

and thereafter the defendant has manufactured at its mills Melbourne, and conveyed therefrom to the Melbourne wharf, and

shipped therefrom to A. Clouet & Co. at Singapore, considerable quantities of flour in bags bearing the mark complained of. A typiea

instance of such transactions appears from the following : - 10th

August 1931 defendant cabled Messrs. Clouet & Co.: "We quote

cife. £5/10/-." 11th August 1931 Clouet & Co. cabled defendant:

Melbourne, Australia. - Quantity - 50 tons (fifty only) 2,040 of 49 Ibs. Article - Rooster' brand wheat flour. Quality - As usual. Price - £5/10/- per ton c.if. & e. Singapore. Shipment - per s.s. 'Nieuw Holland' sailing from Melbourne on 15th August 1931 and arriving in Singapore on September 17th 1931. Note -

truck when loaded was covered with a tarpaulin. The trucks rere then drawn to the ship's side where the bags were loaded on he ship from the trucks by means of the ship's slings. (b) The were loaded on to lorries at defendant's mill and so conveyed o the wharf where they were stacked in a shed on the wharf and ded therefrom to the ship. While on the lorries the brands on he bags were hidden except to a person above the level of the top the load. . No flour bearing the mark complained of has been offered for or sold in Australia by the defendant except in so far, if at all, sit has been so sold or offered for sale by reason of the matters herein. All flour was sold under contracts c.i.f.e. Singapore. Messrs. A. Clouet & Co. are the registered proprietors in ingapore of the mark complained of and use the same upon goods

eto that they have the sole right to use the mark there. '14, All the above facts are admitted subject to all just exceptions

rein and the Court shall be at liberty to draw from the facts and ents stated herein any inference whether of fact or law which ht have been drawn therefrom if proved at the trial.

Assuming the brand on the bags referred to in par. 8 hereof so closely resembles the plaintiff's registered trade mark as to be calculated to deceive, has the defendant by reason of the acts aforesaid or any of them infringed the plaintiff's registered trade mark no. 4414 ?

he case came before Cussen A.C.J., who answered the question affirmative: Edwin Davey & Sons v. James Minifie & Co. (1).

Ham K.C. and Dean, for the appellants. In doing what y did the appellants were not infringing the respondents' trade

(1) (1932) V.L.R. 477. ys were loaded on to trucks at a railway siding at the mill and H.C. or A.

mark. The Act was passed to protect Australian trade. mark is not put on to the goods to show that they are the app goods or that they are the respondents' goods but to show that are Clouet's goods in Singapore. In order to constitute an ment there must be a user in a particular market indicating the goods are the property of a particular trader. The pi the Act is not to protect the respondents here in a market in whi they do not deal and in which the appellants do not deal.

mere putting of a device such as this upon goods is not a user

mark and does not constitute an infringement. The mark that on the bags is not for the purpose of indicating that goods on ¥ that mark is impressed are the respondents' goods, but that the goods arrive in Singapore they are the goods of Clouet & who are the owners of the mark in Singapore. If this were not no one in Australia except the respondents could supply Clouet Co. in Singapore with goods with this mark on them. The Marks Act is not intended to confer new rights of property on th owner of the trade mark : it is only a statutory regulation of e tights (Champagne Heidsieck et Cie Monopole Société Anon Buxton (1); Attorney-General for New South Wales v. Bre Employees Union of New South Wales (2); Schweppes Ltd. v. Rowlands Pty. Ltd. (3); Henry Clay & Bock & Co. Ltd. v. Eddy (4 George Banham & Co. v. F. Reddaway & Co. (5) ). The mere p ti of the trade mark on the goods in this country is not a us Australia. There are no dicta against this view. The suggt that there is, is due to a misunderstanding of the passage in Kerl on Trade Marks (1927), 6th ed., pp. 448, 449; and of Sebastia Trade Marks (1911), 5th ed., p. 189. Johnston v. Orr Ewing (6) We simply a case of fraud and not of restraining user of a trade m

[Counsel referred to Trade Marks Act 1905-1922, secs. 4, 53; Jackson & Co. v. Napper; In re Schmidt's Trade Mark (8

(1) (1930) 1 Ch, 330, at p. 341. (5) (1927) A.C. 406, at p. 415. (2) (1908) 6 C.L.R. 469. (6) (1882) 7 App. Cas. 219. (3) (1910) 11 O.L.R. 347. (7) (1891) 2 Ch. 522, at p. 543. (4) (1915) 19 C.L.R. 641, at pp. 651, (8) (1886) 35 Ch. D. 162, at pp] 655, 179. Z

.. (2) ; Boord & Son (Incorporated) v. Bagots, Hutton & Co. (3).]

agar, for the respondents. These goods are spuriously marked 'export with a mark resembling the respondents' mark (Kerly on Trade Marks (1927), 6th ed., p. 489). In Boord & Son (Incorporated) Bagots, Hutton & Co. (4) the position was similar to that in the it case. The form of injunction in Johnston v. Orr Ewing (5) merely prohibited the passing off abroad but prohibited the endants from affixing the mark in England. Re Neostyle Manu- ing Co.'s Trade Mark (6) decided that a person who manu- es in England for export abroad can be a person aggrieved or the purpose of applying to expunge a mark from the register. [Starke J. referred to Blackadder v. Good Roads Machinery Co. In ve Trade Mark of La Société Anonyme des Verreries de V Etoile contains a similar statement by Stirling J.. Persons may be rieved by the fixing of a mark on goods intended for export and for use in the country in which the mark was affixed (John & Son Ltd. v. R. 8. Johnston & Co. (9); John de & Son v. W. & G. Baird Ltd. (10); Andrew G. Barr & Co. v. Mair & Dougall (11) ). The cases cited for the appellants were ses of application for a trade mark. That is a totally different on from that raised here. A person applying for registration to prove very much more than a person applying to restrain n infringement. [Evarr J. referred to Bass, Ratcliff & Gretton Ltd. v. Nicholson & Sons Ltd. (12).] Th Champagne Heidsieck et Cie Monopole Société Anonyme v. ton (13) the defendant had applied the plaintiff's mark to his goods. In the present case the Court is dealing with the extent

(7) (1926) 38 C.L.R. 332. hat p. 415. (8) (1894) 1 Ch. 61, at p. 67. 2, at p. 392. (9) (1901) 18 R-P.C, 259. (10) (1903) 20 R.P.C. 581. . 234. (11) (1904) 21 R.P.C. 665, at p. 669. 03, at p. S11. (12) (1932) A.C. 130. (13) (1930) 1 Ch. 330.

s v. Butcher (1); George Banham & Co. v. F. Reddaway H.C. or A.

H.C. or A. of the new remedy. The Act in this instance goes beyond

JAMES: Moivre & Co. » Epwis Davey & Sons.

Dean, in reply. No representation that the goods are appellants' is made in the market and if that is so there is no i ment (Edward Young & Co. v. Grierson Oldham & Co. (1) ). mark makes the representation in Singapore : it is not used fora purpose in Australia and does not conflict with the responde rights. No person can be induced to buy this flour in Australia

by reason of the presence of this mark. Cur. adv. vill,

The following written judgments were delivered : - ;

Ricu J. This appeal is from a judgment of Cussen A.C.J. by which he determined a question raised in a special case stated by the parties to an action. The action is brought by the respondents, as proprietors of a registered trade mark, for infringement. The acts of infringement relied upon are unusual. The appellants, flo millers, sell flour for export. Under an agreement or arrange with a correspondent or customer in Singapore, the appellants flour in bags from Melbourne to Singapore on c.i.f.e. terms. conditions of the arrangement require that the appellants sho use bags bearing an imprint of a mark said to belong to customer in Singapore. The mark, which consists of a crowin; within a ring containing lettering which gives the name of Singapore merchant and describes him as sole importer, is surmount by the appellants' name and the word Melbourne. By the special case it is stated that the merchant is registered proprietor in Singapore of the mark complained of and uses the same upon goods put up the market there by him, but the parties do not agree that he had the sole right to use the mark there. The case then asks this quest "Assuming the brand on the bags referred to in par. 8 hereof closely resembles the plaintifi's registered trade mark as to calculated to deceive, has the defendant by reason of the ae

ns aforesaid or any of them infringed the plaintiff's registered trade H.C. oF A-

mark?" The acts of infringement relied upon consist of the use

of the bags thus marked to enclose the flour, the transportation to ~ the wharf of the flour in this condition in more or less closed trucks or vehicles, the handling on the wharf, the placing aboard ship and the circumstance that all this is done under an agreement or arrange- ment involving a sale of the flour. It is not disputed that the acts of infringement must be done within Australia. But Cussen A.C.J. was of opinion that what was done in Australia amounted to a use, within the meaning of sec. 53 of the Trade Marks Act 1905-1922, in respect of the goods in respect of which it is registered, of a mark assumed so nearly to resemble the respondents' mark as to be likely to deceive. This decision is attacked by the appellants upon the ground that in sec. 53 "use, in respect of the goods" regards use as a mark for the purpose of indicating that the goods are the goods of a particular proprietor of the mark used, by virtue of manufacture, selection, certification, dealing with, or offering for sale and that, whatever may have been done in Singapore, the mark was not used for this purpose in Australia. Upon the facts it is clear enough that the appellants did not use the mark to represent to anybody that the goods were theirs. On the contrary it would be reasonably clear to anybody who saw the mark that it was used for the purpose of indicating that a merchant in Singapore to whom they were being sent had imported the flour into that place. The wide words of sec. 53 need to be restricted in their meaning if they do no more than the appellants contend. It must be remembered that we are bound to proceed upon the assumption that the mark placed by the appellants on the bags so nearly resembles the respondents' mark as

to be likely to deceive, and this must mean deceive in Australia. _ Thave been unable to avoid some misgivings about this assumption. _ By dividing the question of infringement up in the way which the special case does it seems to me possible that the parties have split _ What may really be an indivisible issue. But, accepting fully the : assumption stated in the special case, I cannot think that the ; language of sec. 53 should be so restricted as to exclude the acts

• complained of. No light appears to me to be thrown upon the

H.C. or A expression " use, in respect of the goods " in the definition of i

ment by decisions or dicta in cases relating to such provisions a those standing as secs. 16 (3), 28 and 72. What is done in Austra in the present case amounts to an application of the deceptive ma to the goods for the purpose of an ordinary transaction of trade The fact that the appellants' purchaser in Singapore of the goo treats the mark as his own and is not intended to understand it that the goods are those of the appellants or of the respondents does not seem to me to displace the fact that it is placed upon the goods as an identifying mark and that with it on them the goods put into a course of trade by the appellants. There is no authori requiring a construction of sec. 53, which would restrain its meaning to the exclusion of such a use of the mark and there is a number o dicta, which were cited in the argument, opposed to such a restriction In my opinion the judgment of Cussen A.C.J. is right and the appe should be dismissed. 7

Srarke anp Evarr JJ. Under the Trade Marks Act 1905-1922 of the Commonwealth, Edwin Davey & Sons are registered as the proprietors of a trade mark in class 42 in respect of flour, &c.

flour at a price per ton c.i.f. & e., Singapore. The flour is mam tured in Victoria, packed in bags made or obtained by Minifie Co., and shipped to Singapore. On the bags Minifie & Co. print cause to be printed, between the words " Minifies Melbourne" and the words " Best Roller Flour," the device of a crowing surrounded by a circle in which appear the words " Sole Impoi A. Clouet & Co. Ltd. Singapore." The device of the crowing cock or rooster as it is called by A. Clouet & Co.Ltd., is registered as trade mark in Singapore, and it requires the mark to be put upon the bags of flour sold and shipped to it by Minifie & Co. #

A special case was stated for the opinion of the Supreme Court, and the question was: Assuming that the brand placed by Mi & Co. upon the bags of flour sold and shipped to A. Clouet & Co.

to be calculated to deceive, did Minifie & Co. by reason of the aforesaid infringe Davey & Sons' trade mark? Cussen A.C.J. lved that question, and in our opinion rightly, in the affirmative. the Trade Marks Act 1905-1922, sec. 50, the registration by & Sons of their trade mark gave them the exclusive right to the use of the mark upon or in connection with the goods in respect hich it is registered. It is a proprietary right. And, by sec. that right is infringed by the use in respect of the goods in respect ich it is registered of a mark substantially identical with the mark or so nearly resembling it as to be likely to deceive.

sut it was argued that there would be no infringement unless the inger used the mark in Australia as a trade mark, that is to say, r the purpose of indicating that goods are the goods of the prietor of the trade mark (see Trade Marks Act, sec. 4, "' Trade "). Mr. Dean referred us to the case of Edward Young & Co. Grierson Oldham & Co. (1), in which the Court of Appeal held the corresponding English enactment ought to be construed as uplying that there would be no infringement unless the alleged

facturing Co. (2) ). In the present case the assumption is that inifie & Co. put Davey & Sons' registered trade mark on the bags hipped to Singapore, and it is clear that they did so in Australia, and in connection with the same class of goods as those in respect which that mark was registered and as indicative of the origin manufacture. They used it in their business and for the purpose their export trade. And, if it were necessary to go so far, we nk that the manner in which the mark was used would improperly e that Minifie & Co. themselves, and not Davey & Sons, were proprietors of the mark. e infringement of the plaintiffs' proprietary right in the mark thus clear on the assumption made, and the appeal should be

(1) (1924) 41 R.P.C, 548. (2) (1928) 45 R-P.C. 127; (1929) 46 R.P.C. 406.

at Singapore so closely resembles Davey & Sons' trade mark H.C. or A.

Dixon J. The appellants are flour millers carrying on b in Melbourne. They have been selling flour to a merchant Singapore upon c.i.f. & e. terms, to be shipped from Melbourne to that port. Under the terms of sale the bags containing the fi are branded in Melbourne by the appellants with a trade mark which the merchant is in Singapore registered proprietor. respondents are the proprietors in the Commonwealth of Australia of another trade mark registered in respect of flour, and they all that the mark of the Singapore merchant so closely resembles it to be likely to deceive. The respondents sued the appellants fo infringement of the Australian mark. The parties have agreet upon a special case which states as additional facts that appellants, after manufacturing the flour and packing it in ba; which they caused to be so branded, load it at their mill into tru or lorries by which it is conveyed under cover to the wharf where it is either slung direct from the trucks into the ship's hold or stacked in sheds and thence put on board.

The question submitted by the special case for decision req

and asks whether the appellants by reason of the acts stated infringe the respondents' trade mark. Cussen A.O.J. gave an affirmative answer to the question. I agree in his conclusion. Sec. 53 of the Trade Marks Act 1905-1922 provides that the rights acquired by registration of a trade mark shall be deemed to be infringed by the use, in respect of the goods in respect of which it is registered, of a mark substantially identical with the trade mark or so nearly resembling it as to be likely to deceive. Upon the assumpti required by the special case, the matter is reduced to the qu whether the mark of the Singapore merchant is, within the me: of this provision, used in Australia in respect of the goods. appellants maintain that the phrase refers to use as a trade m in Australia, in the sense of a mark used for the purpose of indicati in Australia that they are the goods of the person using it, by vi of manufacture, selection, certification, dealing with, or offer for sale (compare sec. 4, definition of "Trade Mark"). Sec. states the rights acquired by registration, namely, "the excl

s in respect of which it is registered." Again it is suggested hat "use" in this provision means use as such trade mark in stralia. It is said that the acknowledged policy of the Trade fs Act is to strengthen and protect with new remedies a form of property or proprietary right already existing and not to create

| new one, and, accordingly, that what is forbidden is a use of the k analogous to that which would amount to passing off. But method of reasoning is of little assistance because the very ion may be said to be whether, for the protection of the existing of proprietary right or interest, the statute has not made it infringement to use the mark in respect of goods in any way in the course of trade. It is, perhaps, true that the words are capable an application which would go beyond use in trade or business extend to use in the hands of ultimate consumers or utilizers f the goods. But, while it is natural to understand the language a provision in the Trade Marks Act as restricted to commercial trading operations, some firmer ground is needed to support an mplication further restricting its meaning. There is good reason for preventing any use of a trade mark upon or in connection with goods which tends to confuse the public as to what it signifies and

Tn the present case, the application of the Singapore mark to the is for the purpose of identifying them and it is done pursuant an agreement for sale. It is essentially a commercial use of the k, and, although as between the appellants and the merchants Singapore, it was not intended to signify anything and to no one it intended to represent or suggest that either the respondents

• the appellants were associated with the goods, nevertheless it affixed in Australia to the goods as and for a merchandise mark. think we are not warranted in restricting the general expressions ployed in sec. 53 so as to exclude such a use of the mark in respect the goods. This opinion seems to be supported by such judicial as exist dealing with the exact point and by the opinions of

ght to the use of the trade mark upon or in connection with the H- C- or A.

McTiernan J. The question for decision is whether, upon assumption made in the special case that the brand on the bags

respondents' registered trade mark as to be calculated to de civ the appellant has, upon the facts stated in the special case, infrin P that trade mark. Sec. 53 of the Trade Marks Act 1905-1922,

Sec. 50 of the Act says that, subject to the reservation in the section the registration of a person as proprietor of a trade mark shall giv to such person the exclusive right to the use of the trade mark u or in connection with the goods in respect of which it is regist The case therefore turns upon the question whether there was a by the appellant of the " impugned device " within the intendmen of sec. 53, or, in other words, whether the use by the appellant 0 that device conflicted with the exclusive right which, under sec. 50 the respondents acquired by the registration of the trade marl

J. B. Stone & Co. v. Steelace Manufacturing Co. (2) ). The ques whether the impugned word in the latter case was " used as a tri mark " was held to turn upon the construction of the defenda advertisement which embodied it.

Reading the imprint on the flour bag put in evidence, in the lig of the facts, I think that the device indicates flour of the appel manufacture which is exported to Singapore and imported

the appellant as a trade mark. But a further critical qu remains, whether the use of the impugned device which in th present case did not involve the passing off of the goods in Australis was a use which by sec. 53 is deemed to be an infringement of th exclusive right to use the registered trade mark which was give

(1) (1924) 41 R.P.C. 548. (2) (1928) 45 R.P.C, 127,

y registration in this country. This contention was based upon

ess: "It was the general object of the Trade Marks Act not to enew rights, but to regulate the use of, and the means of protecting, de marks." Secs. 50 and 53 regulate the use of, and the means of ing, trade marks. There is nothing in these sections or in the ct to warrant the conclusion that any use of a mark identical with resembling a registered trade mark, which would not have been infringement' of a common law trade mark, proved to be such before the Act, should not be regarded as an infringement of a ered trade mark. In the course of his judgment in In re Worthington & Co.'s Trade Mark (2), where the section under consideration was sec. 6 of 38 & 39 Vict. c. 91, which provided against the registration in respect of the same goods of a trade mark so nearly resembling a trade mark already on the register as to be calculated to deceive, James L.J. said : - " In dealing with the words of the Act of Parliament, it appears to me (though I do not usually like to use general maxims in considering Acts of Parliament or any other instrument) that this Act is one as to which we may fairly say, that its provisions ought to be construed liberally, so as to advance the remedy and repress the mischief. It appears to me that the intention of the Legislature was to prevent a person having a trade mark from being liable to be injured by another trade mark, which _ might be used to imitate his or be passed off as his." In the same _ ease, Brett L.J. (3) said : - ' There again there is nothing about form or outline, it is the trade mark taken as a whole. That being so, and the mischief to be guarded against being a mischief to be done to one person by another in the course of trade and in the use of these marks in trade, it seems to me that it would be a narrow ction of the statute to say that we are only to look at the 'kk as it is printed in the advertisements, and that the proper truction is to say that we are to look at the trade mark as it will be used in the course of trade." The object of the present 25 of the Australian Trade Marks Act is similar to that of sec. 6

(1) (1886) 32 Ch. D. 109, at p. 117. (2) (1880) 14 Ch. D. 8, at p. 13. ; (3) (1880) 14 Ch. D., at p. 15.

of the Act in relation to which these decisions were given. See. 5(

the use of a registered trade mark in the course of trade and to the use in the course of trade of a mark identical with or resembling the registered trade mark in question. That, in my opinion, is natural scope and operation of these sections. A narrower cons

free to a limited extent to use in the course of trade a trade mark identical with or resembling a registered trade mark. No rule is expressed in the Act for defining what would be the area of that immunity.

Moreover, it may be noted that sec. 25 would not effectively prevent the mischief that has been described being done to the registered proprietor in the course of trade, if sec. 53 does not strike at the use in the course of trade of a device to which registration had been denied under the former section.

The appellant used the device in this case as a trade mark in the course of trade. In my opinion he thereby infringed the respondent's registered trade mark. This conclusion is in accordance with the dicta of Stirling J. and the opinion of Kerly which were cited in

argument. The appeal should, in my opinion, be dismissed.

Solicitors for the appellants, #. P. Johnson & Davies. Solicitors for the respondents, Waters & Stewart.