N.S.W. v BREWERY [1908] HCA 94 | Case summary

N.S.W. v BREWERY [1908] HCA 94 | Case summary | Zoe

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union registered under the Industrial Arbitration Act 1901, New South Wales, and also an association of workers or a number of associations of workers within the meaning of the Trade Marks Act 1905, the defendant Watson being its secretary, liable to be sued on its behalf, and the defendant Townsend the Registrar of Trade Marks for the Commonwealth. The statement of claim continued as follows: - On or about 12th July 1906 the defendant union applied to the defendant Registrar for the registration of a certain mark or label as a workers' trade mark under Part VII. of the Zvade Marks Act 1905. The defendant Registrar purports to keep a register of workers' trade marks under that Act. On or about 12th July the defendant Registrar purported to register the mark as applied for, and entered it in the register referred to. Parliament has no power or authority to enact Part VIL. of the Trade Marks Act 1905, and it is wholly null and void. Defendant union threaten and intend to use the mark or label as a workers' trade mark duly registered under the Act, and the defendant Registrar will keep a register of workers' trade marks unless restrained by the Court. The registration and user of the defendant union's mark or label will injure and interfere with the plaintiff companies in carrying on their business, in selling their goods and in employing labour in their business. The plaintiffs claimed a declaration in accordance with the particulars endorsed on the writ. In pursuance to a request by the defendant Registrar the following further particulars were delivered : - The mark or label complained of was and is in respect of beer, porter, malt, mineral and «rated waters, cordials, hop beer, ginger beer, and cider. The registration will compel the plaintiff companies to allow the use of the mark on their goods or to lose business with the members of the defendant union or persons licensed by it to use the mark, or in sympathy with the defendant union. Many people who now buy the plaintiff companies' goods will refuse to do so, some if the mark is used on the goods, others if the mark is not used. The registration will prevent

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extent until the 19th century, when suits were brought either tc protect the trade marks as the property of the person who h been accustomed to use it, or to prevent "passing off." These proceedings were brought always by the persons injured, that is, the owners or sellers of the goods. Consequently the Courts only had to deal with trade marks belonging to persons selling o1 making the goods on which the marks were used, with the res that in general opinion owners of trade marks were restricted t that class of persons. But there were other owners of trad marks and other objects of their use. The expression " trade mark was not used until the 19th century, but the things denoted by the name had existed in connection with trade for many yea A workman would probably have had the same right to restra other persons from using his mark as an owner of goods There is no reason why a particularly expert man should not have had a special mark protected by the Courts, though the makers and sellers of the goods were more likely to bring actions - for injury to their property, as they were the chief sufferers from the improper use of the mark by other persons. The definitions - given by the Judges were only directed to the particular matters in controversy, and the circumstance that the persons owning the marks were manufacturers or sellers of the goods in question was present though not essential. The questions that arose - were therefore always whether the particular mark had been | used in connection with a particular business. (They referred - to Sebastian on Trade Marks, 4th ed., p. 6; Kerly on Trade Marks, 2nd ed., p. 2; Southern v. How (1); Leather Cloth Co. vy. American Leather Cloth Co. (2); Hopkins on Trade Marks, p-. 804; Royal Baking Powder Co. v. Raymond (3); In re Australian Wine Importers Limited (4); Adams v. Heisel (5); Stroud's Judicial Dictionary (2nd ed., tit. " Patent").] The - result of legislation in England was not to cut down the meaning of the expression trade mark, but to limit the class of marks - that could be registered. Other marks, though not registrable and, therefore, not protected, were nevertheless trade marks -

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Vict. c. 28; 51 & 52 Vict. c. 50.] By the Act of 1862, certain marks, which were not trade marks registrable as such, were protected owing to their age, and by the Act of 1887 this protec- tion was extended to them as merchandise marks: see Kerly on Trade Marks, 2nd ed., p. 807. The mark in In re Carter Medicine Co.'s Trade Mark (1), would have been good if it had been one of the class of marks described as registrable by the Acts. The limitation was, not upon the persons who could register a mark, but as to the class of mark that could be registered. The test of a person capable of owning a trade mark is, not whether he has goods upon which he can put the mark, but whether he can use the trade mark for his own benefit with purchasers of goods. The right to put the mark on goods may be acquired by contract with the owner of the goods. It is not necessary that the owner of the mark should deal independently with the goods. The worker who owns a trade mark gets the benefit of its use by improving his reputation and so increasing the value of his services. The wrongful use of the mark by others on inferior goods would entitle him to claim damages at common law. In 1900 the expression trade mark was applicable to any mark used on vendible goods to indicate origin. Its meaning in the Constitution should not be narrowed unless there is a clear reason for doing so. There is no reason of expediency for restricting it. As the Parliament has to deal with foreign countries in all matters relating to trade marks, it will be presumed that its power over the subject is absolute; otherwise it would not be able to reciprocate with countries which make Conventions with it on the subject. The union label contains the essentials of a trade mark. It indicates that the owner of the mark has done work upon the goods, or that a member of the body which owns the mark has done such work. No new right of property is ereated by this Act, it is merely a new regulation of a right which existed before, providing new remedies, &e. The position (1) (1892) 3 Ch., 472.

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H.C. or A. of the worker is analogous to that of the bleacher. It i hha immaterial that the union consists of a large number of persor Arrorsry. A firm or company may have a trade mark. Under the Statutes Grvrea7°® in force in the Australian States at the date of the Constitution ae trade marks had as wide a meaning as under the Englis Emvroves Statutes. ['They referred to New South Wales Statutes, 28 Ure Vict. No. 9; 56 Vict. No. 18; No. 85 of 1897; Victoria Statutes, Trade Marks Statute 1864, No, 221; Trade Mark Registration Act 1876; Trade Marks Act 1883; Trade Ma Acts of 1890, Nos. 1143 and 1186; Queensland Statutes, Trade Marks Act, 28 Vict. No. 5; 48 Vict. No. 13; South Australi: Statutes, Zrade Marks Act 1863; Trade Marks Act 1 No. 551; Western Australian Statutes, Designs and Trad Marks Act, 48 Vict. No. 7; Merchandise Marks Act, 52 Vict. No. 6; 58 Vict. No. 4; Tasmanian Statutes, Merchandise Marl Act 1864; Patents, Designs and Trade Marks Act 1893. They referred also to the English Statutes dealing with workers' marks on cutlery and metal work generally, collected in Sebastian on Trade Marks, 4th ed., pp. 614 to 632.] In all cases" of workers' marks under the old English Statutes the mark was the property of the worker, though the goods on which the mark was placed might be the property of his employer. They were probably the origin of the trade mark as recognized by modern Statutes. The original purpose was to protect the public fr fraud, but from its having that effect the right to use the mark became valuable to the owner. [Isaacs J. referred to 59 Geo. IIT. ¢. 7.] 7 The Commonwealth power to legislate with respect to trade marks necessarily involves a certain amount of interference with the internal trade of the States, whatever meaning is given to the term. The only question is how far the power extends. Ie should be assumed to extend to the whole subject unless strong reason to the contrary is shown. The Commonwealth legislature _ was intended to have as full power to deal with the subject of trade marks as the States would have had but for the Constitu- tion. The States could deal with the whole subject and make any provisions they pleased as to the kind of marks that should - be treated as trade marks and as to the class of persons entitled

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having no authority at all to deal with the subject matter of H.C. or A. trade marks, had nevertheless purported to set up a register of 10 trade marks, the office of the Registrar is such that a quo arropsny- warranto would lie against him. But it was said that in such a bac case the quo warranto could only be brought by the Attorney- pace General of the Commonwealth. Quo warranto is not the murrovrs appropriate remedy in the present case, because the appointment of a Registrar of Trade Marks is admittedly authorized by the Constitution, and the objection is not to the unwarranted assump- tion of the office, but to the assumption of functions which do not lawfully appertain to it. In Mr. Shortt's book on Informations it is said that in such a case the appropriate remedy is injunction or prohibition (page 182). It is clear that in such a case there must be some way of preventing, and not merely of punishing, the illegal assumption of authority. It would appear from Coke's Entries that in ancient times the process of quo warranto was applied in cases of the assumption by a lawful corporation of functions not within the terms of its franchise. There is no modern instance of the use of the writ for this purpose, but it is now settled that, in any case when a public corporation claims to exceed its powers in respect of a subject matter of such a nature that the excess tends to the injury of the public, the Attorney-General can maintain an action to restrain the excess : London County Council v. Attorney-General (1); Attorney- General v. Shrewsbury (Kingsland) Bridge Co. (2); Attorney- General v. London and North Western Railway Co. (3). In my judgment this doctrine applies to any person holding a public office who claims to exercise functions which are not authorized by law and are in their nature injurious to the publie or to members of the public. As to the contention that the proper Attorney-General to sue is the Attorney-General of the State by whose law the corporation or officer claims to be authorized, I think it is founded on a misconception. The ground of the Attorney-General's right to interfere is a common injury to the public, and it appears to me that, if a person claims to be authorized by law to exercise some public function which is in fact not authorized by law and is injurious to the public of a

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regarded any future Convention it was obviously necessary the subject matter should be under the control of the Common- wealth. This, read with sub-see. (i.) suggests that the eoncept o a trade mark as used in sec. 51 had primarily nothing to do with: the details of internal trade and commerce. In the case of Attorney-General jor Quebee v. Queen Insw ance Co, (1) in which the question for consideration was meaning of the term "direct taxation" under the British North America Act, Sir G. Jessel M.R., delivering the opinion of Judicial Committee, said - - " Now, here again we find words which have either a technical meaning or a general, or, as it sometimes called, a popular meaning. One or other meaning words must have; and in trying to find out their meaning y must have recourse to the usual sources of information, whet regarded as technical words, words of art, or words used popular language." The learned Master of the Rolls then pro- ceeded to apply this test, and considered the words first as wo of art and then as words used in popular language. I propose te follow the same course. First, then, what was the meaning of the term "trade mark" in 1900 regarded as a term of art ? : Before the year 1837 very few cases are reported in which term or any analogous term was used, and in none of them, s far as I know, was it used as a term of art. In Blanchard y. Hill (2) Lord Hardwicke L.C., said: - * Every particular trader has some particular mark or stamp ; but I do not know of any insta of granting an injunction here, to restrain one trader from usi the same mark with another." In Motley v. Downman (3), whieh was a suit for an injunction to restrain the use by the defendants a mark " M ©," which the plaintiff was in the habit of using to dis tinguish tin plates made at his works, Lord Cottenham L.C. said = "The case, then, is, that a person who, as tenant of particula works, had derived the benefit of using the distinguishing mark employed for the purpose of marking the goods made there, q the premises, and establishes a similar manufactory elsew! and there, after his lease of the previous works has expired,

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H.C. or A. emblem, figure, sign, seal, stamp, diagram, label, ticket, or oth 1908. mark as aforesaid lawfully used by any person to denote any Artorxey. Chattel, or (in Scotland) any article of trade, manufacture, or Ne a merchandize, to be an article or thing of the manufacture, work- v manship, production, or merchandize of such person, or to be an faa article or thing of any peculiar or particular description made o Ue sold by such person, and shall also include any name, . . « mark, or sign which in pursuance of any Statute or Statutes for the time being in force relating to registered designs is to be put or placed upon or attached to any chattel." Up to this time a trade mark had not in England been treated in Courts of Justice being itself a substantive subject of property, and the defini given in the Act probably included any possible mark or sign that had been used to distinguish one trader's goods from another's. I think that it is not unreasonable to infer that after the passing of | this Act the term "trade mark" came to have in England a meaning. substantially the same as, if not identical with, this definition, but whether the word had come to be regarded as a term of art or not is not easy to say. The Act of 1862, with or without - provisions for registration, was adopted by all the Australian - Colonies except Western Australia. In 1875 the Act 38 & 39 Vict. c. 91 was passed which established a register of trade marks as defined by the Act, and provided that after Ist July. 1876 a person should not be entitled to institute proceedings for E the infringement of a trade mark as defined by the Act unless such mark was registered. The idea of property in a trade mark is here for the first time suggested in the Statute book. It had - already in the interval been accepted in the Courts, in a case to - which I will directly refer. Sec. 10 was as follows : - "10. For the purposes of this Act : A trade mark consists of one or more of the following essential particulars ; that is to say, 4 A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner ; or A written signature or copy of a written signature of an individual or firm ; or é A distinctive device, mark, heading, label, or ticket ;

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the manufacture, or the rate of wages paid to them, or any other H.C. oF A. particular regarding the conditions of manufacture. S The defendants, on the other hand, contend that any individual rroryey- worker is entitled to acquire a right to a trade mark as a pro- Meee ta prietary right, and is free to use the mark or not to use it upon iene goods upon which he works, as he thinks fit, subject to any Emptovrs express contract between him and the owner of the goods; that bigte the same rule applies to partnerships; that the number of the cola members of a partnership is immaterial unless limited by positive Jaw; that the rule also applies to a joint stock company ; and that, according to modern notions, a trade union is entitled to enjoy the same rights with respect to this kind of industrial property as a joint stock company. So far as regards an individual worker or a partnership or joint stock company, I do not see any answer to this last argument. But so far as regards trade unions or industrial unions or associa- tions of workers, corporate or unincorporate, other considerations arise. It is not within the competence of the Commonwealth Parliament to create new forms of property, or new forms of associations or partnerships for domestic trading purposes, or to confer upon existing partnerships or associations any capacity beyond those which they possess under the laws of the States, except, in either case, as incidental to the execution of some other express power. If Part VII. of the Trade Marks Act merely provided that any body, corporate or unincorporate, which by the law of a State may lawfully hold property, may be the owner of a trade mark (which would not be necessary if the mark in question is property) no objection could be offered on that score. The Act, however, purports to create new kinds of associations or bodies politic and to confer upon them the capacity of owning a worker's trade mark, which it calls property. The defendant Union is a trade union, and also an industrial union, under the law of New South Wales, and, if the only objection to Part VII. of the Act were that based on the creation of new and unauthorized associations, it might be contended that the provisions relating to such associations are severable from

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further say that an Attorney-General is not here a competent | plaintiff; that this is not a case in which an Attorney-General Arroryey- can lawfully be set in motion ; and that, even if that were so, the hes ate Attorney-General for New South Wales is not a competent ), plaintiff, and only the Attorney-General for the Commonwealth 5 can institute proceedings. In effect, they argue that this action is brought for the purpose of obtaining a pronounce- ment which the Court has no right to give, since it would not be a decision between the conflicting interests of the parties, but a mere opinion as to the powers of Parliament. It is needless to say that this Court will not entertain a question brought before it merely to satisfy those whose political views prompt them to struggle to remove an enactment that offends them. Nor will it lend itself to an endeavour to protect business interests when there is not in law a grievance to be redressed. But when a plaintiff says to a defendant, " You are injuring my trade by registering this label as to the very article in which T trade. Its continuance on the register hampers and embarrasses me in my business and must be injurious to it," it seems to me that, if he can establish the truth of these propositions, he has a right to the assistance of the Court, and therefore is a competent plaintiff to be allowed to endeavour to establish it. If that is so as to wrongful registrations in general, why is it not to be so where it is claimed that the registration is wrongful, not merely because of some defect in the mark itself or the procedure, but 'on the ground that there was no right to registration because the assumed authority of the Statute under which it was claimed or granted is not a real or lawful statutory authority ? Now, these brewing companies are embarrassed in their trade ; by the registration impeached. It is not describing the position ' quite accurately to say that all that will happen will be that, by choosing to use or not to use the mark, they will have to choose one class of customers or the other - those to whom it will or those to whom it will not be a recommendation. Have they not tosay which class they prefer to lose? Presumably their present customers are such of the public as approve of their beer. If they adopt the mark they are likely to lose many customers to

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by that name had come into existence, and that certain legal rights had attached to it before that time. The concept of a trade mark was, of course, in existence before the name itself was applied to connote it. If the case of Southern v. How (1) is correctly reported, traders' marks were known and used, and damages would be given for their fraudulent use, in the time of James I., though the name trade mark was not yet given them. These marks were evidently used by traders, those who manu- factured for sale as well as those who merely sold, to denote that the goods on which they were placed were made or sold by that trader who affixed them. And before any legislation took place on the subject, the common law protected the use of such marks by granting a right of action, first for the fraudulent use or imitation of them, and afterwards for their use or imitation in such manner as probably to deceive an unwary customer, even in the absence of fraud (compare Southern v. How (1) and Sykes v. Sykes (2) with Millington v. Fou (3). It did so on the principle that the marks were used to distinguish the goods of the maker or seller from those of other makers or sellers, and that those others had no right to represent their goods as made or sold by those who had by user of their own marks established that very distinctiveness. The effect, whether intended or not, was to disturb him in the exercise of a right. And so, when we hear that it is in law essential that the trade mark should be distinctive, we must remember that the law says this, not as itself assigning that quality to a trader's mark, but because the thing cannot be or become a trader's mark at all without that quality of distinctiveness. To distinguish the trader's goods from those of others it must first be affixed in some way to the goods. And, apart from Statute law, it is essential to the same purpose of its becoming distinctive that it should be used in the trade - that is, in the market. For thus only are the others who are interested in that commerce - that is, the buyers - enabled to discriminate between the goods of one trader, be he manufacturer or merchant, and those of another, who might otherwise pass off the goods made or sold by himself as those of a trader who has nothing to do with them. The mark to become distinctive must

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Nsw. similar in all respects to that in question here, was a " trade mark." The Court held that it was not, that it was entirely wanting in the essential characteristics of a "trade mark" as that expression was understood in its ordinary legal meaning. For that reason, apparently, it was deemed necessary in many of the States of America to pass special legislation for the purpose of constituting the union label a trade mark and so bring it within the protec- tion of the ordinary law of trade marks. The value therefore of illustrations from American legislation and American decisions in this controversy is that they would appear to demonstrate that the legal concept of a trade mark in that country was identical with that which obtained throughout the British Empire in 1900. In inquiring what was included in the term "trade mark" in Australia in that year it is very important to consider the com- mon law. The concept of a trade mark is the product of the common law, and in England, long before there was any legisla- tion on the subject, trade marks as they now are had been estab- lished and recognized by the Courts. That had also been the case in America, and the observations of Mr. Justice Miller on their origin in that country are equally applicable here. In the Trade Mark Cases (2) he says : - * The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, the exclusion of use by all other persons, has been long recognized by the Common Law and the Chancery Courts of England and of this country, and by the Statutes of some of the States. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a Court of Equity, with compensation for past infringement. This exclusive right was not created by the Act of Congress, and does not now depend upon it for its enforcement. The whole system of trade (1) 152 Mas., 101. (2) 100 U.S., 82, at p. 92.

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trade marks used in the business. But it does not follow that the rule is universal or a necessary part of the fundamental con- cept. Indeed, it is clear that, if the trade mark is one indicating personal acts or skill of the individual using it in his business, it is not recognized by common law as assignable at all, because it would be deceptive if used by the assignee, and so, in that case at least, it is not deemed part of the goodwill. See Bury v. Bedford (1); Pinto vy. Badman (2); Leather Cloth Co. v. American Leather Cloth Co. (8); Thorneloe v. Hill (4). The English and Australian States Trade Marks Acts forbade assignment of a registered trade mark at all, except in connection with goodwill. So far it is established that, generally speaking, a trade mark is assignable with goodwill; in the cases of registered trade marks it is not assignable at all without the goodwill; in certain cases, by reason of possibilities of deception, it is not assignable even with goodwill. But still it is said that does not establish the assignability of a trade mark in any case without goodwill. Even that position is not, however, tenable. This, I repeat, is not a question of rule and exception; not a case of a majority of instances. One instance standing clear and well established of a class of trade marks assignable independently of goodwill, that is independently of a business, is sufficient to dispose of the argu- ment that ineapability of assignment apart from goodwill is proof that an independent business is indispensable to the existence of a trade mark. Under the Cutlers' Company Act marks granted were the assignable personal property of the grantee - at least of non-freemen, and where assignment would not deceive. See per Turner LJ. in Bury vy. Bedford (5). Kerly on Trade Marks, 2nd ed., p. 103, says: - "In this respect they differed from ordinary trade marks, which are, and always have been, assignable or capable of transmission only in connection with the business in which they are used." As already pointed out, the Constitution gives power to legislate with respect to "trade marks," not merely ordinary "trade marks." The Cutlers' Company Acts (I quote them from Sebastian on Trade

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existing, and, in short, to deal with the subject in any manner it thought fit. It had also the power arising from its unlimited right of legislation of transferring from any other distinet branch of law any subject however foreign, and of arbitrarily including it henceforth among trade marks, This last authority I do not hold the Commonwealth Parliament can exercise unless it has among its other granted powers jurisdiction also over the subject so transferred. But having cleared the term "trade mark" of the non-essentials which have clung around it by reason of certain remedial procedure and the notions which inevitably root themselves in the soil of every day practice, and thence branch out until at times they obscure the central object itself, we find that trade marks mean nothing more or less than marks used in trade and connected in some way with goods in order to identify the goods with persons, that is, to indicate their connection with some persons or class of persons who singly or in association have in some way dealt with or operated in relation to the goods. The British Parliament has acted upon this in sec. 62 of the Act of 1905 with regard to special trade marks, making exceptional provisions as to their registration, still treating them as fairly within the ambit of trade marks. This enactment the Commonwealth Parliament has followed in sec. 22 of the Trade Marks Act 1905. If the Commonwealth Parliament could validly pass that section, it seems decisive of the present question. If it could not, then could the State Parliament enact it, and so create side by side with the Commonwealth J'rade Marks Act another branch of trade marks law, recognized as such by the Imperial Parliament, but altogether outside Commonwealth control? I do not think this diversity of jurisdiction was intended by the Constitution. With respect to trade marks defined as above, the Commonwealth Parliament has, as I think, complete jurisdiction, and if so, I fail to understand why it cannot lawfully enact that this or any other association of Australians might become the possessors of a trade mark. The State, it is true, has general power over the personal capacity of its citizens. If in exercise of that power it said that no person under 25 years of age or women should be capable of holding property, would the Federal Parliament,

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No injury is alleged to have been done as yet by the defend- ants to any of the plaintiffs : - "the registration and user (of the mark) will injure and interfere." This is purely a quia timet action - an action to prevent an apprehended injury. The plain- tiff breweries fear the results to their business if this mark should be applied to a rival brewer's goods. But the mark has not yet been applied to the goods of any brewer, and it cannot be applied without the brewer's consent (sec. 74 (2) (c) ). So far, no harm has been done, no damage has been suffered. For aught that appears in the statement of claim, no brewer will ever consent, and the mark may never be applied to any goods; and unless the facts show the injury to be imminent and inevitable - unless there be no obstacle between the defendants' alleged wrongful act and the alleged injury - the Court does not in a quia timet action grant an injunction, or any relief. Here the argument is that, if some rival brewer allow the mark to be used on his goods, the plaintiffs may be put in the dilemma of choosing between the custom of those who would be offended by the workers' mark and those who would be attracted by it; and they will suffer damage if they choose wrong, and if they decline to avail them- selves of the invalidity of the mark by putting on the mark even though they do not employ union labour. Such speculative, hypothetical, statements are wholly insufficient as a basis for any judgment in any kind of action. The union and the Registrar - the only defendants - have done all that they can do, and there is as yet no cause of action, and there can be no cause of action, no injury, until some brewer allow the mark to be attached to his beer. How can an injunction be granted against people who have not done, and who cannot do, the injury apprehended ? Putting out of sight all the other objections, how can the plain- tiff breweries claim a declaration of right or a rectification of the register, against defendants who do not and cannot, without some outsider's concurrence, injure them? It must appear in a quia timet action that, if the remedy be not given, the damage (and very substantial damage) must necessarily be suffered : Salvin v.

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allegation shows no cause of action if the actions and prosecu- tions are not to be successful ; and they cannot be successful if - as is assumed - Part VII. is invalid. But the plaintiffs say (3) that they will be embarrassed in their business by the regis- tration and/or user of the mark; for, if some rival brewers use it, the beer-purchasing public will see that their beer is made by union labour; and this will attract one class and drive away another. The plaintiffs, it is said, will have to make up their minds whether to use the mark or not; and if they use the mark, they will have to employ union labour. It is not stated whether the plaintiffs will lose or gain more custom by not having the mark; and it is not alleged that to employ union labour, and union labour only, will be injurious to their business. I venture to say that to bring forward this embarrassment as a cause of action is preposterous. No action lies for placing w person in a dilemma as to his commercial interests, for putting before him an inducement to use this or that kind of labour. A union is entitled to embarrass a manufacturer who is not fair to his employés - unless they embarrass him by means of some wrong done to him. They can embarrass him by agreement with a rival brewer, or in any other way. The embarrassment, if any, comes from the use of the label (which is lawful without the Act), not from the registration. No action lies even for doing the plaintiffs harm in their interests, unless the act complained of is a legal wrong to the plaintiffs: Mogul Steamship Oo. v. McGregor, Gow & Co. (1). If Part VII. is invalid (as must be assumed, or else the plaintiffs have no possible case) the plaintiffs can with impunity, so far as the Act is concerned, use the union label and yet not employ union men; and I have yet to learn that an action lies for so acting as that a plaintiff is tempted to tell an untruth. It is now further said that the registration of the mark interferes with the freedom of the plaintiffs to carry on their business without pub- lishing to the world any statement as to the persons whom they (1) 23 Q.B.D., 598, at p. 613, per Bowen L.J.

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validate it. For the word " marriage " did not, strictly speaking, include such a union - the union was voidable by judicial pro- ceedings (absolutely void in Britain, since the 5 & 6 Wm. IY. ce. 54). Then, Parliament is given power to make laws with respect to "parental rights ;" is it to be restricted to parental rights as recognized in 1900? If it should ever be thought well to follow the example of other countries which treat infancy as continuing till 22, or 25 or even 30, is the Federal Parliament, in exercising its powers as to the "custody and maintenance of infants,' bound for ever to the present meaning of infancy, as ending at 21? Many other illustrations may be given on a consideration of the other subjects entrusted to this Parliament as to the effects - or probable effects - of holding the plaintiffs' contention to be good. But the case of trade marks contains excellent illustrations within its own bounds. Text-writers have found themselves compelled to include in their treatises on " trade marks " disser- tations on mere "trade names," and on "passing off" cases; for these matters are treated by the Courts on the same principles as those trade marks which satisfy the plaintiffs' definition ; but, according to the plaintiffs, these matters have still to be left to the States. Yet the majority of so-called " trade mark" cases brought to the Courts are " passing off" cases - imitations of the "get-up" of goods. Before Federation, if the New South Wales Parliament, or any other of the Colonial Parliaments, saw fit, it could have allowed descriptive words to be used as a trade mark, and some of the Parliaments did in fact include "trade deserip- tions" under the term "trade marks ;" but the Federal Parlia- ment has not, it is said,any such power. Before Federation, any Colonial Parliament could have passed a law with regard to such a mark as the "hammer mark." This was only to be put on cutlery, &., if wrought or forged (59 Geo. III.¢. 7). So with hall marks for jewellery or for plate; so with marks for gunbarrels indicating proof. So with Sheffield marks, cotton marks, &c., which were originally dealt with in the English Trade Marks Registration Acts. So with misuse of the royal arms, false repre- sentations on shop fronts, &c., that the trader is successor in busi- ness, &c., toa well known name. So with marks on imported goods representing that they were made in Australia (cf. 39 & 40 Viet.

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There are two questions involved in our inquiry. The main question is what is the ambit, the circumference, of the power "to make laws with respect to trade marks." The subsidiary question is, what was the meaning in 1900 of the two words "trade marks." It is curious that this latter question has been almost the sole subject of discussion. Of course, if it could be shown that this workers' trade mark contains all the essential attributes of a trade mark as understood in 1900, Part VIL. of the Act is valid. But, as I shall show hereafter, it by no means follows that, if it does not contain all the essentials, Part VIL is invalid. Part VII. may possibly still be a valid exercise of the power to "make laws with respect to trade marks." Taking the subsidiary question first, if the two words " trade marks " be eon- sidered in their ordinary unsophisticated sense, as English words, they would mean merely marks used for purposes of trade; but the word "marks" shows that they are used to mark something, to identify something, to distinguish some things from others. Has this primary meaning been ever lost? The burden lies on the plaintiffs of showing that the meaning has become narrowed and limited. If the words can be treated as technical at all, they make up a trade term, a commercial term. They are not a technical legal term (at all events where - as in the Constitution

the words are not made one word or hyphenated). Trade marks - both the phrase and the things - were used by men of business long before the Courts took up the subject in the last century. To my mind the unfounded assumption that these words in themselves constitute a technical legal term (apart from their use for particular purposes, such as the purposes of particular Statutes), is at the root of much of the difference of opinion in this case. Owing to the form in which this case comes before us, we have not any evidence of any non-legal technical meaning for the words ; and the burden of proof lies on those who affirm that

[912]

imperfect if the class name is defined by its accidents instead of by its essential differentia (Mill's Logic vol. 1, pp. 146, 156). There were many trade marks which could not be enforced in the Courts simply because no one could show that he had acquired an exclusive right to use them. Two or more traders might hit upon the same trade mark, independently ; and - apart from legislation - they could not prevent other traders from using it too. It was for this reason that in the British Act of 1883 (sec. 72), Parliament, in forbidding the registration of identical marks, made an exception of cuses "where the Court has decided that two or more persons are entitled to be registered as pro- prietors of the same trade mark." This language recognizes that there may be trade marks which do not fulfil the condition of exclusiveness as property. It is to be noticed - as Kerly on Trade Marks, 2nd ed., p. 26, points out - that the Courts, although they have frequently made expositions pointed to the difficulties of a particular case, have never yet formu- lated an exhaustive definition of "trade marks." Text- writers, it appears, have rushed in, where Judges have feared to tread. Some recent compilers of dictionaries have evidently followed up the gallant text-writers into the breach, Richardson, in 1855, does not refer to "trade mark" at all. But Worcester, in 1878, defines "trade mark" as "a particular mark, sign, device, writing, or ticket, put by a manufacturer upon his goods, to distinguish them from those of others." Even the plaintiffs' counsel would probably admit that it is wrong to limit the idea to manufacturers, or to the owners of goods. Webster (1892) puts it as "a peculiar distinguishing mark or device affixed by a manufacturer or a merchant to his goods, the exclusive right of using which is recognized by law." This is better, but it refers to enforcement by the Courts. But the Standard Dictionary (1901) says that the "trade mark" must be "secured to the user by legal registration." So this dictionary makes registration part of the definition, which is also wrong. It is evident that the learned compilers extracted these definitions from legal text-writers, the only place where they could find anything definite ; but the text- writers had in view the practice of the Courts only. Dictionaries,

[913]

as Hardcastle on Statutory Law (3rd ed. p. 165) tells us, are H.C. or A. sometimes delusive guides, and "the best dictionary . . . - ses can never be an absolute authority on so varied and fluctuating a arrorvey- subject as language." It is our duty to look for the meaning of O*N"E,"°" the words "as they would be understood by plain men who 'ae know nothing of the technical rules" of the Courts: Cargo ex Umrtoves Schiller (1); and see Attorney-General v. Winstanley (2). pes gi If we are at liberty, without evidence, to look beyond the ordinary grammatical meaning of these two words in conjunc- tion, it seems to be a fair thing to examine the various meanings of the words as used, in order to find what attributes are common to all the meanings, and to see whether this workers' trade mark has all the common attributes. This mark is a distinctive device ; it is to be attached to goods by or by the authority of the manu- facturer, to identify the goods as being made by a certain body of journeymen ; and it is to be used for purposes of trade, to attract buyers. What attribute is wanting ? It used to be said (a) that the owner of the mark must own the goods. But that is not so, even for purposes of enforcement. The bleacher of linen which another has manufactured may have his trade mark for that linen: Sykes v. Sykes (8); and per Jelf J.in Major Brothers v. Franklin and Son (4). So may the selector of goods have his mark: Hirsch v. Jonas (5); and per Kay J. in In re Australian Wine Importers Ltd. (6). But it is said (b) the mark must. identify one particular trader, one sole concern. Thisis true, in the main, as to marks enforceable in the Courts. Yet even the Courts have recognized separate rights in two independent persons to the same mark by virtue of a devise of two separate business establish- ments: Dent v. Turpin (7); and see Southorn v. Reynolds (8). But the practice of the "Three Mark Rule," and the whole case of cotton marks, referred to at length by my brother Jsaacs, are, to my mind, conclusive. If a mark had not been used by more than three firms (before the Act of 1875) it was treated as the old mark of each firm, and each firm was entitled to registration.

[919]

not identify any particular maker, or vendor, or any particular business. Then the legislatures of the States took the matter in hand (for there is no power in Congress, such as there is in our Federal Parliament, to legislate as to trade marks, except as to those used in inter-state or foreign commerce); and Acts were passed by most of the States prescribing registration of the union label as a trade mark, calling it a trade mark, and providing for its enforcement as a trade mark. All this took place before 1900; so that, when our Constitution was passed, union labels, of the same nature as these " workers' trade marks," were actually called in public Statutes "trade marks." I suppose it will not be contended that we are not to take into consideration the English language as used in America - the country where most of those who use the English language live. Probably, as our Constitution is contained in a British Act, if the British meaning were in conflict with the American meaning, that meaning should be adopted which the language would bear as coming from a British legislature in preference to the meaning which it would bear as coming from an American legislature. But this is not a ease of conflict; and we are entitled, I think, to take into account the use of the English language wherever that language is heard - even if the sound have the timbre of a gramophone. Moreover, the Privy Council has recognized as legitfmate an argument as to the meaning (in the Canadian Constitution) of the word "licences," based on the use of the word in the United States as well as on the use in Britain and Canada : Attorney- General for Quebec v. Queen Insurance Co. (1); and it is not a violent assumption to suppose that the framers of our Constitution and the British Parliament know something of the long controversy as to the union label in the Courts and in the legislatures of the United States, and meant to give the Aus- tralian Parliament full power, under the head of "trade marks," to deal with the whole subject as it saw fit - power as full as each State of the Union had, as each Australian Colony had, as the British Parliament had, and as the British Parliament has since to a great extent exercised (Act of 1905, sec. 62).

[927]

Soe ciples of interpretation as we apply to any ordinary law, these ,. very principles of interpretation compel us to take into account 'v. the nature and scope of the Act that we are interpreting - mae to remember that if is a Constitution, a mechanism under Emurtoyes which laws are to be made, and not a mere Act which 'Sw. declares what the law is to be. Story pointed this out well (Commentaries, 2nd ed., see. 455): - ' While, then, we may well resort to the meaning of single words to assist our inquiries, we should never forget, that it is an instrument of government that we are to construe." In the United States Marshall C.J. in his famous judgment in M'Culloch vy. Maryland (1) recognized the same truth : - * In considering this question, then, we must never forget, that it is @ Constitution we are expounding." The case of Re Klein (2) is a good instance of the application of this principle. At the making of the United States Constitution, the word "bankruptey " had the original English meaning of an adverse proceeding by a creditor against a fraudulent debtor. This was the meaning from the beginning (34 & 35 Hen. VIII. c. 4), and at the time of the American Consti- tution. Yet it was held that Congress, under its power "to establish uniform laws on the subject of bankruptcies throughout the United States," had power to make a law for the voluntary sequestration of their estates by debtors - power to allow a voluntary bankruptcy at the instance and for the benefit of the debtor. Jt was also held that the Act was valid, although the word "bankruptcy" was properly applicable only to traders: Kunzler v. Kohaus (3); and see per Marshall C.J. in Sturges v. Crowninshield (4). In short, Congress had the same power to widen the scope of bankruptcy law as the English Parliament pos- sessed, and as it in fact exercised after the American revolution. In Canada, the Court of Appeal of Ontario followed suit : R. v. Fraw- ley (5). Under the British North America Act 1867 the provincial legislatures had power to make laws with respect to " the imposi- tion of punishment by fine penalty or imprisonment for enforeing any law of the province made in relation to any matter coming

N.S.W. v BREWERY

At a glance

Court

Decision date

Before

Source

Judgment (952 paragraphs)

legislation for the registration of trade marks down to the present

Parties

Cited By (11)