Philip Morris Inc v Adam P Brown Male Fashions Pty Ltd

By agreement made in 1978, the second respondent was appointed by the applicant to act as its exclusive Australian distributor, whereupon the applicant terminated the then existing appointment of an Australian distributor. The terms of this appointment required the second respondent to use his best endeavours to advance the sales in Australia of the applicant's products, to act in good faith towards the applicant, not to manufacture or sell products competing with the applicant's products and not to pass off products as the applicant's which were not such products or to pass off the applicant's products as his own or as some other manufacturer's products.

Subsequently, by agreement between the applicant and the first respondent, made at the request of and with the concurrence of the second respondent, the first respondent was substituted for the second respondent as the authorized distributor of the applicant's products in Australia on the same terms as then existed between the applicant and the second respondent. Thereupon, the first respondent became the sole Australian distributor of the applicant's products. In that capacity, the first respondent and the second respondent as a director of the first respondent were entrusted by the applicant with confidential information as to the property of the applicant. The other respondents, as employees of the first respondent, were also similarly entrusted with such confidential information.

Towards the end of 1979, the said distributorship agreement was terminated by the first respondent.

The applicant asserts that the first respondent, fraudulently in breach of the distributorship agreement and of the applicant's confidence, has manufactured products to mislead and deceive the public into the false belief that they are identical in quality with the applicant's products, has manufactured and distributed products deceptively similar to those of the applicant, products calculated to mislead purchasers into the belief that they are the applicant's products, has been using a promotional book entitled "Stapling Techniques in Gastrointestinal Surgery" which is copied substantially from the applicant's said manual, has been using the applicant's products and their names, with the applicant's manual and instructional materials to solicit sales of the first respondent's products, has applied to register under the Trade Marks Act, 1955 as amended, in connexion with the first respondent's products, a word deceptively similar to a word used by the applicant in relation to its products.

The applicant alleged a number of other respects in which it claimed that the conduct in trade of the first respondent was deceptive and misleading, but which I have no need to detail here.

In describing the respondents' conduct, the applicant included in the description the expressions "passing off" and "unfair competition".

The applicant claimed by way of relief a number of injunctions related to the manufacture and sale by the respondents of goods made or sold in breach of the former agreement between them. One specific claim was for injunctions to restrain the respondents from directly or indirectly passing off goods not being the applicant's products as goods of the applicant and from passing off the applicant's business as the business of the respondents.

In their several statements of defence the respondents, apart from contesting matters of fact asserted by the applicant, said that except to the extent to which the action involves a claim for damages and injunctions pursuant to the Act, the Federal Court lacked jurisdiction to hear and determine it. They further said that those causes of action alleged in the statement of claim which were not based on the provisions of the Act are not within the jurisdiction of the Federal Court. If s. 32 of the Federal Court Act purports to give jurisdiction to try any such cause of action it is invalid or, alternatively, inoperative because of its introductory words referring to the Constitution.

On being notified of these defences, the Attorney-General of the Commonwealth moved this Court for and was granted an order removing into this Court, pursuant to s. 40 (1) of the Judiciary Act, that part of the case in the Federal Court as raised the question of the jurisdiction of that court to entertain the whole of the proceedings in that Court.

Whilst the situation of the parties in these cases differs considerably, each raises a question as to the range and extent of the jurisdiction of the Federal Court. There is no doubt that in each case the jurisdiction of that Court has been attracted. It seems to be conceded in each case that, in so far as the cases seek orders under Pt V of the Act, the Court has jurisdiction. But it is sought to confine that Court's jurisdiction by excluding from it what is referred to in the first case as a cause of action for passing off and in the second as a claim to equitable relief.

It is worth observing at this point that in what has come to be known as judicature or fact pleading, it is not necessary for the pleader to set out or to limit himself to a cause or causes of action which he asserts as a basis for the relief he claims. Indeed, he need not specify a cause of action (using that expression in the pre-judicature sense) at all: it is sufficient that he alleges the facts he seeks to prove and the relief he claims. Of course, no pleading will be supportable if those facts cannot support a right to relief and, in that sense, perhaps a looser sense than the pre-judicature sense, support a cause of action. If it does not it will be susceptible of being struck out, be demurrable in the language of more formal days.

In these days of free and ready amendment it may not be fatal if the facts alleged would not, if proved, entitle the plaintiff to the particular relief he claims, provided that the facts would entitle him to some relief within the jurisdiction of the court, though in strictness a pleading amendment may be necessary. It was otherwise in common law pleading. In that system the pleader would assert his cause of action in conventional form rather than the facts upon which he relied to establish it. But, although we are still accustomed to speak of a cause of action set up by a judicature pleading, such a statement is in truth somewhat of an anachronistic description.

The basic concept of fact pleading is particularly relevant in those cases where the matters raised in the action, as distinct from a specific cause of action, or an issue between the parties, or a controversy between them, will, as I will indicate, be the determinant of the range or extent of the jurisdiction of a federal court whose jurisdiction has in any manner been attracted in relation to the matter raised.

It will be necessary in order to resolve the question posed for the Court in these cases to identify and express the "matter" which was before the Court in each case. Indeed, it is frequently necessary in order to determine the range and extent of the federal jurisdiction exercisable by a court having or invested with federal jurisdiction to determine what is the "matter" involved in the case. For this purpose, the matter will not be confined to the "cause of action", if any be asserted by the moving party, cause of action in the sense of a particular legal basis for the relief which is sought by the one party or, for that matter in the case of a cross-action or counterclaim, by either of the parties. No doubt there are cases in which an asserted cause of action in that sense will circumscribe the matter before the court: but that is neither universally nor necessarily so. Indeed, as I have remarked earlier, in judicature pleading, fact pleading as it was introduced in the judicature system, there is no necessity to assert or identify a legal category of action or suit which the facts asserted may illustrate, involve or demonstrate and on which the particular relief claimed is based or to which it is relevant. It is sufficient in matters in the Federal Court to assert the facts on which the plaintiff or applicant party relies and to nominate the remedies which he seeks as a consequence of the occurrence of those facts. Nor will the nomination of particular remedies by a party necessarily indicate the extent of the matter before the Court: nor will the issues raised by the pleadings necessarily mark out the parameters of the matter. The identification of the matter is very much a question of substance and not of form. The facts alleged by either or any of the parties and their consequences will in the last resort be the determinant of what is relevantly the matter. Of course, in determining that question, the nature of the relief sought and perhaps of the legal right or defence if any be asserted may be of assistance, but, as I have indicated, not necessarily definitive. Those pleaders who are used to identifying the relationship of parties with regard to some known and identifiable category of legal right or obligation will incline to express the relationship of the parties in terms of the issue between them or the cause of action which is asserted or denied. Whilst in many cases it may suffice to use such language as descriptive of the matter, it is important, it seems to me, to realize that such a course is simply convenient and will not necessarily indicate what is the matter whose parameters will mark out the extent of federal jurisdiction exercisable in the case.

It is also important to observe that a matter may relevantly exist which may not in itself attract federal jurisdiction. That jurisdiction may be attracted, e.g. by some assertion made within the facts or as a consequence of them or in relation to them or, indeed, by some assertion or claim made by the opposing party or sometimes by the identity of one of the parties. Thus, there may be circumstances in which the matter does not in substance itself attract federal jurisdiction, though that which attracts federal jurisdiction must in some way relate to the matter. Once federal jurisdiction is attracted, it is not lost because the claim or assertion which attracted it has not been substantiated or has been displaced by some countervailing fact. Once attracted, by whatever path attracted, the jurisdiction persists to enable the Court to resolve the matter. The jurisdiction to do so accrues to the Court because there is a matter, in relation to which federal jurisdiction has been attracted, to be resolved. The jurisdiction thus accrued is itself federal jurisdiction. But, of course, it is limited to the resolution of the matter in relation to which, but not necessarily by which, the federal jurisdiction was attracted in the first instance. But the jurisdiction will not extend to any other matter, though that other matter might in some sense be an allied or associated matter. To be outside the accrued jurisdiction, however, the other matter must be separate and disparate from the matter in relation to or in connexion with which federal jurisdiction has been attracted. The federal jurisdiction will not extend to enable the Court to resolve the further matter, being as I have said in substance a disparate and independent matter. But this does not involve any close confinement of the federal jurisdiction by too narrow a view of what is relevantly the matter. The emphasis on the disparate and independent nature of what is not part of or within the matter should ensure that no narrow view is taken of the parameters of the matter.

The error of treating either a so-called cause of action asserted in a case or a particular remedy sought by a party in the case as being outside the matter between the parties is well illustrated by what has occurred in the present cases. The Court has had referred to it part of a case between the parties as if it were distinct and disparate from the matter in relation to which federal jurisdiction had admittedly been attracted. Here, one of the ways in which the plaintiff party has sought to justify the particular relief claimed in the suit is treated as transcending, and as being separate from and independent of, the matter in respect to which federal jurisdiction had been attracted. Here, one of the ways in which the plaintiff party sought to express the deceptive conduct of the defendant was to say that the facts indicated that the defendant had passed off its goods as those of the plaintiff and included in its claimed relief remedies appropriate to the restraint of passing off as it is understood in the equitable jurisdiction of the State courts. A removal has been effected of so much of the case as consisted of a claim in respect of passing off. But, in my opinion, it is quite impossible to segregate that form of expressing a result of the factual situation existing between the parties as if it were a disparate and separate matter from the deceptive and misleading conduct which was generally asserted by the plaintiff or moving party. This I regard as a fundamental misconception. It has led, it seems to me, first of all to a challenge to the Court's federal jurisdiction and then to the removal of a part of the case into this Court.

It is settled doctrine in Australia that when a court which can exercise federal jurisdiction has its jurisdiction attracted in relation to a matter, that jurisdiction extends to the resolution of the whole matter. This accrued federal jurisdiction is not limited to matters incidental to that aspect of the matter which has in the first place attracted federal jurisdiction. It extends, in my opinion, to the resolution of the whole matter between the parties. This accrued jurisdiction carries with it the authority to make such remedial orders as are necessary or convenient for or in consequence of that resolution. For this purpose, the court exercising federal jurisdiction may enforce rights which derive from a non-federal source. This exercise of this jurisdiction, which for want of a better term I shall call "accrued" jurisdiction, is discretionary and not mandatory, though it will be obligatory to exercise the federal jurisdiction which has been attracted in relation to the matter.

But, I would add that there would need to be very good reasons why a court which could resolve the whole matter should refuse or fail to do so. Generally speaking, one would expect that a court, once its federal jurisdiction is excited or attracted, would proceed to resolve the whole matter in relation to which federal jurisdiction had been attracted.

There seems, in my opinion, to be little profit in attempting to justify the Australian doctrine by citation of and reference to American authority. The doctrine is well documented in the decisions of this Court. It is quite true that there has been in the United States a development of a very cognate doctrine of what is there called "dependent jurisdiction". I do not think that the reason for the development of this doctrine is really so very different from the reason for the development of our own doctrine, but it is noticeable that, whereas our Constitution and our doctrine is expressed in relation to a "matter", the American Constitution and therefore its doctrine is expressed in relation to a "case" or "controversy". It may be that in many instances no real distinction exists between the two concepts. It may be, however, that in other manifestations, some substantial difference may be seen in the use of the differing descriptions. Further, I am inclined to think that the American doctrine, particularly as expressed in United Mine Workers of America v. Gibbs [1] goes beyond our own doctrine and would seem to warrant an accretion of non-federal jurisdiction which is not necessary or convenient for the resolution of the case or controversy which has been the source of the federal jurisdiction in the first place, but extends to what is described as "an associated matter". As I remark in relation to s. 32 of the Federal Court Act, the word "associated" embraces matters which may be disparate from each other. My own view is that there is no real utility for our present purposes in the American decisions or their citations beyond, of course, the interesting indication that under another federal system the notion of an accretion to jurisdiction where federal jurisdiction has been attracted has been developed.

1. (1966) 383 U.S. 715, at p. 725 [16 Law. Ed. 2d 218, at pp. 227-228].

Perhaps the language of Marshall C.J. in Osborn v. United States Bank [2] is worth recalling in this connexion. Referring to the citation in that case of English decisions, the Chief Justice said:

But the court will not review those decisions, because it is thought, a question growing out of the constitution of the United States, requires rather an attentive consideration of the words of that instrument, than of the decisions of analogous questions by the courts of any other country. Perhaps these words might afford some encouragement for us to take less heed of the American cases on the point presently under consideration. 1. (1824) 22 U.S. 738, at p. 851 [6 Law. Ed. 204, at p. 231].

As I have said, in my opinion, the authority to grant appropriate remedies will be included in the accrued federal jurisdiction. Section 51 (xxxix.) of the Constitution is an appropriate source of legislative power to grant such authority. Section 32 of the Judiciary Act is, in my opinion, an exercise of that constitutional power. Section 51 (xxxix.) is not, in my opinion, a source of substantive legislative power but only of adjective power. It presupposes jurisdiction that supplements its existence by the grant of power to give remedies appropriate to the exercise of the substantive jurisdiction. That jurisdiction in the case of this Court comes directly from the Constitution.

Thus, in my opinion, s. 51 (xxxix.) would warrant the grant to this Court of authority to grant certiorari to quash in a case in which the Court otherwise has no jurisdiction. Pitfield v. Franki [3] is a case in which the court had jurisdiction to grant prohibition for lack of jurisdiction in the lower court. It might well have done so though that writ would not be as useful as certiorari to quash. Thus, s. 32 of the Judiciary Act was available to justify certiorari not because, independently, the Court had jurisdiction to entertain an application for the prerogative writ but because, having jurisdiction to grant prohibition, the writ of certiorari was a convenient, indeed a more convenient, mode of exercising the jurisdiction which undoubtedly, in my opinion, the court had. My brother Aickin, towards the end of his reasons in Reg. v. Cook; Ex parte Twigg [4] , seems to have been of the same opinion.

1. (1970) 123 C.L.R. 448. 2. (1980) 147 C.L.R. 15, at p. 34.

Section 22 of the Federal Court Act may, in my opinion, be regarded as an exercise of the same legislative power, though there may be a question, which does not need now to be resolved, whether it is referable to the provisions of s. 51 (xxxix.) or whether it is in reality justified as part of the specification of the area within which the invested court may exercise federal judicial power. On another view, s. 22 would be a valid exercise of federal legislative power; that is to say, it is either a provision for the execution of the judicial power vested by the Constitution in the court or it is part and parcel of the definition of the area within which the invested court can exercise the judicial power of the Commonwealth.

I turn now to s. 32 of the Federal Court Act. In the first place, I would point out that the section as drawn is quite different and indeed in a different universe, both in nature and in operation to s. 15A of the Acts Interpretation Act 1901, as amended. The latter Act presupposes a statute which exceeds legislative power and proceeds to require it to be reduced within that power by construction if that course be possible. Section 32, on the other hand, affects to grant no more power than is legislatively possible. It represents what to my mind is a very unfortunate form of drafting and one which, in my opinion, ought to be avoided. It is an attempt to control the language of the enactment by reference to constitutional limitations, themselves not specifically identified or expressed in the statute. The result is to reduce the expression of the legislative will to uncertainty and to impose upon a court of construction a task which it ought not to be asked to undertake, a task which, as I have indicated, is quite unlike the task set by s. 15A. However, for what it is worth, the prefatory words of the section may be taken to indicate the intention not to exceed legislative power by the use of the expressions which follow in the section. But, unless the language of what follows is susceptible of being confined within legislative competence, the prefatory words will not be effective to reduce what is there expressed to a form which is legislatively valid. That consequence is comparable to the situation under s. 15A where the words of the legislature cannot be brought within power by construction.

The evident endeavour of the section is to increase the jurisdiction of the Federal Court beyond the federal jurisdiction which is attracted in relation to the matter. If no more were intended than an express grant of that jurisdiction which the settled doctrine to which I have referred would provide for the Federal Court whose jurisdiction has been attracted in relation to the matter, then the section adds nothing and, indeed, is so far from being of assistance a potential source of mischief. If, of course, it, on its proper construction, does purport to grant a jurisdiction of a non-federal nature which is more than is necessary to resolve the matter in relation to which the federal jurisdiction has been attracted, it will, in my opinion, be invalid, either wholly or pro tanto. Using the expression "associated with", the draftsman has given ground for thinking that the intention was to do that very thing. There is undoubtedly ambiguity in the expression "associated with". After a good deal of consideration, I have reached the opinion that it is not capable of being confined to the express provision of that additional federal jurisdiction necessary for the resolution of the matter in relation to which federal jurisdiction has been attracted. It is therefore, in my opinion, to that extent invalid. As I indicated in relation to the American doctrine, a matter may be associated with another matter and yet be separate and disparate therefrom. To extend jurisdiction to such a matter is, in my opinion, to exceed constitutional power.

I have earlier indicated that the assertion of "passing off" may properly be regarded as no more than an instance of misleading or deceptive conduct within the operation and meaning of ss. 52 and 53 of the Act. Clearly, in my opinion, to pass off in the sense used in equitable jurisdiction is to deceive and to mislead. So viewed, no question of accrued jurisdiction arises. To consider the circumstances of the passing passing off and to afford a remedy to prevent its repetition or to compensate for its occurrence would be directly within the jurisdiction given by the Act through Ch. V.

However, on the assumption that the assertion of passing off and the claim for its remedy are outside the jurisdiction directly given by the Act, the question arises as to whether the assertion and claim form part of the matter between the parties or whether, on the other hand, they are outside that matter and are themselves separate and disparate matters.

Earlier, I indicated that the identification of the matter in relation to which federal jurisdiction has been attracted is a matter of substance, not of mere form. On the assumption I am making for this discussion, the claim for passing off is not simply an assertion of a further instance of misleading or deceptive conduct by the defendant or respondents in the course of trade and commerce. But, even so - and my difficulty in making the assumption is apparent - it surely forms part of the whole matter between the parties. I cannot think of the passing off claim as separate and disparate from the claim made in respect of misleading and deceptive conduct. Each claim relates to the same range of goods and each centres round the use of the trade marks. The substantial matter between the parties was their difference as to the assertion of an attempt to protect the rights claimed to belong to the plaintiffs by reason of the trade marks or the acquired business reputation. The claim to relief under Ch. V of the Act was one endeavour to protect these rights. The claim to equitable relief for passing off was another. The former attracted federal jurisdiction: the latter, not being disparate and independent of the former, was part of the whole matter between the parties and thus within the accrued federal jurisdiction. Thus, it seems to me that the federal jurisdiction attracted by the claim for misleading and deceptive conduct extends to the resolution of the entire matter between the parties which includes the claim for passing off, not merely as an associated claim but as part of the entirety of the matter between the parties in relation to which federal jurisdiction has been attracted.

But I am bound to say that my preferred view is that the alleged passing off ought properly to be regarded as but an instance of conduct falling within the terms of Ch. V of the Act.

I would return to the Federal Court the proceedings removed into this Court with the statement that in each case the Federal Court has jurisdiction to decide the whole claim, including that for passing off or equitable relief.

The costs in each case should be paid by the defendant or respondent party.

These two cases, which have been heard together, raise important questions as to the jurisdiction of the Federal Court of Australia.

The first action was commenced in the Federal Court of Australia by Philip Morris Incorporated and Philip Morris Ltd. as plaintiffs against Adam P. Brown Male Fashions Pty. Ltd. The statement of claim contains the following allegations, amongst others which it is not necessary to mention. The first plaintiff is the registered proprietor of two trade marks ("Marlboro" and Marlboro label) which are registered in respect of cigarettes, and the second plaintiff is a licensed user of those marks. The first plaintiff is also the registered proprietor of a trade mark (Marlborough and device) registered in respect of "Men's and boys' dressing gowns, pyjamas and other clothing." The second plaintiff is the proprietor of, and carries on business under, the trade name "The Marlboro Company." The second plaintiff, under licence from the first, has since about 1957 manufactured, advertised, sold and distributed in very large quantities cigarettes bearing the trade mark "Marlboro" and contained in packets distinguished by a particular roof-top design and bearing the trade mark "Marlboro". One brand of cigarettes, Marlboro Red, was contained in packets bearing the roof-top design coloured red and the trade marks "Marlboro" and the Marlboro label and the second plaintiff advertised and promoted the sale of these cigarettes by the use of representations of the Marlboro Red cigarette packet including the Marlboro label trade mark, either or both the red roof-top design and the trade mark "Marlboro", and the trade name "The Marlboro Company" (thereinafter in the statement of claim referred to as "the trade marks": see par. 9) and also by use of the trade mark or slogan "Marlboro Company". As part of the promotion of those cigarettes, the second named plaintiff distributed by way of sale and otherwise wearing apparel including T-shirts and jackets bearing one or more of the trade marks. Then follow some allegations in the statement of claim which are of sufficient importance to be set out in full:

12. For some time before the date of issue of the Writ herein (which the Plaintiffs cannot before discovery more particularly specify) the Defendant has carried on and does carry on in Australia the business of manufacturing or arranging the manufacture of and the sale of various items of wearing apparel, and in the course of such business, without the licence or approval of the Plaintiffs or either of them, has attached or caused to be attached and is continuing to attach or cause to be attached to items of apparel (not manufactured by for or with the approval of the Plaintiffs or either of them) some one or more of cloth tapes, labels, swing tickets and badges bearing marks identical with or deceptively similar to the trade marks or one or other of them and has sold and is continuing to sell such apparel so marked in Australia.

The sale to Myer Melbourne Limited in or about January 1979 of T-shirts and other garments having a cloth tape bearing the name and trade mark "Marlboro" on their collars, together with labels, swing tickets and cloth badges all bearing the said red roof-top design and the said trade mark name "Marlboro".

The Plaintiffs cannot until after discovery give particulars of all the said acts of manufacture, offering for sale, exposure for sale and sale by the Defendant but will rely upon all such acts.

13. By the acts referred to in paragraph 12 hereof the Defendant in the course of its aforesaid trade and commerce - (a) has engaged and is continuing to engage in conduct that is misleading and/or deceptive; (b) has engaged and is continuing to engage in conduct that is likely to mislead and/or deceive.

14. Further by the acts referred to in paragraph 12 hereof the Defendant in the course of its aforesaid trade and commerce and in connection with the supply or possible supply of the said apparel - (a) has represented and is representing that the said apparel has the sponsorship and/or approval of the Plaintiffs or one or other of them whereas none of such apparel had or has such sponsorship or approval; (b) has represented and is representing that the Defendant has the sponsorship and/or approval of and/or is affiliated with the Plaintiffs or one or other of them whereas the Defendant did not have and does not have such sponsorship or approval and was not and is not affiliated with the Plaintiffs or either of them.

15. Further by the acts referred to in paragraph 12 hereof the Defendant - (a) has passed off and is continuing to pass off its said apparel as and for apparel manufactured by or for or with the approval of and/or connected in the course of trade with the Plaintiffs and each of them; (b) has passed off and is continuing to pass off its business as and for a business of and/or approved by and/or connected with the business or businesses of the Plaintiffs and each of them; (c) has enabled and is enabling the Defendant's said apparel and business to be passed off as the goods and business of or connected with the Plaintiffs and each of them.

The plaintiffs claim, by par. A of the prayer for relief, injunctions restraining the defendant -

(1) from manufacturing distributing offering for sale supplying or selling or causing to be manufactured distributed offered for sale supplied or sold in Australia any items of apparel or other goods under or bearing or in relation to the trade marks (as defined in paragraph 9 hereof) or any one or more of them or any other name or mark deceptively similar to the said trade marks or any of them;

(2) from engaging in the course of the business of the manufacture distribution supply or sale of any items of apparel in conduct that is misleading or deceptive or likely to mislead or deceive;

(3) from representing in the course of the aforesaid business and in connection with the supply or possible supply of any items of apparel that any such apparel has the sponsorship or approval of the Plaintiffs or either of them and from representing that the Defendant has the sponsorship or approval of or is affiliated with the Plaintiffs or either of them;

(4) from passing off or enabling to be passed off any items of apparel or other goods not of the manufacture or merchandise of or connected in the course of trade with the Plaintiffs or either of them as and for goods of or connected in the course of trade with the Plaintiffs or either of them;

(5) from passing off or enabling to be passed off the business or any business of the Defendant as and for a business connected or associated with or approved by the Plaintiffs or either of them.

They claim further relief, including damages, the details of which are immaterial.

The defence contains the assertion that the Federal Court has no jurisdiction or power to grant relief in respect of passing off. This Court has ordered, on the application of the Attorney-General of Victoria, that so much of the cause pending in the Federal Court as comprises the claim or claims referred to in par. 15 of the statement of claim, and which is or are the subject of the relief sought by par. A (4) and (5) of the prayer for relief in the statement of claim, be removed into this Court pursuant to s. 40(1) of the Judiciary Act and there has been referred the following question: Does the Federal Court of Australia have jurisdiction in respect of that part of the proceeding in the Federal Court of Australia so removed?

In the second case the applicant is the United States Surgical Corporation and the respondents are Hospital Products International Pty. Ltd., Alan Blackman, Jamie Blackman, Irving Blackman and Barry Silverman. The material allegations in the statement of claim, briefly stated, are as follows. The applicant (a United States corporation) has invented and manufactured and sells products for use in surgery and is the owner of the copyright in a manual entitled "Stapling Techniques General Surgery". The second respondent (Alan Blackman) was employed by the applicant and entrusted with confidential information. By an agreement made on 27 December 1978 the applicant appointed Alan Blackman as its exclusive Australian distributor. In February 1979 the first respondent (Hospital Products), a company of which Alan Blackman is a director, was by a novation substituted for Blackman in that agreement and became the sole distributor of the applicant in Australia and was entrusted with confidential information the property of the applicant. The other three respondents, former employees of the applicant to whom confidential information had been entrusted, were employed by Hospital Products. On 25 December 1979 Hospital Products terminated its distribution agreement with the applicant. It is alleged in par. 17 of the statement of claim as follows:

Hospital Products, fraudulently and in breach of the Hospital Products distributorship agreement and in breach of the applicant's confidence has engaged in the following unfair trading and misleading and deceptive conduct. Particulars are then given, of which it is sufficient to mention some examples: the conduct complained of includes marketing products deceptively similar to those of the applicant, using a book copied substantially from the applicant's manual, using the applicant's products or the names of those products to solicit sales for the respondent's imitation products, marketing as its own products the applicant's products which have been physically modified in a way rendering them defective and dangerous for surgical use, marketing the respondent's imitation products which are inferior to those of the applicant as purported exact copies of the applicant's products, using a name which is a colourable imitation of the applicant's name, after 25 December 1979 representing to purchasers of equipment that it remained the Australian distributor of the applicant's products and wrongfully making use of lists of or knowledge of the applicant's customers. It is further alleged by par. 18 that the public has been, is and is likely to be deceived and misled by the aforesaid practices of Hospital Products. A further allegation, made by pars 19 and 20 of the statement of claim, is that in connexion with the supply or possible supply or promotion of its goods the respondents have made representations which were made fraudulently, and are false, misleading and deceptive and likely to mislead and deceive. Particulars of those representations are given; it is alleged that it was represented that the respondent's imitation products are new, safe, suitable for use with the applicant's products, interchangeable with the applicant's products, equal in quality, standard or grade to the applicant's products, approved by the applicant, sterile and adequately packed, suitable for their purpose and of the respondent's own manufacture and have performance characteristics which they do not have, and that it was further represented that Hospital Products is sponsored or approved by or affiliated with the applicant. Paragraphs 21, 22 and 23 of the statement of claim read as follows:

21. In the premises Hospital Products has engaged and continues to engage in misleading and deceptive conduct and the individual respondents have aided and abetted, induced and been knowingly concerned in such conduct and continue so to do.

22. The overt acts of the respondents herein alleged were done pursuant to a conspiracy between the respondents to damage the applicant by breaching its confidence and by appropriating to Hospital Products the goodwill attached to the applicant's products and business and wrongfully to obtain for Hospital Products the actual and potential market which existed in Australia and elsewhere for the applicant's products.

23. In the premises Hospital Products has engaged in misleading and deceptive conduct, passing off and unfair competition to the detriment of the applicant and the individual respondents have aided and abetted, counselled, procured, induced, been knowingly concerned in, and have conspired with and in relation to the conduct of Hospital Products herein alleged.

The claims are somewhat lengthy but it is necessary to set them out in full; they are as follows:

(i) Injunctions including interim and interlocutory injunctions to restrain the respondents and each of them whether by itself or himself or by its or his servants or agents or otherwise directly or indirectly from engaging in misleading or deceptive conduct and from aiding or abetting, counselling, procuring, inducing, being knowingly concerned in and conspiring in relation to such conduct.

(ii) At the applicant's option, an account of profits;

(iii) Damages including exemplary or aggravated damages;

(iv) Injunctions including interim and interlocutory injunctions to restrain the respondents and each of them whether by itself or himself or by its or his servants or agents or otherwise directly or indirectly from reproducing, using or publishing to other persons or authorising the reproduction, use or publication of the applicant's manual or of the confidential information the property of the applicant or any subsequent part thereof in any material form whatsoever;

(v) Injunctions including interim and interlocutory injunctions to restrain the respondents and each of them whether by itself or himself or by its or his servants or agents or otherwise directly or indirectly from using, enjoying, utilising, employing, applying, exploiting or communicating the applicant's manual or confidential information the property of the applicant;

(vi) Orders for delivery upon oath to the applicant of all copies of the applicant's manual and all documents embodying the applicant's copyright and all documents embodying confidential information the property of the applicant which are in the respondent's possession or control;

(vii) Injunctions including interim and interlocutory injunctions to restrain the respondents and each of them whether by itself or himself or by its or his servants or agents or otherwise directly or indirectly from manufacturing, selling, offering for sale or disposing of any products which imitate or copy the applicant's products;

(viii) Injunctions including interim and interlocutory injunctions to restrain the respondents and each of them whether by itself or himself or by its or his servants or agents or otherwise directly or indirectly from authorising the manufacture of products in accordance with the applicant's design;

(ix) Injunctions including interim and interlocutory injunctions to restrain the respondents and each of them whether by itself or himself or by its or his servants or agents or otherwise directly or indirectly from passing off its or his goods or its or his business as the applicant's goods or business and from passing off the applicant's goods or business as its goods or business;

(x) Injunctions including interim and interlocutory injunctions to restrain the respondents and each of them whether by itself or himself or by its or his servants or agents or otherwise directly or indirectly from marketing surgical stapling equipment which is unsuitable for its intended purpose;

(xi) Orders that the business assets and goodwill of the first respondent be assigned and made over to the applicant and that the other respondents do all things necessary for that purpose.

(xii) Orders for delivery up of all customer lists and unfilled orders for goods of any type similar to those manufactured by the applicant.

Defences have been delivered by the first, second and fifth respondents and each includes the assertion that except to the extent to which the action involves a claim for damages and injunctions pursuant to the Trade Practices Act 1974 Cth, as amended, the action is not within the jurisdiction of the Federal Court. On the application of the Attorney-General of the Commonwealth, this Court has ordered under s. 40(1) of the Judiciary Act that that part of the cause which raises the question of the jurisdiction of the Federal Court to entertain the whole of the proceedings in that court be removed into this Court.

From this account of the pleadings it will be seen that the case for the plaintiffs Philip Morris Incorporated and Philip Morris Ltd. is that one set of circumstances - namely the facts alleged in par. 12 of the statement of claim - gives to the plaintiffs a right to relief on four distinct legal grounds, viz., (1) that there has been an infringement by the defendant of the plaintiffs' "trade marks" (that expression being used in the wide sense given to it by par. 9 of the statement of claim); (2) that the defendant has engaged in conduct that is misleading or deceptive or is likely to mislead or deceive; (3) that the defendant has made false representations; and (4) that the defendant has passed off its goods or business as the plaintiffs' goods or business. No challenge is made to the jurisdiction of the Federal Court with respect to the first of these grounds, which need not be further discussed. The second and third grounds are, in effect, that the defendant has contravened the provisions of ss. 52 and 53 of the Trade Practices Act 1974, and, as will appear, it could not be suggested that the Federal Court lacks jurisdiction to entertain the proceedings in so far as they are brought to obtain an injunction to restrain such a contravention or damages for such a contravention. The question is whether the Federal Court has jurisdiction with respect to the claim for passing off, which finds its legal foundation in the common law, but which rests on the same alleged facts as those which are claimed to give a right to relief under the Trade Practices Act.

In the case brought by the United States Surgical Corporation, the statement of claim makes it far from clear on what grounds the relief claimed is sought, and what are the allegations of fact which support the respective claims. It is clearly enough alleged that the defendants have engaged in misleading and deceptive conduct, and have made false representations, and these allegations, if made out, would establish contraventions of ss. 52 and 53 of the Trade Practices Act. In addition, it appears to be alleged that the defendants have been guilty of passing off, unfair competition, breach of confidence and conspiracy, and possibly also of fraud, breach of contract and breach of copyright. The form of the pleading superficially suggests that the acts of the defendants which amounted to the breaches of the Trade Practices Act (viz., those alleged in pars 17-20 of the statement of claim) also entitle the applicant to judgment on each of the other legal grounds except conspiracy, and were the overt acts done pursuant to the conspiracy. However, notwithstanding the form of the pleading, it is apparent that the alleged facts which constitute a contravention of the Trade Practices Act - that is, the engaging in misleading or deceptive conduct and the making of false representations - are not enough in themselves to entitle the applicant to succeed in an action for breach of confidence, breach of contract, infringement of copyright, fraud or conspiracy. To make out a cause of action of any of those kinds it would be necessary to prove further facts - to show, for example, the existence of a confidential relationship, the making of a contract, the possession of the copyright, the fraudulent intention, or the making of the agreement necessary to establish a conspiracy. Some, at least, of the claims which are made at common law rest on alleged facts different from or additional to those which give rise to the claims under the Trade Practices Act, and some of the relief sought is of a kind that could not be obtained in proceedings under that Act.

The Federal Court of Australia Act 1976 Cth, as amended, which creates the Federal Court of Australia, does not completely define the jurisdiction of that Court. Section 19 (1) of that Act provides:

The Court has such original jurisdiction as is vested in it by laws made by the Parliament, being jurisdiction in respect of matters arising under laws made by the Parliament. The law made by the Parliament which vests in the Federal Court the jurisdiction which is relevant for present purposes is the Trade Practices Act. As has already been pointed out, in both the cases now before this Court it is alleged that there has been a contravention of ss. 52 and 53 of the Trade Practices Act. Those sections appear in Pt V of that Act. By s. 80 of that Act, the Federal Court of Australia (the "Court" within the meaning of the Act) may, on the application of the Minister, the Trade Practices Commission or (with an immaterial exception) any other person, grant an injunction restraining a person from engaging in conduct that constitutes or would constitute (inter alia) a contravention of a provision of Pt V, and by s. 82 a person who suffers loss or damage by conduct of another person that was done in contravention of a provision of (inter alia) Pt V may recover the amount of the loss or damage by action against that other person or against any person involved in the contravention. Section 86 of that Act then provides: Jurisdiction is conferred on the Court to hear and determine actions, prosecutions and other proceedings under this Part and that jurisdiction is exclusive of the jurisdiction of any other court, other than the jurisdiction of the High Court under section 75 of the Constitution. Sections 80, 82 and 86 all lie within Pt VI of the Act. The effect of these provisions clearly is that the Federal Court in the present case has jurisdiction to hear and determine the actions in so far as they involve claims for injunctions restraining the contravention of ss. 52 and 53 of the Trade Practices Act or for damages suffered as a result of any such contravention. The actions are, to that extent at least, in respect of matters arising under a law made by the Parliament, namely the Trade Practices Act.

The argument that the Federal Court has jurisdiction to determine all the issues arising in the actions - including questions that if they had stood alone could not possibly be said to be within the jurisdiction of a federal court to decide - was supported on two main grounds. First it was argued that once the jurisdiction of the Federal Court is attracted in a matter arising under the Trade Practices Act, the jurisdiction extends to enable the court to deal with all questions necessary finally to dispose of the case, unless those questions are entirely severable. This was another way of saying that a matter arising under the Trade Practices Act includes questions which by themselves would not have arisen under that Act. Secondly, it was said that all the matters which did not arise under the Trade Practices Act were at least associated with matters which did arise under that Act, and that s. 32 (1) of the Federal Court of Australia Act validly conferred jurisdiction in respect of them. A further argument, of less importance, was advanced, namely that s. 22 of the Federal Court of Australia Act conferred jurisdiction. Since this last mentioned argument does not, on the view that I take, involve any constitutional question, it is convenient to deal with it immediately.

The Court shall, in every matter before the Court, grant, either absolutely or on such terms and conditions as the Court thinks just, all remedies to which any of the parties appears to be entitled in respect of a legal or equitable claim properly brought forward by him in the matter, so that, as far as possible, all matters in controversy between the parties may be completely and finally determined and all multiplicity of proceedings concerning any of those matters avoided. Section 22 reproduces, with immaterial variations, the provisions of s. 43 of the Supreme Court of Judicature (Consolidation) Act 1925 U.K. which itself derives from s. 24 (7) of the Judicature Act 1873 U.K., whose provisions have been reproduced with or without amendment in subsequent enactments in the States of Australia as well as in s. 32 of the Judiciary Act. The provision, which has been considered in a number of authorities, has been said to mean "that whenever a subject of controversy arises in an action which can conveniently be determined between the parties to the action, the court should, if possible, determine it so as to prevent further and needless litigation": In the Goods of Tharp [5] . In other words, it gave effect to a fundamental principle of the Judicature Act procedure, the avoidance of a multiplicity of proceedings. It has been said, and no doubt rightly, that having regard to the nature and purposes of the provision, it should be construed liberally: Roberts v. Gippsland Agricultural and Earth Moving Contracting Co. Pty. Ltd. [6] ; McLeish v. Faure [7] . Nevertheless the provision does not appear ever to have been regarded as conferring jurisdiction, rather than power, on the court, and in The "James Westoll" [8] , it was held that the sub-section "only enables the High Court and every branch of it to give effect to all the remedies which the parties were, in the language of the Act, entitled to - that is to say, as could have been given by any court which was made a member of the High Court by the Judicature Act", and that it did not confer jurisdiction upon the High Court to make an order which no court had power to make prior to the Judicature Act. Not only does the history of s. 22 suggest that it deals with power and not with jurisdiction, but the language of the section is in marked contrast to that of s. 32 (1) which expressly confers jurisdiction on the Federal Court, and does so only to the extent that the Constitution permits, thus recognizing the problems of constitutional validity that may arise when jurisdiction is vested in a federal court. Section 22 applies only "in every matter before the Court"; in other words, it is assumed that there is a matter which the Federal Court has jurisdiction to hear and determine, and the section, on that assumption, gives the court the power and imposes on it the duty to dispose of the matter completely and finally. It was submitted in argument on behalf of the Philip Morris companies that the reference in the section to "a legal or equitable claim" supports the view that the section intends to confer on the Federal Court jurisdiction to give relief, however the entitlement to that relief may arise, since if the provision were speaking only of remedies under a law of the Commonwealth, the claims would be statutory rather than legal or equitable. The use of the expression "legal or equitable claim" is sufficiently explained by the legislative history of the section, but in any case those words are used only in respect of a claim "properly brought forward in the matter", that is, in a matter in respect of which the court already has jurisdiction. There is simply nothing in the section that suggests that it is intended to confer on the Federal Court jurisdiction rather than power, and its position in the Act, between ss. 21 and 23, which give the court power to make declarations and orders of particular kinds, supports the view that it is one of a group of sections intended to grant to the Federal Court ample powers to make its jurisdiction effective, rather than to increase the jurisdiction itself. For these reasons I conclude that s. 22 has nothing to say as to jurisdiction and is of no relevance in the present case. 1. (1878) 3 P.D. 76, at p. 81. 2. [1956] V.L.R. 555, at pp. 564-565. 3. (1979) 25 A.L.R. 403, at pp. 413-414. 4. [1905] P. 47, at p. 51.

The two main arguments, already mentioned, which have been put forward in support of the view that the jurisdiction of the Federal Court in the present actions is wide enough to enable it to decide all the questions which arise, depend upon the meaning and effect of certain of the provisions of Ch. III of the Constitution. By s. 71 the judicial power of the Commonwealth is vested in the High Court, in such other federal courts as the Parliament creates, and in such other courts as it invests with federal jurisdiction. Sections 75, 76 and 77 provide as follows:

(ii) Affecting consuls or other representatives of other countries:

(iii) In which the Commonwealth, or a person suing or being sued on behalf of the Commonwealth, is a party:

(iv) Between States, or between residents of different States, or between a State and a resident of another State:

(v) In which a writ of Mandamus or prohibition or an injunction is sought against an officer of the Commonwealth:

76. The Parliament may make laws conferring original jurisdiction on the High Court in any matter -

(i) Arising under this Constitution, or involving its interpretation:

(ii) Arising under any laws made by the Parliament:

(iv) Relating to the same subject-matter claimed under the laws of different States.

77. With respect to any of the matters mentioned in the last two sections the Parliament may make laws -

(i) Defining the jurisdiction of any federal court other than the High Court:

(ii) Defining the extent to which the jurisdiction of any federal court shall be exclusive of that which belongs to or is invested in the courts of the States:

(iii) Investing any court of a State with federal jurisdiction.

The express statement in these sections of the matters in respect of which and the courts by which the judicial power of the Commonwealth may be exercised is "clearly intended as a delimitation of the whole of the original jurisdiction which may be exercised under the judicial power of the Commonwealth, and as a necessary exclusion of any other exercise of original jurisdiction": In re Judiciary and Navigation Acts [9] ; see also Collins v. Charles Marshall Pty. Ltd. [10] ; Reg. v. Kirby; Ex parte Boilermakers' Society of Australia [11] and Attorney-General (Cth) v. The Queen [12] . The effect of these sections is that no jurisdiction may be conferred on any federal court created by the Parliament except in "matters" of the kinds described in ss. 75 and 76. It has been held in a number of cases that the word "matter" (or "matters") in ss. 75, 76 and 77 does not simply mean "legal proceeding". In In re Judiciary and Navigation Acts, it was said [13] that the word "matter" is used in ss. 73, 74, 75, 76 and 77 of the Constitution with the same meaning and that it does not mean a legal proceeding "but rather the subject matter for determination in a legal proceeding". This view (at least so far as it concerns ss. 75, 76 and 77) has since been accepted in Carter v. Egg & Egg Pulp Marketing Board (Vict.) [14] ; Collins v. Charles Marshall Pty. Ltd. [15] and Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. [16] . Accordingly, as Latham C.J. said in Carter v. Egg & Egg Pulp Marketing Board (Vict.) [17] : "A single legal proceeding may involve several matters in an ordinary sense of that word - as when several claims are joined in one action." Latham C.J. went on to say that if "matter" in these sections were interpreted to mean "a legal proceeding" absurd results would follow. 1. (1921) 29 C.L.R. 257, at p. 265. 2. (1955) 92 C.L.R. 529, at p. 540. 3. (1956) 94 C.L.R. 254, at pp. 269-270. 4. (1957) 95 C.L.R., at p. 538; [1957] A.C., at p. 313. 5. (1921) 29 C.L.R., at pp. 265-266. 6. (1942) 66 C.L.R. 557, at pp. 578-580, 587, 602. 7. (1955) 92 C.L.R., at pp. 540, 541-542. 8. (1980) 145 C.L.R. 457. 9. (1942) 66 C.L.R., at p. 578.

To say that "matter" does not mean "proceeding" is not inconsistent with the statement that "matters" is "the widest term to denote controversies which might come before a Court of Justice": see South Australia v. Victoria [18] . It is immaterial, for constitutional purposes, by what form of procedure the "matter" is brought before the court. If the matter in controversy answers one of the descriptions contained in ss. 75 and 76, a federal court may be invested with jurisdiction to determine it, whatever kind of procedure is prescribed. But there can be no jurisdiction except in a "matter" of the requisite kind.

In Carter v. Egg & Egg Pulp Marketing Board (Vict.) [19] Latham C.J. pointed out that the meaning of "matter" will be affected by the context in which it appears. He said:

Thus, in s. 75 (i.) a "matter arising under a treaty" is described by reference to the character of the controversy between the parties, whoever they may be. The nature of the questions involved in a proceeding would determine whether the High Court had jurisdiction under this provision. But s. 75 also applies to "matters (ii.) Affecting consuls or other representatives of other countries: (iii.) In which the Commonwealth, or any person suing or being sued on behalf of the Commonwealth, is a party: (iv.) Between States, or between residents of different States, or between a State and a resident of another State: (v.) In which a writ of Mandamus or prohibition or an injunction is sought against an officer of the Commonwealth." In these cases the nature of the "matter" is determined, not by the character of the controversy, but in (ii.), (iii.) and (iv.) entirely and in (v.) partly by the identity of a party or of the parties to the controversy. Thus the High Court has original jurisdiction, for example, whenever the Commonwealth sues or is being sued. In such a case the Court has jurisdiction in the legal proceeding, whatever the nature of the claim made or of the defence raised, simply because the Commonwealth is a party to the proceeding. The important provision in the present case is s. 76 (i.): "any matter arising under this Constitution, or involving its interpretation." In this instance, the significant element is that the matter in controversy between the parties, whoever they may be, must itself arise under the Constitution or involve its interpretation. It is only in respect to such a matter that the Court will have jurisdiction under s. 76 (i.). In the case of the two proceedings removed into this Court, the Federal Court has jurisdiction only in respect of matters arising under a law of the Parliament. The nature of the controversy will determine whether the Court has jurisdiction. 1. (1942) 66 C.L.R., at p. 579.

The Constitution gives no power to confer jurisdiction on a federal court in respect of a matter simply because it is associated with any of the matters mentioned in ss. 75 and 76, however, close the association may be. Either the associated matter is itself a matter of a kind mentioned in s. 75 or s. 76, or it is not. If it is, s. 77 (i.) enables the Parliament to confer jurisdiction on a federal court in respect of that matter. If it is not, a federal court cannot be given jurisdiction in respect of it. In this regard the words of Ch. III are quite unambiguous. They provide "a notable but very evident example" of the principle of interpretation that "affirmative words appointing or limiting an order or form of things may have also a negative force and forbid the doing of the thing otherwise": Reg. v. Kirby; Ex parte Boilermakers' Society of Australia [20] . The consequence that jurisdiction may not be conferred on a federal court in matters which are associated with matters within jurisdiction, but which are not themselves of a kind described in s. 75 or s. 76, is not necessarily inconvenient, for it is possible to invest with federal jurisdiction the State courts which already possess plenary jurisdiction in other respects.

The provisions of s. 51 (xxxix.) of the Constitution do not empower the Parliament to confer jurisdiction on a federal court. Under s. 51 (xxxix.) the Parliament may make laws with respect to "Matters incidental to the execution of any power vested by this Constitution in the Federal Judicature ". I shall assume, without deciding, that a jurisdiction invested by a law of the Parliament in a federal court created by the Parliament is a "power vested by this Constitution in the Federal Judicature". On that assumption, the Parliament may validly legislate with respect to matters which arise in the exercise of such jurisdiction, but there is nothing in par. (xxxix.) which authorizes the Parliament to make laws extending the jurisdiction of a federal court beyond the limits marked out by ss. 75-77. In Attorney-General v. The Queen, Viscount Simonds, delivering the judgment of the Judicial Committee, said [1] :

It is to Ch. III alone that the Parliament must have recourse if it wishes to legislate in regard to the judicial power. That Chapter is in its terms detailed and exhaustive, and their Lordships dissent from the contention sometimes explicitly, sometimes implicitly, advanced that, inasmuch as there is no express prohibition of other legislation in this field, it is open to the Parliament to turn from Ch. III to some other source of power. Of course, this statement needs to be qualified with reference to s. 122. But so far as it states the position in relation to federal courts it is supported not only by the words and framework of the Constitution, but also by the authority of this Court: see In re Judiciary and Navigation Acts [2] ; Le Mesurier v. Connor [3] ; R. v. Federal Court of Bankruptcy; Ex parte Lowenstein [4] and Willocks v. Anderson [5] , where it was said: Section 51 (xxxix.) of the Constitution enables laws to be made with respect to matters incidental to the execution of any power vested by the Constitution in the Federal Judicature, but does not authorize Parliament to make laws conferring jurisdiction on a Court forming part of the Federal Judicature. 1. (1957) 95 C.L.R., at p. 538; [1957] A.C., at pp. 312-313. 2. (1921) 29 C.L.R., at p. 265. 3. (1929) 42 C.L.R. 481, at pp. 497-498. 4. (1938) 59 C.L.R. 556, at p. 587. 5. (1971) 124 C.L.R. 293, at p. 299.

It is now possible, in the light of this discussion, to consider the effect of s. 32 (1) of the Federal Court of Australia Act. That sub-section provides as follows:

To the extent that the Constitution permits, jurisdiction is conferred on the Court in resect of matters not otherwise within its jurisdiction that are associated with matters in which the jurisdiction of the Court is invoked. It follows from what has already been said that this sub-section cannot validly confer on the Federal Court jurisdiction in respect of matters other than those enumerated in ss. 75 and 76. However, the sub-section is capable of some valid operation. It is expressed to operate to the extent that the Constitution permits, and the Constitution does permit a valid law to be made investing the Federal Court with jurisdiction in respect of matters not otherwise within its jurisdiction that are associated with matters in which the jurisdiction of the Court is invoked, provided that the former matters are matters of a kind mentioned in s. 75 or s. 76. As has been seen, the jurisdiction of the Federal Court may be invoked in a matter arising under the Trade Practices Act. Once the jurisdiction of the Court is so invoked, its jurisdiction is extended by s. 32 (1) to associated matters which arise under other laws made by the Parliament, even though the Parliament has not (except by s. 32 (1)) conferred jurisdiction on the Court in respect of those matters. For example, an action for infringement of copyright is a matter arising under a law of the Commonwealth, namely the Copyright Act 1968 Cth, as amended, but no original jurisdiction has been conferred upon the Federal Court in respect of such an action except by s. 32 (1). The effect of that sub-section is that jurisdiction is conferred on the Federal Court in respect of an action for infringement of copyright that is associated with matters otherwise within the jurisdiction of the Court.

The learned Solicitor-General for the Commonwealth contended that the sub-section has a wider operation, and that it confers on the Federal Court jurisdiction in associated matters in respect of which the Parliament is empowered to pass a law although no law, apart from s. 32 (1) itself, has actually been passed. For example, he submitted, s. 32 (1) gives the Federal Court jurisdiction to entertain an action against a trading corporation for passing off, because the Parliament might enact a law forbidding a trading corporation from engaging in passing off, although no such law has been enacted. His argument in effect was that s. 32 (1) performs the double function of conferring the rights or imposing the duties in respect of which a "matter" may arise and investing the Federal Court with jurisdiction in any such matter. It is true that a legislative enactment may be drafted so that both those results are achieved by the one provision: R. v. Commonwealth Court of Conciliation and Arbitration; Ex parte Barrett [6] ; Hooper v. Hooper [7] . With all respect, however, I find it impossible to agree that s. 32 (1) is a provision of this kind. In my opinion it is intended to perform one function only, that is, to confer additional jurisdiction on the Federal Court. It reveals no trace of any intention to create substantive rights or duties. It applies only if there is a matter which arises under an existing federal law.

1. (1945) 70 C.L.R. 141, at pp. 154-155, 165-166. 2. (1955) 91 C.L.R. 529, at pp. 535-536.

It of course follows from what I have said that the further submission by the learned Solicitor-General that the sub-section extends to confer on the Federal Court jurisdiction to entertain a claim based on State law cannot be accepted. Such a claim would not give rise to a matter of a kind specified in s. 75 or s. 76. The sub-section confers additional jurisdiction only in matters of the kinds described in those sections of the Constitution, and only if those matters are associated with matters already within the jurisdiction of the Federal Court. The test of association is a very imprecise one on which to base jurisdiction, particularly when the degree of relationship necessary is not defined. Speaking generally it may be said that, given identity of parties, one matter is associated with another if the two matters arise out of substantially the same, or closely connected, facts. Fortunately the additional jurisdiction conferred by s. 32 (1) is not made exclusive, since in many cases it will require an extensive examination of the facts before it can be decided whether the sub-section operates to confer jurisdiction in a particular case.

For these reasons I have concluded that s. 32 (1) does not confer any additional jurisdiction on the Federal Court in the first of the two present cases, that brought by the Philip Morris companies. The claim that the defendant has passed off its goods or business as that of the plaintiffs does not give rise to a matter in respect of which jurisdiction could be conferred on a federal court; s. 32 (1) therefore has no application to it. In the proceedings brought by United States Surgical Corporation, s. 32 (1) may give the Federal Court jurisdiction to entertain the claim for infringement of copyright, if in truth such a claim is made in the proceedings, provided that it is associated with the matters arising under the Trade Practices Act. In those proceedings the sub-section confers no jurisdiction in respect of the other matters which arise under State law.

It remains to consider the first argument by which the jurisdiction of the Federal Court was supported. The question that arises is whether, and in what circumstances, the jurisdiction of the Federal Court, once attracted in respect of a matter arising under a law of the Parliament, is wide enough to enable the Court to decide questions which it would clearly have no jurisdiction to entertain if made in separate proceedings. The Court can only do so if those questions form part of the matter which attracts jurisdiction.

"It is a fundamental principle of the Constitution that everything necessary to the exercise of a power is included in the grant of a power": Baxter v. Ah Way [8] . This principle applies to judicial as well as to legislative and executive power. Accordingly it has been held that where the High Court is invested with jurisdiction to determine a matter of a particular kind, the Court "is clothed with full authority essential for the complete adjudication of the matter": R. v. Bevan; Ex parte Elias and Gordon [9] , per Starke J. But this does not mean that a federal court has jurisdiction to make a complete adjudication of any legal proceeding which involves a matter of the requisite kind and other matters as well. If the jurisdiction extended so wide, it would mean that a party could, by joining a number of matters in one proceeding, enlarge at will the jurisdiction of the federal court beyond the limits explicitly defined by the Constitution. The restrictions imposed by ss. 75-77 of the Constitution cannot be evaded in that way. It is necessary, in every case where a question of this kind arises, to decide what is the subject matter for determination that constitutes the "matter" which attracts jurisdiction. Such a matter may involve a number of questions not all of which in themselves are of a kind described in s. 75 or s. 76, and the court having jurisdiction may deal with all of those questions. For example, a claim that a levy made under a State enactment is a duty of excise gives rise to a matter arising under the Constitution or involving its interpretation within s. 76(i.). If, in proceedings brought in the High Court to establish such a claim, the question arises whether the levy is invalid because it includes a class wider than that permitted by the State legislation, the Court has jurisdiction to decide the question, although it is governed by State law, because upon it depends the question whether there is a State imposition which would be effectual but for the Constitution; if it is authorized by State law its validity depends on s. 90 of the Constitution, whereas if it is not authorized by State law it does not impose an excise: see Parton v. Milk Board (Vict.) [10] , per Dixon J. The Constitution cannot have been intended to have the result that what is in truth one matter for determination should have to be decided piecemeal in two courts, because, although of a kind described in s. 75 or s. 76, it has some State aspects.

1. (1909) 8 C.L.R. 626, at p. 637. 2. (1942) 66 C.L.R. 452, at p. 465. 3. (1949) 80 C.L.R. 229, at p. 257.

The principle is exemplified by a number of cases concerning the jurisdiction of this Court under s. 76 (i.). The most instructive of those decisions is Carter v. Egg & Egg Pulp Marketing Board (Vict.) [11] . In that case the plaintiff combined three causes of action; he sought (1) declarations that a Victorian statute was invalid on constitutional grounds; (2) a declaration that a regulation made under the statute was invalid on the same constitutional grounds or alternatively on the ground that it was unreasonable [12] and (3) an account on the basis that the statute was valid. The Court held that it had jurisdiction to entertain the first and second causes of action, but not the third, which was based entirely on State legislation and which Latham C.J. described [13] as "an entirely severable claim having no relation whatever to another claim or claims made in the same proceeding which other claim or claims alone involved the interpretation of the Constitution". Starke J. said [14] :

Consequently a matter involving the interpretation of the Constitution is a subject for judicial determination in which some right duty or liability of a party is to be established which may involve the interpretation of the Constitution. If there be such a matter then, as I said in R. v. Bevan [15] , the jurisdiction of this Court is attracted and it has full authority for the complete adjudication of the matter and not merely the interpretation of the Constitution. And once that jurisdiction is acquired it is not lost by reason of the rejection of the constitutional point. But there must be a matter, a cause of action, in the sense indicated, and not merely a legal proceeding in which the interpretation of the Constitution arises in respect of some matters or causes of action. The jurisdiction of this Court is not attracted to matters or causes of action arising in a legal proceeding which cannot involve the interpretation of the Constitution.

The statement of claim in the present case alleges two distinct matters or causes of action, one based upon the invalidity of the Marketing of Primary Products Acts and the Regulations made thereunder, which involves the interpretation of the Constitution; the other based upon the validity of the Acts and Regulations and the non-performance of their provisions, which does not involve the interpretation of the Constitution. In the former case this Court has jurisdiction to adjudicate upon it completely, including the reasonableness of reg. 37 and not merely the interpretation of the Constitution. In the latter case this Court has no original jurisdiction whatever to adjudicate upon the matter.

Williams J. said [16] : Previous decisions of this Court, several of which are referred to in R. v. Bevan [17] , have established that a constitutional question arises when its determination becomes necessary upon the ascertained or asserted facts of the case. In other words, whenever there is woven across the warp of the facts constituting a cause of action the woof of a constitutional question, this Court has original jurisdiction to determine the whole of that cause of action. 1. (1942) 66 C.L.R. 557. 2. (1942) 66 C.L.R., at p. 599. 3. (1942) 66 C.L.R., at p. 580. 4. (1942) 66 C.L.R., at pp. 586-587. 5. (1942) 66 C.L.R., at p. 465. 6. (1942) 66 C.L.R., at p. 602. 7. (1942) 66 C.L.R. 452.

Accordingly, there is one matter of the kind referred to in s. 76 (i.) when an applicant for habeas corpus contends that his detention is unlawful on the ground that the statute under which he is held is unconstitutional, and on the further ground that the procedure prescribed by that statute has not been followed: R. v. Carter; Ex parte Kisch [18] and see R. v. Bevan; Ex parte Elias and Gordon [17] . Similarly there is one matter of the kind referred to in that paragraph when the plaintiff challenges the validity of an impost on the ground that it is a duty of excise and unconstitutional and on the further ground that it is not authorized by the statute under which it was intended to be imposed: Hopper v. Egg & Egg Pulp Marketing Board (Vict.) [19] ; Parton v. Milk Board (Vict.) [20] . In these cases the court has jurisdiction to decide the whole matter although the constitutional point is held to be lacking in substance, provided that the allegation that there has been a contravention of the Constitution was genuinely made and is not merely colourable: see Hopper v. Egg & Egg Pulp Marketing Board (Vict.) [21] . It appears from these decisions that where a party claims that in a particular set of circumstances he is entitled to relief of a particular kind, the fact that his claim is based on several legal grounds does not mean that there is more than one matter in controversy. On the other hand, if a party claims that a State law is invalid, but also claims in the alternative relief on the footing that it is valid, the proceedings will involve two distinct matters, and the fact that the court has jurisdiction to determine one of them does not mean that it can determine the other: see Carter v. Egg & Egg Pulp Marketing Board (Vict.) [22] and Airlines of N.S.W. Pty. Ltd. v. New South Wales [23] . In the last mentioned case the Court dealt with a number of questions, the answers to which depended on whether a State statute was invalid as inconsistent with Commonwealth legislation, but refused to answer a further question as to the true construction of the State statute [24] .

1. (1934) 52 C.L.R. 221. 2. (1942) 66 C.L.R. 452. 3. (1939) 61 C.L.R. 665. 4. (1949) 80 C.L.R. 229. 5. (1939) 61 C.L.R., at pp. 673, 677, 681. 6. (1942) 66 C.L.R. 557. 7. (1964) 113 C.L.R. 1. 8. (1964) 113 C.L.R., at p. 30.

The cases to which I have referred show that if a party claims relief on two different legal grounds, but the facts on which the relief is sought on each ground are identical, and the relief sought on each ground is the same in substance if not in form, there is only one matter for determination. This seems to me correct in principle and convenient in practice, and there is no reason for taking any different view if the question arises in relation to s. 76 (ii.) from that which the cases have taken in relation to s. 76 (i.). Then it becomes necessary to decide whether the matter is of the requisite kind. The cases under s. 76 (i.) show that a matter involves the interpretation of the Constitution although one ground on which the case might be decided has nothing whatever to do with the Constitution. Thus in R. v. Carter; Ex parte Kisch [25] the question whether the procedure prescribed by the Act had been followed did not itself involve the interpretation of the Constitution, nor did the question which arose in the excise cases, whether the impost was authorized by the State Act, itself involve the interpretation of the Constitution. Nevertheless in those cases the matter did directly raise for decision the question involving the interpretation of the Constitution. Similarly, I consider, if one of the grounds on which a claim is based is that a right, duty or immunity arises under a Commonwealth Act then (provided that the claim is genuinely made) the matter may properly be given the character of a matter arising under a law of the Parliament, although the same right, duty or immunity is claimed also to arise under State law on the same facts.

The principle established by these cases is very similar to that which was formerly applied in the United States, and which was stated in Hurn v. Oursler [26] as follows:

The distinction to be observed is between a case where two distinct grounds in support of a single cause of action are alleged, one only of which presents a federal question, and a case where two separate and distinct causes of action are alleged, one only of which is federal in character. In the former, where the federal question averred is not plainly wanting in substance, the federal court, even though the federal ground be not established, may nevertheless retain and dispose of the case upon the non-federal ground; in the latter it may not do so upon the non-federal cause of action. In the United States a wider test has since been applied as a result of the decision in United Mine Workers of America v. Gibbs [27] . The test there suggested is that the claims should "derive from a common nucleus of operative fact" and must be such that the plaintiff would ordinarily be expected to try them all in one judicial proceeding. That in my opinion is not a test which is warranted by Ch. III of our Constitution. It gives insufficient weight to the guiding principle that the court has jurisdiction only in matters of the kind particularly described. 1. (1933) 289 U.S. 238, at p. 246 [77 Law Ed. 1148, at p. 1154]. 2. (1966) 383 U.S. 715 [16 Law. Ed. 2d 218].

The recent decision of this Court in Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. [28] is in conformity with the principles that I have endeavoured to state, but is not, I think, authority for any wider view. The question that there arose was whether the Supreme Court was exercising federal jurisdiction within s. 39 of the Judiciary Act. Although the applicant's case was based on contract, trust or fiduciary obligation, issues arising under a law of the Commonwealth (the Trade Marks Act 1955) were raised directly for decision on the pleadings, in the relief sought and in the presentation of the applicant's case. The decision that the Supreme Court was exercising federal jurisdiction provides no authority for the view that the jurisdiction of a federal court extends beyond the matters described in ss. 75 and 76 of the Constitution or is attracted to associated matters not themselves within jurisdiction.

I may now proceed to apply these principles to the present proceedings. In the action brought by the Philip Morris companies the plaintiffs base their claims to relief on identical facts. Substantially the same remedy is sought for the alleged passing off as for the alleged contraventions of the Trade Practices Act; the injunctions claimed are different in form but substantially the same in effect. In these circumstances, the fact that the relief is sought on two separate legal grounds does not mean that there is more than one matter for determination. It is a matter which the Federal Court has jurisdiction to determine.

On the other hand the proceedings brought by the United States Surgical Corporation comprise a number of different matters. A variety of relief is sought on different legal grounds, and the various claims are based on different facts. The Federal Court has of course jurisdiction to determine the matters arising under the Trade Practices Act. It will in addition have jurisdiction to determine the passing off claim if based on facts identical to those on which the claims under the Trade Practices Act are based. If the proceedings raise a matter under the Copyright Act, it will fall to the Federal Court to decide whether that matter is associated with the matters arising under the Trade Practices Act within the meaning of s. 32 (1) and if it is so associated the Federal Court will have jurisdiction. That Court has however no jurisdiction in respect of the other matters raised in those proceedings.

Philip Morris Incorporated v. Adam P. Brown Male Fashions Pty. Ltd.

I would answer the question: Does the Federal Court of Australia have jurisdiction in respect of that part of the proceeding in the Federal Court of Australia removed into this Court, Yes.

I would remit the proceedings to the Federal Court to enable it to proceed in accordance with this answer.

United States Surgical Corporation v. Hospital Products International Pty. Ltd.

I would answer the question raised as follows: The Federal Court has jurisdiction to entertain the action in so far as it involves (1) claims for damages or an injunction pursuant to the Trade Practices Act and (2) a claim for an injunction to restrain the respondents from passing off if such claim is based on facts identical with those on which the claims under the Trade Practices Act are based and (3) a claim for infringement of copyright which is associated with a matter arising under the Trade Practices Act in which the jurisdiction of that court is invoked. Except as aforesaid the action is not within the jurisdiction of the Federal Court.

I would remit the proceedings to the Federal Court to enable it to proceed in accordance with this answer.

In each of these cases, which were argued together, I have had the advantage of reading the reasons for judgment of Mason J. In each case I agree with the conclusion to which his Honour has come and with the reasons for that conclusion. I accordingly agree with the orders which he proposes in each case.

Philip Morris Incorporated v. Adam P. Brown, Male Fashions Pty. Ltd.

To what extent, if at all, can the Commonwealth Parliament confer jurisdiction on a federal court to hear and determine a claim for relief based in non-federal law when that claim for relief is joined with a claim for relief based in federal law? This is the important issue which underlies this case. The answer to the question will have a marked impact on the jurisdiction of the Federal Court, on the scope of federally invested jurisdiction exercised by State courts and on the content of non-federal jurisdiction exercised by State courts.

Part of this action, which was pending in the Federal Court, has been removed into this Court under s. 40 of the Judiciary Act 1903, as amended. The part removed consists of "the claim or claims referred to in par. 15 of the Statement of Claim which is or are the subject of the relief sought by paragraphs A (4) and (5)" in the statement of claim. By the removal order there has been referred to a Full Court the following question: Does the Federal Court of Australia have jurisdiction in respect of that part of the proceeding in the Federal Court of Australia so removed?

The statement of claim alleges that the first plaintiff is the registered proprietor of three trade marks under the Trade Marks Act 1955 Cth, as amended, consisting of (a) the name "Marlboro", (b) "Marlboro" label, and (c) "Marlborough" and device. The first two marks are registered in Pt A of the Register in Class 34 in respect of cigarettes. The third mark is registered in Pt A in Class 25 in respect of men's and boys' wearing apparel. The plaintiffs allege that the second plaintiff has been a licensed user of the "Marlboro" marks, that the second plaintiff has carried on business under the trade name of "The Marlboro Company" in the course of which it has manufactured, advertised for sale and sold in large quantities cigarettes bearing the trade mark "Marlboro" contained in packets bearing the "Marlboro" mark and that it has extensively advertised, offered for sale and sold Marlboro Red cigarettes bearing the "Marlboro" mark in packets bearing the "Marlboro" mark and "Marlboro" label. It is also alleged that the second plaintiff has arranged, approved and authorized to be made and distributed by way of sale and gift many items of wearing apparel and other goods bearing one or more of the plaintiffs' trade marks.

The plaintiffs claim that the trade marks have become well known to the trade and the public in connexion with the plaintiffs' products and business. The plaintiffs charge that the defendant has manufactured and sold wearing apparel in Australia and, without the licence or approval of the plaintiffs, in the course of its business, has attached and is continuing to attach to items of wearing apparel marks identical with, or deceptively similar to, the plaintiffs' marks.

The plaintiffs' case is that by these acts the defendant has contravened s. 52 (1) of the Trade Practices Act 1974, as amended, in the course of its trade and commerce in that it

(a) has engaged and is continuing to engage in conduct that is misleading and/or deceptive; (b) has engaged and is continuing to engage in conduct that is likely to mislead and/or deceive.

The plaintiffs further claim that the defendant in the course of its trade and commerce has contravened s. 53 (c) and (d) of the Trade Practices Act in that it

(a) has represented and is representing that the said apparel has the sponsorship and/or approval of the Plaintiffs or one or other of them whereas none of such apparel had or has such sponsorship or approval; (b) has represented and is representing that the Defendant has the sponsorship and/or approval of and/or is affiliated with the Plaintiffs or one or other of them whereas the Defendant did not have and does not have such sponsorship or approval and was not and is not affiliated with the Plaintiffs or either of them.

By par. 15 the plaintiffs allege that the defendant

(a) has passed off and is continuing to pass off its said apparel as and for apparel manufactured by or for or with the approval of and/or connected in the course of trade with the Plaintiffs and each of them; (b) has passed off and is continuing to pass off its business as and for a business of and/or approved by and/or connected with the business or businesses of the Plaintiffs and each of them; (c) has enabled and is enabling the Defendant's said apparel and business to be passed off as the goods and business of or connected with the Plaintiffs and each of them.

There follow the usual allegations that the defendant has refused to desist from its wrongful conduct and that the plaintiffs have suffered damage.

In par. 20 the jurisdiction of the Federal Court is invoked in this fashion:

This is an action for damages injunctions and other relief for contraventions of sections 52 and 53 of the Trade Practices Act 1974 and as such is within the original jurisdiction of this Honourable Court by virtue of sections 80, 82 and 86 of the Trade Practices Act and section 19 of the Federal Court of Australia Act 1976 and also for damages injunctions and other relief for passing off associated with the aforesaid contraventions and as such is within the original jurisdiction of this Honourable Court by virtue of sections 22 and 32 of the Federal Court of Australia Act 1976.

The plaintiffs seek injunctions to restrain contravention of ss. 52 and 53 of the Trade Practices Act and injunctions to restrain passing off. The injunctions (A(4) and A(5)) to restrain the defendant from passing off are expressed in these terms:

(4) from passing off or enabling to be passed off any items of apparel or other goods not of the manufacture or merchandise of or connected in the course of trade with the Plaintiffs or either of them as and for goods of or connected in the course of trade with the Plaintiffs or either of them;

(5) from passing off or enabling to be passed off the business or any business of the Defendant as and for a business connected or associated with or approved by the Plaintiffs or either of them.

The plaintiffs also ask for an order for delivery up of offending materials, damages or an account of profits and a mandatory injunction compelling the defendant to assign to the plaintiffs a trade mark application which it has made or to withdraw it.

By its defence the defendant asserts, inter alia, that the allegations in par. 15 of the statement of claim do not disclose any cause of action against it within the jurisdiction of the Federal Court. The defendant then pleads that

(a) the Federal Court of Australia does not have jurisdiction or power to grant relief in respect of passing off under sections 22 or 32 of the Federal Court of Australia Act 1976; (b) if the said sections do purport to confer jurisdiction or power to grant relief in respect of passing off (which is denied) then the enactment of the said sections insofar as they purport to confer that jurisdiction was ultra vires the legislative power of the Parliament of Commonwealth of Australia and the sections are therefore invalid and have no legal effect.

The precise issue for decision is whether the Federal Court has jurisdiction to hear and determine the plaintiffs' claim for relief for passing off. As we shall see, this issue may not depend on the validity of ss. 22 and 32 of the Federal Court of Australia Act 1976 ("the Act") because we need to take account of the scope and extent of the jurisdiction conferred on the Federal Court by s. 86 of the Trade Practices Act. For the moment this aspect of the case can be put to one side. Initially it is necessary to examine the jurisdiction of the Court and to ascertain the relationship which exists between the Court's statute and the Trade Practices Act.

Section 5 of the Act creates the Federal Court pursuant to s. 71 of the Constitution. However, the Act does not vest any jurisdiction in the Federal Court. It looks to other statutes, of which the Trade Practices Act is an example, to give jurisdiction to the Court (s. 19(1)). But the Act does arm the Court with powers, especially powers to grant relief, as are appropriate to the exercise of such jurisdiction as may be vested in it.

The Court shall, in every matter before the Court, grant, either absolutely or on such terms and conditions as the Court thinks just, all remedies to which any of the parties appears to be entitled in respect of a legal or equitable claim properly brought forward by him in the matter, so that, as far as possible, all matters in controversy between the parties may be completely and finally determined and all multiplicity of proceedings concerning any of those matters avoided. It is in terms similar to s. 32 of the Judiciary Act 1903, as amended. It in turn was taken from s. 24 (7) of the English Supreme Court of Judicature Act, 1873, a provision which was designed to eliminate multiplicity of actions and to ensure that the High Court of Justice would grant both legal and equitable relief in the same proceedings. The language of s. 22 is not appropriate to a grant of jurisdiction. But it is quite appropriate to confer power to grant relief in proceedings in which the Court's jurisdiction is derived from another source, as the reference to "in respect of a legal or equitable claim properly brought forward by him" so strongly indicates. Quite evidently s. 22 does not operate to vest jurisdiction in the Federal Court - see Thomson Australian Holdings Pty. Ltd. v. Trade Practices Commission [30] . 1. (1981) 148 C.L.R. 150.

Section 32 (1) stands in a different position. It provides:

To the extent that the Constitution permits, jurisdiction is conferred on the Court in respect of matters not otherwise within its jurisdiction that are associated with matters in which the jurisdiction of the Court is invoked. Plainly it was intended to vest a jurisdiction in the Federal Court to hear and determine matters not otherwise within its jurisdiction, matters that are "associated with matters in which the jurisdiction of the Court is invoked". The expression "To the extent that the Constitution permist" suggests that s. 32 is directed, not merely to jurisdiction to hear and determine matters arising under federal laws not otherwise vested in the Federal Court, but also to jurisdiction arising under State or other non-federal laws. Problems of constitutional validity arise in relation to the latter, but not in relation to the former. The opening words of s. 32 (1) would serve no purpose at all if the sub-section was exclusively directed to matters arising under federal laws.

It is necessary now to look to the relevant provisions of the Trade Practices Act. An understanding of their place in the scheme of things is an essential preliminary to further discussion of the scope and validity of s. 32 (1). In the Thomson Australian Holdings Case [31] Gibbs C.J., Stephen and Wilson JJ. and I point out that it is s. 86 of the Trade Practices Act that confers exclusive jurisdiction on the Federal Court "to hear and determine actions under" Pt VI where an injunction is claimed under s. 80 restraining a person from engaging in conduct that is a contravention of Pts IV or V (including a breach of ss. 52 and 53).

By conferring jurisdiction on the Court to hear and determine "actions, prosecutions and other proceedings under this Part" the section departs from the language of Ch. III of the Constitution. It constantly uses the word "matters". My initial impression was that the draftsman decided to ignore the warning issued in Collins v. Charles Marshall Pty. Ltd. [32] . The content of federal jurisdiction, described in ss. 75 and 76 of the Constitution, is expressed in terms of "matters". The federal jurisdiction which s. 86 confers on the Federal Court in the present case is jurisdiction in relation to "matters" arising under a law made by the Parliament (Constitution, s. 76 (ii.)). Because s. 86 refers to "actions, prosecutions and other proceedings under this Part" and Pt VI provides for actions, prosecutions and proceedings in which penalties and fines may be imposed and injunctions and damages awarded (see ss. 76, 77, 79, 80 and 82), s. 86 is a law which defines the jurisdiction of a federal court with respect to "matters" mentioned in s. 76 (ii.) pursuant to s. 77 (i.) and makes that jurisdiction exclusive of that which belongs to the States pursuant to s. 77 (ii.). It follows that the draftsman heeded the warning in Charles Marshall [33] though he selected an oblique mode of compliance.

1. (1955) 92 C.L.R. 529, at p. 541. 2. (1955) 92 C.L.R. 529.

Critical to the defendant's argument and to the outcome of this case is the meaning of "matter". Since In re Judiciary and Navigation Acts [34] it has been assumed that matters in Ch. III of the Constitution has a meaning which significantly differs from cases and controversies in Art. III, s. 2 (1) of the United States Constitution. The argument presented by the Solicitor-General for the Commonwealth challenges that assumption. In essence his argument is that the architects of our Constitution fashioned Ch. III with a close eye to the judicial provisions of the United States Constitution and that the influence of the American model is particularly noticeable in the scheme of ss. 75 and 76. The point he then makes - and it is a telling point - is that the word "matters", a word of great breadth, was selected in preference to "cases" and "controversies", with the intention of ensuring that the grant of jurisdiction to this Court was as wide as possible.

This certainly was the view of Quick and Garran in The Annotated Constitution of the Australian Commonwealth (p. 765): "The word "matters" was chosen by the Judiciary Committee at Adelaide as the widest word to embrace every possible kind of judicial procedure that could arise within the ambit of the section". See also pp. 767-768. Their statement accords with the comment of Griffith C.J. in South Australia v. Victoria [35] : "The word "matters" was in 1900 in common use as the widest term to denote controversies which might come before a Court of Justice."

Cases and controversies in Art. III, s. 2(1) mean the claims of litigants brought for determination by regular legal proceedings. The thrust of earlier decisions giving effect to the views of Marshall C.J. in Cohens v. Virginia [36] and Osborn v. United States Bank [37] was expressed by Field J. in In re Pacific Railway Commission [38] when he said:

By cases and controversies are intended the claims of litigants brought before the courts for determination by such regular proceedings as are established by law or custom for the protection or enforcement of rights, or the prevention, redress, or punishment of wrongs. Whenever the claim of a party under the constitution, laws, or treaties of the United States takes such a form that the judicial power is capable of acting upon it, then it has become a case. The term implies the existence of present or possible adverse parties whose contentions are submitted to the court for adjudication. See also Smith v. Adams [39] . 1. (1821) 19 U.S. 264, at p. 379 [5 Law. Ed. 257, at p. 285]. 2. (1824) 22 U.S. 738, at pp. 819-821 [6 Law. Ed. 204, at pp. 816-817]. 3. (1887) 32 F. 241, at p. 255. 4. (1889) 130 U.S. 167, at pp. 173-174 [32 Law. Ed. 895, at pp. 897-898].

Sir Harrison Moore thought that this was the meaning of matters in ss. 75 and 76. Speaking of "matter", he said, in The Commonwealth of Australia, 2nd ed. (1910), at p. 208: "It is well established by usage as a comprehensive term for describing every kind of proceedings competently brought before and litigated in a court of law." He went on to say (p. 209), quoting from Georgia v. Stanton [40] , "it is only where the rights of persons or property are involved, and when such rights can be presented under some judicial form of proceedings, that Courts of justice can interpose relief".

1. (1868) 73 U.S. 50, at p. 75 [18 Law. Ed. 721, at p. 724].

In In re Judiciary and Navigation Acts [41] this Court held that Pt XII of the Judiciary Act 1903-1920, giving the Court an advisory jurisdiction, was invalid and rejected the argument that "matter" meant no more than a legal proceeding. The Court did not reject as inappropriate the American conception of "cases" and "controversies". The majority said [42] :

It was suggested in argument that "matter" meant no more than legal proceeding, and that Parliament might at its discretion create or invent a legal proceeding in which this Court might be called on to interpret the Constitution by a declaration at large. We do not accept this contention; we do not think that the word "matter" in s. 76 means a legal proceeding, but rather the subject matter for determination in a legal proceeding. In our opinion there can be no matter within the meaning of the section unless there is some immediate right, duty or liability to be established by the determination of the Court. 1. (1921) 29 C.L.R. 257. 2. (1921) 29 C.L.R., at p. 265.

This formulation does not depart from the American conception of "cases" and "controversies", notably that expressed by Field J. in In re Pacific Railway Commission [43] and Smith v. Adams [44] . Nor do the later decisions of this Court point to such a departure. Although the comments in In re Judiciary and Navigation Acts [45] , the advisory opinion case, were directed to the absence of a dispute or controversy between parties, they were reaffirmed in later cases where the issues were more analogous to that now under consideration - see Charles Marshall [46] and Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. [47] .

1. (1887) 32 F. 241. 2. (1889) 130 U.S. 167 [32 Law. Ed. 895]. 3. (1921) 29 C.L.R. 257. 4. (1955) 92 C.L.R., at pp. 541-542, 556-557. 5. (1980) 145 C.L.R. 457.

The later decisions of this Court acknowledge that "matters" and "proceedings" are not necessarily co-extensive, that there is a distinction between "matters arising under an Act" and "proceedings arising under an Act" and that proceedings may involve more than one matter (Charles Marshall [48] ; Carter v. Egg and Egg Pulp Marketing Board (Vict.) [49] ; Felton v. Mulligan [50] ). But there is no inconsistency between these propositions and the conception of a "matter" which is expressed in the phrases "subject matter for determination in a legal proceeding" or "the claim of a litigant brought for determination in a legal proceeding".

1. (1955) 92 C.L.R., at pp. 540, 541-542. 2. (1942) 66 C.L.R. 557, at pp. 578-580, 586-587, 601-602. 3. (1971) 124 C.L.R. 367, at pp. 382-383.

The essence of the problem lies, not in ascertaining the abstract meaning of "matter", but in delimiting its content when it is associated with the various heads of jurisdiction in ss. 75 and 76, particularly s. 76 (ii.) - "in any matter - (ii) Arising under any laws made by the Parliament".

The argument presented by the defendant and its supporters, adopting "subject matter for determination" as a synonym for "matter", sought to equate it in the context of s. 76 (ii.) with "cause of action, claim for relief or matter of defence arising under a federal law". The next step in the argument was to say that s. 77 (i.) enables the Parliament to confer jurisdiction on a federal court to hear and determine those subject matters but no others. The consequence, if the argument be correct, is that jurisdiction cannot be given to federal courts to hear and determine a cause of action or claim for relief not based in federal law, except in so far as a matter of defence based in federal law enables the cause of action or claim to be determined in the exercise of federal jurisdiction.

The argument is not supported by the cases. The current of authority runs in the opposite direction. In Carter [51] the plaintiff sought (1) a declaration that the Victorian Marketing and Primary Products Act and the regulations made under it were invalid or inoperative; (2) a declaration that reg. 37 made under the Victorian Act was invalid; and (3) an account in respect of dealings in eggs between the plaintiff and the Board. The first declaration was sought on the grounds (a) that the Victorian statutes were laws with respect to defence and that this was an exclusive legislative power of the Commonwealth; and (b) that the statutes were inconsistent with Commonwealth legislation and were therefore inoperative under s. 109 of the Constitution. The Court rejected this attack on validity and refused the first declaration sought. The second declaration was sought on the ground that reg. 37 was unreasonable. It too was refused, but it was considered on the footing that the Court had jurisdiction to decide the question. The Court held that it lacked jurisdiction to deal with the third claim for relief, concluding that the claim was entirely based on State legislation and did not involve any question of interpretation of the Constitution.

The explanation of the difference in treatment given to the second and third claims is that the Court's jurisdiction to hear and determine so much of the plaintiff's claim to relief as was based on the Constitution (the first claim) extended to the claim for a declaration of invalidity of reg. 37 (the second claim) because those two claims, though based on different grounds, were united by a single claim to relief; on the other hand, the Court had no jurisdiction to deal with the claim for an account because it was "entirely severable", the grounds and the relief claimed being quite different. This explanation, which is to be derived from the judgments of Latham C.J. [52] , Starke J. [53] ) McTiernan J. [54] and Williams J. [55] is not a comprehensive statement of principle designed to distinguish the characteristics of an attached claim involving the exercise of federal jurisdiction from one lacking those characteristics.

1. (1942) 66 C.L.R., at pp. 578, 580. 2. (1942) 66 C.L.R., at pp. 586-587. 3. (1942) 66 C.L.R., at p. 594. 4. (1942) 66 C.L.R., at pp. 601-602.

But the decision that there was jurisdiction to determine the validity of reg. 37 is inconsistent with the narrow view of federal jurisdiction which would deny a federal court jurisdiction to deal with any claim to relief not itself grounded in federal law. The decision is also inconsistent with an alternative theory that there is no jurisdiction to deal with a non-federal claim unless the resolution of that claim is necessary for the determination of the federal claim. To the same effect as Carter [56] are R. v. Carter; Ex parte Kisch [57] ; Hopper v. Egg and Egg Pulp Marketing Board (Vict.) [58] ; R. v. Bevan; Ex parte Elias and Gordon [59] . In the three cases the claim based on the Constitution and the non-constitutional claim involved a single claim to relief.

1. (1942) 66 C.L.R. 557. 2. (1934) 52 C.L.R. 221. 3. (1939) 61 C.L.R. 665, at pp. 673, 680-681. 4. (1942) 66 C.L.R. 452, at pp. 464-466, 480-482.

An attempt was made to confine the operation of the four decisions by suggesting that the jurisdiction of the Court to hear and determine attached claims to relief is greater when the jurisdiction which is invoked is jurisdiction under s. 76 (i.) of the Constitution, on the footing that the extended jurisdiction springs out of the words " involving [the] interpretation" of the Constitution. The judgments, especially those in Carter , give no support to this theory - the attack on reg. 37 was quite separate from the constitutional question except in point of relief claimed - and in principle it is very hard to see why the suggested distinction should be drawn. True it is that the heads or bases of jurisdiction expressed in ss. 75 and 76 of the Constitution are different in kind - some depend on parties, others on subject matter - but this in itself provides no reason for accepting the defendant's argument.

The one case, not mentioned in argument, which offers some semblance of support for the defendant is Cockle v. Isaksen [60] . There, Dixon C.J., McTiernan and Kitto JJ. expressed a very narrow view of what is involved in a "matter arising under" the Conciliation and Arbitration Act 1904-1956 [61] . Their remarks were directed to appellate, not original, jurisdiction. I am not persuaded that the examples given by their Honours were not "matters arising under" the Act. However, the case may be put to one side, as the Court concluded that s. 113 (1) of the Act, the section that conferred jurisdiction on the Industrial Court, could be sustained "as a law substantially with respect to matters arising under a federal law (namely the Conciliation and Arbitration Act) conferring jurisdiction in respect of such matters" [62] .

1. (1957) 99 C.L.R. 155. 2. (1957) 99 C.L.R., at p. 164. 3. (1957) 99 C.L.R., at pp. 164-165.

This Court's recent decision in Moorgate [63] cannot be dismissed with the comment that it did not more than decide what is meant by the word "decision" in s. 39 (2) (a) of the Judiciary Act 1904, as amended. To so describe it is to misdescribe it. It decided that the entire jurisdiction exercised by the Supreme Court was federal jurisdiction, notwithstanding that some of the causes of action or claims for relief pleaded in the statement of claim were not grounded in federal law and that the remedies sought travelled beyond registration of the trade mark "Golden Lights" which was the real bone of contention between the parties. It was this circumstance and the presence of the "proprietorship" issue under the Trade Marks Act that made the exercise of jurisdiction federal and wholly federal, the causes of action or claims for relief based on non-federal law being non-severable. They could not be severed from the federal question because they were incidental, if not essential, to its determination and because the plaintiff's various claims for relief necessarily arose out of common transactions and facts.

So much, then, for the claim that the defendant's narrow view of "matter" has the support of authority. Once it is accepted, as it must be, that there is no special magic in the scope of those matters which involve the interpretation of the Constitution, the lesson to be learned from the authorities is that the Court having jurisdiction to determine a matter falling within ss. 75 and 76 giving rise to the exercise of federal jurisdiction has jurisdiction to decide an attached non-severable claim.

The classification of a claim as "non-severable" does not necessarily mean that it is, or must be, united to the federal claim by a single claim for relief, though this is a common illustration of a non-severable claim. The non-severable character of the attached claim may emerge from other aspects of the relationship between the federal and the attached claim. For example, it may appear that the resolution of the attached claim is essential to a determination of the federal question. Likewise, it may appear that the attached claim and the federal claim so depend on common transactions and facts that they arise out of a common substratum of facts. In instances of this kind a court which exercises federal jurisdiction will have jurisdiction to determine the attached claim as an element in the exercise of its federal jurisdiction.

In the ultimate analysis the validity of this interpretation rests on the proposition that matters in ss. 75 and 76 has the broad content ascribed to it at the turn of the century by those who were familiar with the course of events which led to the adoption of the Constitution.

There are other and powerful considerations which support this proposition. We begin with the premise that the framers of the detailed provisions of Ch. III respecting the exercise of judicial power, having carefully considered the corresponding provisions of the United States Constitution, looked to "matters" in the broadest sense of the term as one which would catch up, as far as possible, the controversy which parties brought for determination by a court. It is highly unlikely that they intended to embrace a narrow technical meaning which would result in an undue fragmentation of a total controversy, leaving its resolution to decisions by both State courts and this Court or State courts and federal courts. The probability is that they contemplated that by their dispositions they were providing for the determination either in State or federal courts of an entire controversy which the parties wished to bring to a court for resolution. Whether they foresaw the subsequent course of judicial exposition of Ch. III by this Court we do not know, but we do know that they had before them the American experience with its extended conception of federal jurisdiction.

True it is that under the Constitution, but for the divesting later to be effected by s. 39 (1) of the Judiciary Act, State courts could determine all issues in controversy between parties. First, like the State courts in the United States, they were bound to apply federal laws and were therefore able in the exercise of their State jurisdiction to decide federal questions. Secondly, there was the autochthonous expedient - the power to vest federal jurisdiction in State courts - the power which was exercised in s. 39 of the Judiciary Act. None the less, the question of dealing with an attached claim in an exercise of federal jurisdiction by the Supreme Court or a federal court remained as a continuing problem which might be alleviated, but certainly not eliminated, by refraining from conferring additional jurisdiction on the High Court or giving jurisdiction to a federal court and by allowing State courts to exercise their inherent jurisdiction or by vesting the entire federal jurisdiction in them. The need to eliminate and restrict appeals to the Privy Council was one factor which ensured that the problem would continue in the future.

Lurking beneath the surface of the arguments presented in this case are competing policy considerations affecting the role and status of the Federal Court and the Supreme Courts of the States. There is on the one hand the desirability of enabling the Federal Court to deal with attached claims so as to resolve the entirety of the parties' controversy. There is on the other hand an apprehension that if it be held that the Federal Court has jurisdiction to deal with attached claims, State courts will lose to the Federal Court a proportion of the important work which they have hitherto discharged, work which the Federal Court has no jurisdiction to determine if it be not attached to a federal claim. Added force is given to this apprehension by the vesting of exclusive federal jurisdiction in the Federal Court, for example, by s. 86 of the Trade Practices Act.

There are those who consider that, in order to avoid jurisdictional conflicts, duplication of proceedings and diminution in status of the Supreme Courts, the Commonwealth Parliament should not create federal courts or, if it does, should not give them an exclusive jurisdiction. On the other hand, others believe that federal courts should interpret federal laws and determine federal rights; and some go further and consider that Parliament should vest an exclusive jurisdiction in a federal court in specialist fields in the hope that this will promote a more informed and uniform application of relevant federal laws.

With the force of these respective views we are not concerned. We must approach the question on the footing that Parliament has decided for good reason to establish the Federal Court and to vest in it an exclusive jurisdiction under the Trade Practices Act. And we cannot assume that, in the event of a decision in this case adverse to the plaintiffs, Parliament would be prepared to vest a concurrent jurisdiction under the Trade Practices Act in State courts. In deciding whether to attribute either a broad or a narrow content to "matter", we should take into account that the adoption of the broad meaning will lead to the speedier determination of entire controversies between parties without undue duplication of proceedings. Perhaps the adoption of this view will have some adverse consequences for State courts, though this is by no means self-evident, but even if this be so, it is a consideration which is secondary to the interests of litigants. This circumstance is an additional reason for giving the word a broad rather than a narrow meaning.

For this conclusion some support is provided by the United States decisions on pendent jurisdiction, although they turn on the existence of an implied incidental power, rather than on an interpretation of "cases" and "controversies". I need not go beyond Hurn v. Oursler [64] and United Mine Workers of America v. Gibbs [65] . In Hurn , the Supreme Court applied the "cause of action" test, treating a claim of unfair competition under New York law and a federal copyright claim as constituting the one cause of action. The Court quoted [66] this passage from the opinion of the Court in Baltimore Steamship Co. v. Phillips [67] :

A cause of action does not consist of facts, but of the unlawful violation of a right which the facts show. The number and variety of the facts alleged do not establish more than one cause of action so long as their result, whether they be considered severally or in combination, is the violation of but one right by a single legal wrong. 1. (1933) 289 U.S. 238 [77 Law. Ed. 1148]. 2. (1966) 383 U.S. 715 [16 Law. Ed. 2d 218]. 3. (1933) 289 U.S., at p. 246 [77 Law. Ed., at p. 1154]. 4. (1927) 274 U.S. 316, at p. 321 [71 Law. Ed. 1069, at p. 1072].

In Gibbs , although the "cause of action" test would have yielded the same result as that reached in the case, the Court discarded the test in favour of a test based on the existence of a "common nucleus of operative fact". According to this test, an attached claim may be dealt with by a federal court if (1) there is a substantial federal question; (2) there is a common nucleus of operative fact; and (3) the plaintiff would normally be expected to try the two claims in one proceeding. The relationship between the second and third elements above is not altogether clear. However, it seems that if all three elements are present the court has a discretion to decide whether it will determine the non-federal questions. In Gibbs , the Court based the doctrine of pendent jurisdiction on judicial economy, convenience and fairness.

Pendent jurisdiction, as explained in Gibbs , is an exercise of implied incidental power in "cases arising under the laws of the United States" within the meaning of Art. III, s. 2 (1) of the Constitution. The decision proceeds on the footing that, in the absence of a contrary intention, statutes vesting jurisdiction in federal courts will be taken to approve the exercise of pendent jurisdiction. It is possible that in this respect the Court's approach was subsequently modified in Aldinger v. Howard [68] , but with this aspect of the matter we are not concerned.

Pendent jurisdiction, earlier described as an exercise of implied incidental power, traces back to the observations of Marshall C.J. in Osborn v. United States Bank [69] : " when a question to which the judicial power of the Union is extended by the constitution, forms an ingredient of the original cause, it is in the power of Congress to give the circuit courts jurisdiction of that cause, although other questions of fact or of law may be involved in it."

1. (1824) 22 U.S., at p. 823 [6 Law. Ed., at p. 224].

The frequent references in the United States to the exercise of implied incidental power have tended to obscure the important fact that the cases, by basing the jurisdiction on the concept of "cases arising under the laws of the United States", have a direct relevance to the problem which presents itself under Ch. III. As I said, they lend support to the conclusion which I have reached. However, I prefer to rest the jurisdiction squarely on the provisions of ss. 75 to 77 of the Constitution, rather than ascribe any part of it to judicially implied incidental power: cf. Adamson v. West Perth Football Club Incorporated [70] , per Northrop J.

1. (1979) 39 F.L.R. 199, at pp. 213-223; 27 A.L.R. 475, at pp. 493-501.

I do not regard s. 32 of the Federal Court of Australia Act as adding to that jurisdiction and I do not see how it could confer on the Federal Court a wider jurisdiction than that for which s. 77 (i.) makes provision. That sub-section enables the Parliament to define the jurisdiction of a federal court, but only "with respect to" matters in ss. 75 and 76. Section 32 seems to proceed on the footing that a matter arising under non-federal law may be "associated" with a matter arising under federal law for the purpose of its determination in the exercise of federal jurisdiction. The remarks of Latham C.J. in Carter [71] may have led to the use of the word "associated" in s. 32. If so, his Honour's remarks have been misunderstood; he was speaking of an association between two claims which led to the existence of one "matter" in federal jurisdiction. He did not say that two matters, one federal, the other non-federal, might be associated so as to be both capable of determination in federal jurisdiction. There is of course no reason why s. 32 cannot effectively confer jurisdiction on the Federal Court in a federal matter which is associated with another federal matter in which the Federal Court has not otherwise been given jurisdiction.

There is therefore no case for declaring s. 32 invalid. The introductory words indicate that its operation is not to exceed that permitted by the Constitution. Although it does not seem to add to the operation of s. 86 of the Trade Practices Act in relation to non-federal matters, it operates in relation to associated federal claims.

The final question is whether the plaintiffs' claim for relief based on passing off is a distinct matter severable from the claims for relief based on the Trade Practices Act. I would answer this question in the negative. In some respects the relationship between the federal and non-federal claims is similar to that in Moorgate [72] . The resolution of the passing-off claims will be relevant and incidental to the determination of the claims under the Trade Practices Act. The facts and transactions on which the claims are based appear to be identical, or almost wholly so. There is therefore a common substratum of facts. Although the relief sought in respect of the claims differs slightly, it is substantially similar. For these reasons the claims are non-severable and the question asked of the Full Court should be answered in the affirmative.

United States Surgical Corporation v. Hospital Products International Pty. Ltd.

There has been removed into this Court pursuant to s. 40 (1) of the Judiciary Act 1903, as amended, so much of this action in the Federal Court as raises the question whether the Federal Court has jurisdiction to entertain any part of it except the claim for an injunction and damages under the Trade Practices Act 1974.

The applicant, a corporation incorporated in the United States, claims that it has invented, designed and developed, and is selling, surgical stapling devices and related products in Australia and elsewhere and that these products are identified in the minds of purchasers in Australia as products of the applicant. It claims that the products are also identified as its products by their distinctive configuration and names. It further claims to have copyright in literary works, being books entitled "Stapling Techniques General Surgery" (the applicant's manual).

The respondent Alan Blackman was employed as the applicant's Special Products Manager at its head office in New York. As such he was entrusted with confidential information. He procured the appointment by the applicant of The Hospital Products Corporation (a corporation which Blackman controlled) in his stead. By an agreement made on 27 December 1978, Blackman was appointed sole Australian distributor of the applicant. By a novation in February 1979, at the request of Blackman, the respondent Hospital Products International Pty. Ltd. ("Hospital Products") was substituted as sole Australian distributor for Blackman. Blackman as Director of Hospital Products was entrusted with the applicant's confidential information.

The applicant alleges that after termination of the distributor agreement, Hospital Products fraudulently and in breach of the agreement and in breach of confidence engaged in unfair trading and misleading and deceptive conduct by a series of practices described in par. 17 (i.) to (xviii.) inclusive, of the statement of claim. The applicant claims that the public will be misled by these practices and by a series of misrepresentations described in par. 19.

There is also an allegation that the acts complained of have been done pursuant to a conspiracy between the respondents to damage the applicant (par. 22). There is a general allegation that Hospital Products has engaged in misleading and deceptive conduct, passing off and unfair competition (par. 23).

The applicant's relief sought in the statement of claim appears to be based as follows:

(a) that the respondents have engaged and are engaging in conduct that is misleading or deceptive within the meaning of s. 52 of the Trade Practices Act;

(b) that the respondents have infringed and are infringing the applicant's copyright in literary works, being books entitled "Stapling Techniques General Surgery";

(c) that the respondents are, without the authority of the applicant, using and communicating confidential information the property of the applicant;

(d) that the respondents have engaged in and are engaging in unfair competition by imitating or copying the applicant's products and by authorizing the manufacture of products in accordance with the applicant's design;

(e) that the respondents have passed off and are passing off their goods and their business as the applicant's goods and as the applicant's business; and

(f) that the respondents are marketing surgical stapling equipment which is unsuitable for its intended purpose.

Of the various grounds for relief pleaded by the applicant, only the claim to relief based on s. 52 of the Trade Practices Act falls within the jurisdiction specifically conferred on the Federal Court. The claim for infringement of copyright gives rise to an exercise of federal jurisdiction. It is federal jurisdiction which has been invested in the Supreme Courts of the States; it has not been specifically conferred on the Federal Court. Nevertheless it may constitute an "associated" federal matter within s. 32 (1) of the Federal Court of Australia Act 1976, as amended. The other claims to relief are based on the general law and do not give rise to the exercise of federal jurisdiction.

It does not appear from the statement of claim that the determination of the claims to relief, other than that based on s. 52 of the Trade Practices Act and the copyright claim is essential or incidental to the determination of the cause of action based on s. 52. Nor does it sufficiently appear that there are facts and transactions common to the various claims to relief, in particular, the claim for passing off (including unfair competition). Indeed, in one instance at least, namely confidential information, it is quite plain that the basic transactions differ from those relied on to support the claim based on s. 52. And this appears also to be the case with the claim in respect of marketing stapling equipment unsuitable for its intended purpose.

The copyright claim is not without difficulty. Although the transactions on which it is based appear to differ from the transactions grounding the s. 52 claim, it is possible that the former may be "associated" with the latter. The plaintiff has failed to plead an association between the two claims or facts constituting such an association. Even so, I am reluctant at this stage to declare that the Federal Court has no jurisdiction to deal with the copyright claim, partly because the precise relationship between that claim and the s. 52 claim was not argued.

In these circumstances I would answer the question asked in the negative, except in so far as (1) the question relates to copyright and declare that the Federal Court should itself determine in the first instance whether it has jurisdiction to deal with that claim; and (2) the question relates to passing off in respect of which the Federal Court will have jurisdiction if that claim and the claim based on s. 52 of the Trade Practices Act arise out of a common substratum of fact and I would again declare that the Federal Court should itself determine whether it has jurisdiction to deal with that claim.

Chapter III of the Constitution contemplates the effective operation of federal courts exercising judicial power of the Commonwealth. However, cases involving exercise of federal judicial power almost always involve non-federal as well as federal issues. As Marshall C.J. said in 1824, "There is scarcely any case, every part of which depends on the constitution, laws or treaties of the United States" (Osborn v. United States Bank [73] ). Where factual or legal issues (whether by way of claim, counter-claim, or defence) are so related that in substance they constitute one case, it is highly inconvenient and an ineffective use of judicial power to fragment the case by determining different issues in different courts.

1. (1824) 22 U.S. 737, at p. 820 [6 Law. Ed. 204, at p. 223].

The effective operation of the federal courts would be impossible if the jurisdiction were so fragmented that a court could not settle all aspects of a case which had attracted federal jurisdiction. This is why national legislatures in federal systems often provide against such fragmentation where otherwise it would arise because of national and state laws applying to the same case. It is also the justification for the adoption, where the legislature has not acted, of federal common law rules which prevent such fragmentation (see Hurn v. Oursler [74] ; United Mine Workers of America v. Gibbs [75] ). If fragmentation cannot be avoided, the evident purpose of our constitutional provision for federal courts would be defeated (see J.B. Laskin and R. J. Sharpe, Constricting Federal Jurisdiction: A Comment on Fuller Construction [1980] University of Toronto Law Journal, p. 283). It is upon this broad basis that the problem in these cases is to be solved, rather than by refined distinction between "power" and "jurisdiction", or refined meanings of the word "matters". These words should be read widely and liberally, in accordance with constitutional usage.

1. (1933) 289 U.S. 238 [77 Law. Ed. 1148]. 2. (1966) 383 U.S. 715 [16 Law. Ed. 2d 218].

Where Parliament confers jurisdiction on a federal court or invests a State court with federal jurisdiction, it may authorize that court to determine the whole case, that is, to resolve judicially every incidental and related issue, every issue which is not separate and distinct from those which arise under a direct grant of federal jurisdiction under s. 77 of the Constitution (see s. 32 of the Judiciary Act 1903, as amended). Even if Parliament makes no provision a rule should be adopted to enable the court to do so (unless Parliament has directed otherwise). This was recognized in Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. [76] ; see also R. v. Carter; Ex parte Kisch [77] ; Hopper v. Egg and Egg Pulp Marketing Board (Vict.) [78] ; R. v. Bevan; Ex parte Elias and Gordon [79] . Such jurisdiction is federal. It may be described as dependent or pendent or collateral or ancillary. Possible differences between these concepts, and demarcation between say, "dependent" and "ancillary" jurisdiction are obscure and their exploration fruitless for this case. This dependent or ancillary jurisdiction may embrace jurisdiction which could have been given directly under s. 77, (this would be federal jurisdiction even if conferred independently). It may also embrace jurisdiction to resolve questions or issues which could not be conferred independently on a federal court, that is jurisdiction in respect of questions or issues which are not separate and distinct from those which come within jurisdiction which has been conferred directly under s. 77 (or ancillary or pendent jurisdiction which could have been conferred directly under s. 77).

1. (1980) 145 C.L.R. 457. 2. (1934) 52 C.L.R. 221. 3. (1939) 61 C.L.R. 665. 4. (1942) 66 C.L.R. 452.

In this case, the Federal Court has jurisdiction derived directly from s. 86 of the Trade Practices Act 1974. Section 32 of the Federal Court of Australia Act 1976 confers on the Federal Court, to the extent that the Constitution permits, jurisdiction to hear and determine matters not otherwise within its jurisdiction which are associated with matters in which the jurisdiction of the Court is invoked. Because of its opening words, s. 32 cannot be unconstitutional; at the worst it would be inoperative. Section 32 enables the Court to hear and determine associated matters arising under federal laws as well as those arising under non-federal laws, but the qualification, "to the extent that the Constitution permits", keeps the conferment of jurisdiction in respect of otherwise non-federal laws within constitutional bounds.

Federal jurisdiction to deal with copyright matters under Pt V of the Copyright Act 1968 is apparently conferred on courts of competent jurisdiction. Section 131A of the Copyright Act treats State Supreme Courts as being invested with this federal jurisdiction. One of the purposes of s. 32 of the Federal Court Act is that if such a copyright matter were associated with a matter in which the Federal Court's jurisdiction is invoked (for example, one under the Trade Practices Act), then the Federal Court has jurisdiction to deal with both.

Once federal jurisdiction is attracted, it remains (see Moorgate [1] ). Where the exercise of the Commonwealth judicial power is vested exclusively in a federal court (as the trade practices claims are in these cases, see Trade Practices Act s. 86), this is a compelling reason for exercising jurisdiction in all matters which are not separate and distinct (see Aldinger v. Howard [2] ).

1. (1980) 145 C.L.R. 457. 2. (1976) 427 U.S. 1 [49 Law. Ed. 2d 276].

It follows that, except to the extent that Parliament has stipulated otherwise, when the jurisdiction of any federal court (other than the High Court to which special consideration deriving from Ch. III of the Constitution may apply) is attracted in any matter, the court has the power and duty to decide any issue incidental to determining the matter, and has the power to determine any matter, federal or non-federal in origin, which is not completely separate and distinct from the matter which attracted federal jurisdiction. Because of the adverse consequences, Parliament should not be taken to have deprived a federal court of such jurisdiction except by the clearest words.

Parliament's provision in s. 32 confers jurisdiction (which is, of course, federal) on the Federal Court of Australia to deal with associated matters federal and non-federal in origin. On the assumption that "associated" matters includes more than those which are not separate and distinct, and on the assumption that Parliament cannot enable a federal court to deal with matters non-federal in origin which are separate and distinct from those in which its federal jurisdiction is invoked, it is, of course, necessary to read down s. 32 (in accordance with its opening words) to apply only to those matters non-federal in origin which are not separate and distinct from a matter federal in origin, that is matters in which jurisdiction is conferred directly or an associated matter federal in origin. Thus the Federal Court has federal jurisdiction in respect of the trade practices claims, and any associated copyright claim, and also in respect of otherwise non-federal claims which are not separate and distinct from both the trade practices and any associated copyright claim.

The Federal Court is a superior court (s. 5 (2) of the Federal Court Act) and is therefore presumed to act within its jurisdiction (see Scott v. Bennett [3] ; Peacock v. Bell [4] ; R. v. Chancellor of St. Edmundsbury and Ipswich Diocese; Ex parte White [5] ). In my opinion, the presumption has not been displaced. It has not been satisfactorily proved that the other federal claim (the copyright matter) is not associated with the claim under the Trade Practices Act, and it has not been proved that the non-federal claims are separate and distinct from the federal claims which fall within the Federal Court's jurisdiction conferred directly (under the Trade Practices Act) or under s. 32 of the Federal Court Act (the copyright matter).

1. (1871) L.R. 5 H.L. 234. 2. (1667) 1 Wms Saund. 73 [85 E.R. 84]. 3. [1947] 2 All E.R. 170, at p. 172.

In each case the answer should be that the Federal Court has jurisdiction over all the challenged issues.

United States Surgical Corporation v. Hospital Products International Pty. Ltd.

On an application to this Court by the Attorney-General for the Commonwealth under s. 40 (1) of the Judiciary Act 1903, as amended, an order was made on 12 September 1980 removing into this Court that part of cause No. G. 71 of 1980 pending in the Federal Court of Australia which raises the jurisdiction of that Court to entertain the whole of the proceedings.

This case was instituted in the Federal Court by an application for interlocutory relief by way of injunction which was accompanied by a statement of claim. That document is lengthy but it will be necessary to set it out in full in order to understand the question which warranted the removal of that part of the cause into this Court.

This action is within the jurisdiction of the Court by reason of the fact tha it involves a claim for damages and injunctions for infringement of Part V of the Trade Practices Act 1974.

The applicant is and has been at all material times a company duly incorporated pursuant to the laws of the State of Connecticut in the United States of America and capable of suing.

The first respondent Hospital Products International Pty. Ltd. ("Hospital Products") is and has been since 19 January 1979 a company duly incorporated in New South Wales and capable of being sued.

The second and third respondents, Alan R. Blackman ("Blackman") and Jamie Blackman are and have been since 8 February 1979 directors of Hospital Products.

At all material times since its incorporation Hospital Products has engaged in trade and commerce within Australia.

The applicant has invented, designed, developed, manufactured, sold and continues to sell, surgical stapling devices and related products which enable surgeons to close human tissue, reconstruct human anatomical organs and close human blood vessels without the use of conventional surgical needle and thread ("the applicant's products"). At all material times since 1967 the applicant has sold the applicant's products, which, have been marketed as and have become identified in the minds of purchasers in Australia and elsewhere as products of the applicant and have an established reputation as such.

The applicant's products have also become known by and identified as the products of the applicant by reason of their distinctive configuration and the names under which they have been marketed by the applicant.

The applicant is and has been at all material times the owner of the copyright in literary works being books entitled "Stapling Techniques General Surgery" ("the applicant's manual").

From 1 January 1973 until 21 September 1973, Blackman was employed by the applicant as Special Products Manager at its head office in New York. From 21 September 1973 until 22 September 1976 Blackman served the applicant in the United States of America as an authorised dealer of the applicant and was trained by the applicant and was entrusted with and had communicated to him confidential information the property of the applicant, namely research and design information relating to the applicant's products, customer lists and marketing policy information, details of patent and trade mark applications made by the applicant and other confidential information.

On 22 September 1976 Blackman procured the appointment by the applicant of The Hospital Products Corporation, a body corporate incorporated in New York and controlled by Blackman as its authorised dealer in his stead and thereafter Blackman as director of The Hospital Products Corporation continued to be trained by the applicant and to be entrusted with and have communicated to him confidential information the property of the applicant.

By agreement partly in writing, partly oral and partly to be implied ("the distributorship agreement") between the applicant and Blackman made 27 December 1978 the applicant agreed to appoint Blackman and Blackman agreed to serve as the exclusive Australian distributor of the applicant. By the distributorship agreement the applicant agreed to terminate the distributorship of its existing Australian distributor.

There were terms of the distributorship agreement referred to in par. 11 hereof as follows:

(a) that Blackman would use his best endeavours to advance the sales in Australia of the applicant's products; (b) that Blackman would act in good faith towards the applicant; (c) that Blackman would not manufacture or sell products which competed with the applicant's Products; (d) that Blackman would not do any act which might confuse purchasers of surgical equipment as to whether or not a particular product was that of the applicant; (e) that Blackman would not pass off products as the applicant's products which were not such; (f) that Blackman would not pass off the applicant's products as his own or some other manufacturer's product.

By a novation ("the Hospital Products distributorship agreement") in February 1979, at the request of Blackman and Hospital Products, Hospital Products was substituted for him in the distributorship agreement and the terms referred to in par. 12 applied mutatis mutandis to the said novation.

From February 1979 pursuant to the Hospital Products distributorship agreement Hospital Products became the sole Australian distributor of the applicant. Hospital Products was, as such distributor, and Blackman was, as its director, entrusted with and had communicated to them confidential information the property of the applicant.

Hospital Products employed and has employed at all times since its incorporation not only Blackman but also the respondents Jamie Blackman, Barry Silverman and Irving Blackman all former employees of the applicant to whom confidential information the property of the applicant was entrusted and communicated by the applicant.

On 25 December 1979 the Hospital products distributorship agreement was terminated by Hospital products.

Hospital Products, fraudulently and in breach of the Hospital Products distributorship agreement and in breach of the applicant's confidence has engaged in the following unfair trading and misleading and deceptive conduct:

(i) by the use of the applicant's confidential information and by the process of reverse engineering carried out on the applicant's products, manufacturing products with the object of misleading and deceiving the public into believing that they are the products of and identical in quality to the products of the applicant whereas the fact is that they are of an inferior quality;

(ii) manufacturing and causing to be manufactured, distributing, advertising and selling products ("the respondents' imitation products") deceptively similar to products manufactured by the applicant and calculated to mislead purchasers into concluding that the same products are the applicant's products;

(iii) using a promotional book entitled "Stapling Techniques in Gastrointestinal Surgery" which is copied substantially from the applicant's manual;

(iv) using the applicant's products, the names of the applicant's products, the applicant's manual and the applicant's instructional materials to solicit sales for respondent's imitation products;

(v) applying to register the word " auto suture ", being a word deceptively similar to the word " auto suture " used by the applicant in respect of the applicant's products and identified by the public as descriptive of the applicant's products, as a trademark for the respondent's imitation products in Australia;

(vi) soliciting sales for the respondent's imitation products by the use of the applicant's products from which the applicant's " auto suture " name has been obliterated and replaced with the name "Hospital Products of Australia Pty. Ltd.";

(vii) marketing as the respondent's products the applicant's products which have been physically modified in a manner which renders them defective and dangerous for surgical use;

(viii) marketing the respondent's imitation products having the same configurations and designs as applicant's products;

(ix) representing that the first respondent was the originator of the subject matter embodied in the respondent's products and alleged to be covered by pending patent applications by Hospital Products;

(x) marketing the respondent's imitation products which are inferior to the plaintiff's products as purported exact copies of the applicant's products;

(xi) using the name United Surgical Instruments Corp., which is a colourable imitation of the applicant's name United States Surgical Corporation;

(xii) using the word " surgequip ", which is deceptively similar to and a colourable imitation of the applicant's name " surgiclip " used by the applicant in respect of the applicant's products and identified by the public as descriptive of the plaintiff's products.

(xiii) after 25 December 1979 representing to purchasers of equipment that Hospital Products remained the Australian distributor of the applicant;

(xiv) after 25 December 1979 failing to advise purchasers that Hospital Products was no longer the Australian distributor of the applicant well knowing that they thought it still was;

(xv) on or about 15 January 1980 the respondent Blackman, without the applicant's knowledge or authorisation, caused Hospital Products to file an Australian Patent application in its own name for a surgical stapler embodying subject matter invented by applicant and being a copy of one of the applicant's products;

(xvi) packaging the applicant's products in packages representing that they emanated from the first respondent and failing to acknowledge that the goods were the applicant's;

(xvii) holding itself out as being able to obtain and supply the applicant's instruments;

(xviii) wrongfully making use of lists of or knowledge of the applicant's customers both in Australia and overseas for the purpose of diverting business from the applicant to the first respondent.

The public has been, is and is likely to be deceived and misled by the aforesaid practices of Hospital Products.

Further, in connection with the supply or possible supply or promotion of its goods the respondents have: (a) represented that the respondent's imitation products: (i) are new; (ii) are sufficiently safe as to be suitable in human surgery; (iii) are suitable for use with the applicant's products; (iv) are interchangeable with the applicant's products; (v) are of a quality, standard or grade equal to the applicant's products; (vi) are approved by the applicant; (vii) are sterile and adequately packed; (viii) are suitable for their purpose; (ix) are of the respondent's own manufacture; (x) have performance characteristics which they do not have; and (b) represented that Hospital Products is sponsored, approved by, or affiliated with the applicant.

Each of the representations referred to in par. 20 hereof was made fraudulently, is and remains false, misleading and deceptive and likely to mislead and deceive.

In the premises Hospital Products has engaged and continues to engage in misleading and deceptive conduct and the individual respondents have aided and abetted, induced and been knowingly concerned in such conduct and continue so to do.

The overt acts of the respondents herein alleged were done pursuant to a conspiracy between the respondents to damage the applicant by breaching its confidence and by appropriating to Hospital Products the goodwill attached to the applicant's products and business and wrongfully to obtain for Hospital Products the actual and potential market which existed in Australia and elsewhere for the applicant's products.

In the premises Hospital Products has engaged in misleading and deceptive conduct, passing off and unfair competition to the detriment of the applicant and the individual respondents have aided and abetted, counselled, procured, induced, been knowingly concerned in, and have conspired with and in relation to the conduct of Hospital Products herein alleged.

By reason of the matters herein alleged the applicant has suffered loss and damage.

The respondents threaten to continue to act as herein alleged unless restrained by the Court.

The form of relief sought was extensive and occupied some twelve paragraphs. It is set out in full in the reasons for judgment of my brother Gibbs and I do not repeat it here.

The statement of claim brings together in one document a number of separate "matters" or claims in respect of rights which it asserts against the respondents, which may be summarized as follows:

Paragraph 17 alleges that fraudulently and in breach of contract and in breach of confidence, the respondents have engaged in unfair trading and misleading and deceptive conduct as particularised. This allegation appears to be based, in part at least, on ss. 52 and 53 of the Trade Practices Act 1974 though it is not expressly so alleged.

Paragraphs 6, 7, 18, 19 and 23 claim expressly that the respondents have passed off goods as those of the applicant.

Paragraph 8 alleges ownership of copyright in certain literary work. Paragraph 17 includes breach of copyright as a particular of breach of contract but no contract is alleged with respect to any work in which copyright exists so that it is difficult to see how the allegation is relevant, except perhaps as a particular instance of the alleged unfair trading and misleading and deceptive conduct.

Paragraphs 9, 10, 14, 15 and 17 allege breach of confidence, a cause of action based on equitable considerations.

Paragraphs 11, 12, 13, 14 and 17 allege breach of contract.

8. Paragraph 6 of the statement of claim alleges that the applicant has designed surgical stapling devices, but it is not alleged that the claim is for the infringement of a registered design under the Designs Act 1906 Cth and par. (viii.) of the relief claimed seeks an injunction against authorizing the manufacture of products "in accordance with the applicant's design".

The central question raised for the consideration of this Court is whether the Federal Court has jurisdiction to hear and determine the whole of the issues raised in the statement of claim notwithstanding that many of those issues do not of themselves arise under laws made by the Parliament.

That question depends on the proper construction and operation of ss. 22 and 32 of the Federal Court of Australia Act 1976 and their constitutional validity as well as the operation of s. 19. The Federal Court Act creates the Federal Court of Australia but does not expressly confer upon it any jurisdiction, save in so far as those sections may do so. The scheme of that Act is indicated by s. 19 which provides that:

(1) The Court has such original jurisdiction as is vested in it by laws made by the Parliament, being jurisdiction in respect of matters arising under laws made by the Parliament.

(2) The original jurisdiction of the Court includes any jurisdiction vested in it to hear and determine appeals from decisions of persons, authorities or tribunals other than courts.

The Trade Practices Act is such an Act and by Pt VI it confers jurisdiction upon the Federal Court in the matters therein set out in relation to contraventions of other provisions of that Act.

The legislative power of the Commonwealth to create federal courts and the nature and extent of the jurisdiction which may be vested in them is to be found in ss. 71, 75, 76 and 77 of the Constitution. It will be necessary to refer more than once to those sections and it is convenient to set them out now. They are as follows:

71. The judicial power of the Commonwealth shall be vested in a Federal Supreme Court, to be called the High Court of Australia, and in such other federal courts as the Parliament creates, and in such other courts as it invests with federal jurisdiction. The High Court shall consist of a Chief Justice, and so many other Justices, not less than two, as the Parliament prescribes.

(ii.) Affecting consuls or other representatives of other countries:

(iii.) In which the Commonwealth, or a person suing or being sued on behalf of the Commonwealth, is a party:

(iv.) Between States, or between residents of different States, or between a State and a resident of another State:

(v.) In which a writ of Mandamus or prohibition or an injunction is sought against an officer of the Commonwealth:

76. The Parliament may make laws conferring original jurisdiction on the High Court in any matter -

(i.) Arising under this Constitution, or involving its interpretation:

(ii.) Arising under any laws made by the Parliament:

(iv.) Relating to the same subject-matter claimed under the laws of different States.

77. With respect to any of the matters mentioned in the last two sections the Parliament may make laws -

(i.) Defining the jurisdiction of any federal court other than the High Court:

(ii.) Defining the extent to which the jurisdiction of any federal court shall be exclusive of that which belongs to or is invested in the courts of the States:

(iii.) Investing any court of a State with federal jurisdiction.

Before considering the significance in those sections of the word "matters" it is desirable to refer to an argument that s. 22, in combination with some other federal Act, may provide a source of jurisdiction in the Federal Court to entertain the whole of this proceeding and to grant the relief sought. Section 22 is as follows:

The Court shall, in every matter before the Court, grant, either absolutely or on such terms and conditions as the Court thinks just, all remedies to which any of the parties appears to be entitled in respect of a legal or equitable claim properly brought forward by him in the matter, so that, as far as possible, all matters in controversy between the parties may be completely and finally determined and all multiplicity of proceedings concerning any of those matters avoided. It is in my opinion clear beyond any doubt that simply as a matter of construction s. 22, either alone or in combination with other Acts, does not purport to confer jurisdiction on the Federal Court. It does no more than confer powers on that Court to grant appropriate relief in any case properly within the Court's jurisdiction. A mere claim for such remedies as, e.g., injunctions or declarations, is not a matter within ss. 75 or 76 and the fact that such a claim is made does not confer jurisdiction. This view is reinforced by the fact that s. 22 was obviously derived from s. 32 of the Judiciary Act 1903 which was in its turn derived from s. 24 (7) of the Judicature Act 1873 U.K.. It is a section concerned to ensure that remedies in respect of both legal and equitable claims should be available without multiplicity of proceedings. It has never been held, nor indeed suggested, that those sections confer jurisdiction. On this view no constitutional question arises with respect to s. 22.

The principal questions are whether s. 32 (1) can validly confer jurisdiction in matters which do not arise under a law of the Parliament or is valid at all in its present form. It provides as follows:

To the extent that the Constitution permits, jurisdiction is conferred on the Court in respect of matters not otherwise within its jurisdiction that are associated with matters in which the jurisdiction of the Court is invoked. It will be observed that it is limited by the opening words: "To the extent that the Constitution permits". The question therefore is whether the Constitution does so permit, and if so, to what extent.

Subject to an argument concerning s. 51 (xxxix.) of the Constitution to which I refer below the power of the Parliament to establish federal courts other than the High Court is conferred by s. 77 and the nature of the jurisdiction which may be conferred on such courts is defined by ss. 75 and 76. It is therefore necessary to examine those sections and the manner in which they have been applied by this Court to ascertain the extent of the jurisdiction which the Parliament has power to confer on the Federal Court and to examine the extent to which that power has been exercised.

The content of the original jurisdiction which is given to the High Court by s. 75 of the Constitution and that which may be conferred upon it under s. 76 is expressed by reference to "matters" which are defined in various ways. The jurisdiction which Parliament may confer on other federal courts is limited to the same two sets of "matters" as are referred to in ss. 75 and 76. In some paragraphs the matters are defined by the nature or identity of the parties, e.g. where the Commonwealth is a party, or an action between residents of two States, and in such a case the subject matter of the litigation is irrelevant; in others the matters are defined by the subject matter of the litigation. Jurisdiction in matters involving the interpretation of the Constitution is not dependent on the nature of the parties or upon the subject matter of the litigation or of any claimed legal right, but on the nature of one legal question involved in a matter.

The cases in which the original jurisdiction of the High Court has depended on there being a matter involving the interpretation of the Constitution were relied upon in argument in support of the validity of s. 32. In considering this argument it is necessary first to note the general nature of ss. 75, 76 and 77 of the Constitution. The joint judgment of Knox C.J., Gavan Duffy, Powers, Rich and Starke JJ. in In re Judiciary and Navigation Acts [6] contains a well-known passage concerning those sections, which is as follows:

This express statement of the matters in respect of which and the Courts by which the judicial power of the Commonwealth may be exercised is, we think, clearly intended as a delimitation of the whole of the original jurisdiction which may be exercised under the judicial power of the Commonwealth, and as a necessary exclusion of any other exercise of original jurisdiction. 1. (1921) 29 C.L.R. 257, at p. 265.

In the same judgment their Honours set the meaning of the word "matter" which has been consistently applied ever since. They said [6] :

It was suggested in argument that "matter" meant no more than legal proceeding we do not think that the word "matter" in sec. 76 means a legal proceeding, but rather the subject matter for determination in a legal proceeding. In our opinion there can be no matter within the meaning of the section unless there is some immediate right, duty or liability to be established by the determination of the Court. 1. (1921) 29 C.L.R. 257, at p. 265.

The jurisdiction referred to in s. 76 (i.) includes a claim for any relief between any parties in respect of any factual situation, and any question of law; it may raise any cause of action known to the law but it must be a matter which involves the interpretation of the Constitution. The words "arising under the Constitution" have a narrower scope but the cases mostly deal with the second part of s. 76 (i.).

It has been established that when such a matter arises the Court is "clothed with full authority essential for the complete adjudication of the matter and not merely the interpretation of the Constitution" (per Starke J. in R. v. Bevan; Ex parte Elias and Gordon [7] ). Such a conclusion was, if I may say so with respect, inevitable because of the words of s. 76 (i.) - the only, and the essential, basis of the jurisdiction was that the "matter" involved such a question of law, irrespective of the subject matter of the proceeding. Its other characteristics were irrelevant. What the Court was given jurisdiction over was the "matter" involving the interpretation of the Constitution, i.e. the jurisdiction was in respect of the whole of such matter. It clearly followed from this that the jurisdiction over the matter enabled, indeed obliged, the Court to determine the "right, duty or liability" sought to be established in the proceeding.

The jurisdiction so conferred necessarily included the final disposition of the matter, whether or not the question concerning the interpretation of the Constitution was decided favourably or unfavourably to the party who raised it. Cp. R. v. Carter; Ex parte Kisch [8] . This is not dependent on any implication but is a direct consequence of the conferring of jurisdiction in a "matter" of the permitted kind; it is that matter which the Court has to decide.

I do not need to refer to all the cases in which this Court has dealt with the nature and extent of the original jurisdiction of this Court under ss. 75 and 76 but it is desirable to quote here the statement of principle by Latham C.J. and Starke J. in Carter v. Egg and Egg Pulp Marketing Board (Vict.) [9] . Latham C.J. said [10] :

A single legal proceeding may involve several matters in an ordinary sense of that word - as when several claims are joined in one action.

There are decisions upon s. 40 and s. 40A of the Judiciary Act which, holding those sections to be valid, support the view that the Court can adjudicate in a case from which all questions of constitutional significance have been eliminated by the rejection of contentions based upon the Constitution, the whole cause, and not merely the cause so far as its decision depends upon such contentions, having been removed into this Court under one or other of those sections: See George Hudson Ltd. v. Australian Timber Workers' Union [11] ; Pirrie v. McFarlane [12] ; Ex parte Walsh and Johnson; In re Yates [13] and cf. Ruhamah Property Co. Ltd. v. Federal Commissioner of Taxation [14] . But the cause is so removed only if a decision upon the Constitution was necessary for the determination of the case (R. v. Maryborough Licensing Court [15] ; Miller v. Haweis [16] ). R. v. Carter; Ex parte Kisch [17] applies the same rule (as to the removal of the whole cause) to a case coming into the Court under sec. 30 of the Judiciary Act. These cases were approved in Hopper v. Egg and Egg Pulp Marketing Board (Vict.) [18] and R. v. Bevan [19] . But in each of these cases a single claim or charge or a defence thereto was supported upon several grounds, one or more of which involved the interpretation of the Constitution. None of the cases mentioned presented the feature which is to be found in this case, namely, an entirely severable claim having no relation whatever to another claim or claims made in the same proceeding which other claim or claims alone involved the interpretation of the Constitution.

1. (1923) 32 C.L.R. 413, at p. 431. 2. (1925) 36 C.L.R. 170. 3. (1925) 37 C.L.R. 36, at pp. 57, 58, 129, 130. 4. (1928) 41 C.L.R. 148, at p. 151. 5. (1919) 27 C.L.R. 249. 6. (1907) 5 C.L.R. 89. 7. (1934) 52 C.L.R. 221, at pp. 223, 224. 8. (1939) 61 C.L.R. 665. 9. (1942) 66 C.L.R. 452. Starke J. said [20] : Consequently a matter involving the interpretation of the Constitution is a subject for judicial determination in which some right, duty or liability of a party is to be established which may involve the interpretation of the Constitution. If there be such a matter then, as I said in R. v. Bevan [1] the jurisdiction of this Court is attracted and it has full authority for the complete adjudication of the matter and not merely the interpretation of the Constitution. And once that jurisdiction is acquired it is not lost by reason of the rejection of the constitutional point. But there must be a matter, a cause of action, in the sense indicated, and not merely a legal proceeding in which the interpretation of the Constitution arises in respect of some matters or causes of action. The decisions make it clear that there is no jurisdiction in other matters which are severable from those which do involve the interpretation of the Constitution, even though they are raised in the same proceeding. The expression "right, duty or liability" has been given a wide scope, and necessarily includes, e.g. points raised by way of defence. It is however convenient to continue to use it.
   1. (1942) 66 C.L.R. 557.
   2. (1942) 66 C.L.R., at pp. 578, 580.
   3. (1923) 32 C.L.R. 413, at p. 431.
   4. (1925) 36 C.L.R. 170.
   5. (1925) 37 C.L.R. 36, at pp. 57, 58, 129, 130.
   6. (1928) 41 C.L.R. 148, at p. 151.
   7. (1919) 27 C.L.R. 249.
   8. (1907) 5 C.L.R. 89.
   9. (1934) 52 C.L.R. 221, at pp. 223, 224.
   10. (1939) 61 C.L.R. 665.
   11. (1942) 66 C.L.R. 452.
   12. (1942) 66 C.L.R., at pp. 586-587.
   13. (1942) 66 C.L.R., at p. 465.

Sections 76 (ii.) and 77 (i.) enable the Parliament to legislate so as to confer judicial power on federal courts "in matters arising under any laws made by the Parliament". In so far as the rights, duties and liabilities sought to be enforced or relied on arise under an Act of the Parliament there is constitutional power to confer such jurisdiction but not otherwise. The basis for the wide operation given to s. 76 (i.) does not exist in the case of s. 76 (ii.) because of the different nature of the matters with which each paragraph deals. If the rights, duties or liabilities sought to be enforced do not "arise under" a law made by the Parliament, then there is no power under s. 77 to confer jurisdiction in such matters on any federal court, whether the High Court or a court created by the Parliament. This involves no conflict with the decisions as to the original jurisdiction of the High Court in matters "arising under this Constitution, or involving its interpretation". It is no more than an application of the basis of those decisions to "matters" of a different kind from those referred to in s. 76 (i.). It is the latter part of s. 76 (i.), i.e. matters involving the interpretation of the Constitution, which has been involved in most of the cases in which jurisdiction was held to extend to the whole matter. It was because such matters have almost always involved other issues that the extent of the jurisdiction appeared wide. Similarly a matter will be one in which a writ for a mandamus against an officer of the Commonwealth is sought even though in that matter a claim is made for relief against some other person - see R. v. Drake-Brockman; Ex parte National Oil Pty. Ltd. [2] , per Latham C.J. However the criterion "arising under any laws made by the Parliament" is of a very different character for it requires the matter, i.e. the right, duty or liability in question, to arise under an Act of the Parliament, and that is a description narrower than a matter involving the interpretation of the Constitution or, if it were material, an Act of the Parliament. There is a clear difference between the wording of pars (i) and (ii) of s. 76, the former being wider in relation to its subject matter than the latter. It is this vital distinction which requires the conclusion that matters arising under the common law, or Acts of State Parliaments cannot be the subject of a grant of jurisdiction to federal courts under s. 76 (ii.) whatever the degree of overlap there may be in the facts relevant to the two kinds of matter. See the discussion by Latham C.J. of the distinction between s. 76 (i.) and s. 76 (ii.) in R. v. The Commonwealth Court of Conciliation and Arbitration; Ex parte Barrett [3] .

1. (1943) 68 C.L.R. 51, at pp. 57-58. 2. (1945) 70 C.L.R. 141, at p. 154.

Reliance was placed in argument in support of the validity of s. 32 (1) on s. 51 (xxxix.) of the Constitution but that contention is, in my opinion, misconceived. So far as is material that provision gives legislative power to make laws with respect to matters incidental to the execution of any power vested by the Constitution in the Federal Judicature. On the view that s. 51 (xxxix.) applies not only to judicial power vested in the Federal Judicature directly by the Constitution but also vested in federal courts by an Act of Parliament, s. 22 of the Federal Court Act would be an example of such a law in that it gives to the Federal Court power to grant a wide range of remedies in the execution of its judicial power to exercise whatever jurisdiction may be conferred upon it by an Act of Parliament. It is not necessary in this case to deal with that unresolved problem; cp., e.g., the view of Isaacs J. in Griffin v. South Australia [4] with the observation of Dixon and Evatt JJ. in R. v. Federal Court of Bankruptcy; Ex parte Lowenstein [5] . However a law which confers jurisdiction on a federal court is not made pursuant to any power falling within s. 51. Such a law must be one made under the power given by s. 77. The Constitution vests no jurisdiction in federal courts other than the High Court, but by s. 77 it empowers the Parliament to make laws doing so, within the limited range of matters defined in ss. 75 and 76. The joint judgment in In re Judiciary and Navigation Acts [6] makes it clear that s. 51 (xxxix.) cannot be used to extend the jurisdiction of federal courts to matters other than those set out in ss. 75 and 76; see the passages already quoted and the following passage [7] :

Section 51 (xxxix.) does not extend the power to confer original jurisdiction on the High Court contained in s. 76. It enables Parliament to provide for the effective exercise by the Legislature, the Executive and the Judiciary, of the powers conferred by the Constitution on those bodies respectively, but does not enable it to extend the ambit of any such power. See also Collins v. Charles Marshall Pty. Ltd. [8] ; Reg. v. Kirby; Ex parte Boilermakers' Society of Australia [9] and Attorney-General (Cth) v. The Queen [10] . In a recent decision on this point in Willocks v. Anderson [11] in the joint judgment of Barwick C.J., Menzies, Windeyer, Owen, Walsh and Gibbs JJ., their Honours said: Moreover the provisions of s. 76 of the Constitution, which expressly empower Parliament to confer original jurisdiction on this Court, indicate that the general powers given to the Parliament by s. 51 do not authorize legislation conferring original jurisdiction on this Court: cf. Le Mesurier v. Connor [12] . Section 51 (xxxix.) of the Constitution enables laws to be made with respect to matters incidental to the execution of any power vested by the Constitution in the Federal Judicature, but does not authorize Parliament to make laws conferring jurisdiction on a Court forming part of the Federal Judicature. 1. (1924) 35 C.L.R. 200, at p. 205. 2. (1938) 59 C.L.R. 556, at p. 587. 3. (1921) 29 C.L.R. 257. 4. (1921) 29 C.L.R., at p. 265. 5. (1955) 92 C.L.R. 529, at p. 540. 6. (1956) 94 C.L.R. 254, at pp. 269-270. 7. (1957) 95 C.L.R. 529, at p. 538. 8. (1971) 124 C.L.R. 293, at p. 299. 9. (1929) 42 C.L.R., at p. 496.

Accordingly s. 51 (xxxix.) cannot be a source of legislative power to confer jurisdiction on the Federal Court and cannot provide a source of power for the enactment of s. 32 (1).

No doubt the vesting of judicial power in specified matters within ss. 75 and 76 in a federal court created by the Parliament will carry with it such implied powers as are necessarily inherent in the nature of judicial power itself. At least in the case of a superior court of record, the grant would carry with it, for example, a power to punish for contempt. Such implications however cannot extend the range of matters in respect of which jurisdiction may be given to a federal court beyond those set out in ss. 75 and 76. The fact that a non-federal matter may be associated with a federal matter cannot enable the Parliament to confer jurisdiction on a federal court in such a matter whatever meaning one may attribute to the word "associated".

It was argued that the decisions of the United States Supreme Court on Art. III of the Constitution of the United States were applicable to Ch. III of our Constitution. I do not think that any assistance is to be derived from those cases. The constitutional provisions are very different; the United States Constitution speaks of "cases" and "controversies", which have been given a much wider operation than the word "matters" in our Constitution. A recent United States case, United Mine Workers of America v. Gibbs [13] carries the basis of jurisdiction of the federal courts in state matters much further than the Australian decisions could justify and in addition holds that the federal courts have a discretion whether or not to exercise such jurisdiction.

In his reasons for judgment my brother Gibbs has examined the decisions of the United States Supreme Court on what is there called "pendent jurisdiction". I cannot usefully add to what he has said beyond saying that I am not satisfied that the United States cases prior to the United Mine Workers' Case adopted a view closely comparable to the view adopted in this Court with respect to the word "matters".

It was argued for the Commonwealth that s. 32 (1) could be read so as to confine its operation to such matters as were within ss. 75 and 76 but which were not the subject of legislation expressly conferring jurisdiction on the Federal Court, including all Acts of the Parliament other than the Trade Practices Act. I am unable to see any basis for this argument; it is not compatible with s. 76.

A further argument was advanced on behalf of the Commonwealth which, if accepted, would make the jurisdiction even wider. That argument was that s. 32 gave jurisdiction in relation to associated matters in respect of which the Parliament had legislative power even though it had not been exercised. This proposition is in my opinion untenable both as a matter of construction and as a matter of constitutional power. Section 76 (ii.) enables jurisdiction to be conferred in matters arising under any laws made by the Parliament, not in matters arising under laws which the Parliament has power to make but has not yet made.

It was also advanced on behalf of the Commonwealth that s. 32 (1) conferred jurisdiction on the Federal Court in associated matters based on State law, whether statute law or common law. This argument is equally untenable and must fail for lack of legislative power under ss. 75, 76 and 77, which as I have said are the only sources of legislative power to confer jurisdiction on federal courts.

The question remains whether s. 32 (1) can be confined to the grant of jurisdiction in such associated matters as arise under existing laws made by the Parliament, there being in the present case no attempt to rely on the other paragraphs of ss. 75 and 76. A possible view is that s. 32 (1) could be read down so as to enable the Federal Court, for example, to deal with a claim for relief in respect of infringement of copyright because such a right would arise under the Copyright Act 1968 Cth, as amended. There is no provision in that Act or in any other federal Act conferring jurisdiction on the Federal Court in matters arising under that Act, unless s. 32 (1) is such a provision.

If the question depended solely upon the application of s. 15A of the Acts Interpretation Act 1901 Cth, as amended, there might have been some doubt whether s. 32 could be read down so as to confine it to associated matters falling within ss. 75 and 76 of the Constitution.

The proper approach to what are called, or perhaps miscalled, "severability clauses" is explained in the judgment of Dixon J. in Bank of New South Wales v. The Commonwealth [14] where he dealt both with s. 15A of the Acts Interpretation Act and with the much more elaborate provision in s. 6 of the Banking Act 1947. He said [15] that he was unable: "to perceive clearly how it" [viz. s. 6] "extends the rule established by the decisions under s. 15A. The fact that it is not a general law governing all statutes but is a particular provision of the Banking Act itself doubtless strengthens its effect. The Court has gone very far as a result of s. 15A and in spite of the difference in form of par. (a) of s. 6, I doubt whether the paragraph in any way extends the operation of the rule of construction as we have applied it."

1. (1948) 76 C.L.R. 1, at pp. 369-372. 2. (1948) 76 C.L.R., at pp. 371-372.

See also his observations in Vacuum Oil Co. Pty. Ltd. v. Queensland [16] , as follows:

When provisions of a statute extend beyond the powers of the legislature, the question whether it is wholly void or operates upon so much of the subject matter with which it deals as lies within those powers, depends altogether upon the interpretation of the statute itself. It must be examined to see if an intention appears of providing for the matters found to be outside the legislature's powers independently of the matters found to be within its powers. The statute will not operate upon the matters within the powers of the legislature unless it is capable of applying to them in the same way and with the same consequences to the persons and things affected. 1. (1935) 51 C.L.R. 677, at pp. 691-692.

Those observations applied both to "severance" and "reading down". The present case is not one of "severance" properly so called but one of "reading down" general words so as to restrict their application to matters within constitutional power. If the intention of the Parliament is that a particular law should operate in some only of the matters covered by the words used, then the general words can be read down so as to apply only to such items as are within power. Section 15A operates as a general declaration that such is the intention of the legislature in all Acts but the terms of an individual Act may demonstrate a contrary intention. In the present case I think that the express provision in the opening words strengthens the effect of s. 15A in the sense that it demonstrates that the Parliament has adverted to the possibility that the provisions of s. 32 may extend beyond power and has expressly declared than even if that is so, the provisions shall have effect so far as within power.

Since the power of the Parliament to confer jurisdiction on federal courts is limited to the subject matters specified in ss. 75 and 76, the proper course is to read s. 32 (1) as conferring a jurisdiction limited to such matters falling within ss. 75 and 76 as are "associated" with matters otherwise within the jurisdiction of the Federal Court pursuant to some other Act of Parliament, i.e. in the present case the Trade Practices Act.

An alternative argument was advanced by counsel appearing for the Attorney-General for Queensland. He submitted that the opening words of s. 32 (1) were not designed to limit the operation of the sub-section to matters within power, but were expansive in the sense of demonstrating that the Parliament intended to confer jurisdiction in associated matters to the full extent permitted by ss. 75 and 76. The words would thus be descriptive rather than limiting. That descriptive use would necessarily carry with it the negative implication that nothing other than the matters specified in ss. 75 and 76 could be regarded as "associated" with a matter otherwise within the Federal Court's jurisdiction for the purpose of extending its jurisdiction. On this view the same result is arrived at as in the other argument. On neither view does the section when properly construed purport to go outside power. The former view however expressly involves the exclusion of State matters, i.e. matters arising under or concerning State law and for that reason I prefer it.

In the present case I am therefore of opinion that the opening words of s. 32 (1) produce the result that the phrase "matters not otherwise within its jurisdiction" should be read as meaning "such matters not otherwise within its jurisdiction as fall within the matters referred to in ss. 75 and 76 of the Constitution and are associated etc." On this view the Federal Court has jurisdiction in this case to deal with matters arising under the Copyright Act if they are "associated" with the matter or matters arising under the Trade Practices Act. Whether the facts will demonstrate such an association will be for the Federal Court to determine in the first instance, though ultimately the scope of the word "associated" may come before this Court on some other occasion.

In result therefore I would declare that the Federal Court has no jurisdiction to entertain any part of the proceedings in that Court other than such part as: (1) claims damages and/or injunctions in respect of contraventions of the provisions of the Trade Practices Act; and (2) claims damages and/or injunctions in respect of such infringements of copyright under the Copyright Act as are associated with the matters referred to in (1) above. I would remit the proceedings to the Federal Court for hearing and determination in accordance with these declarations.

Philip Morris Incorporated and Philip Morris Limited v. Adam P. Brown Male Fashions Pty. Limited

This proceeding was instituted in the Federal Court of Australia by a writ of summons dated 6 June 1979 in the Victoria Registry of the Federal Court of Australia. Notice was given under s. 68B of the Judiciary Act 1903 by the defendant that the proceedings involved a matter arising under the Constitution or involving its interpretation. Upon an application made on behalf of the Attorney-General for the State of Victoria so much of the cause numbered VG 20 of 1979 pending in the Federal Court as comprised the claim or claims referred to in par. 15 of the statement of claim indorsed on the writ and which is the subject of the relief sought by paragraphs A (4) and (5) of the relief claimed was removed into the High Court pursuant to s. 40 (1) of the Judiciary Act and the question referred to the Full Court was: "Does the Federal Court of Australia have jurisdiction in respect of that part of the proceeding in the Federal Court of Australia so removed?"

That question was argued before the Full Court at the same time as United States Surgical Corporation v. Hospital Products International Pty. Ltd. but I find it convenient to deal with the two proceedings in separate judgments although much that is material to the decision in this case is already contained in my reasons for judgment in the other matter.

The statement of claim contains a number of allegations concerning trade marks but it appears from the material before the Court and from the argument that the word "Marlboro" was not at any relevant time the subject of any registered trade mark owned by the first plaintiff in respect of the class of goods being sold by the defendant. Paragraph 13 of the statement of claim alleges that by certain acts referred to in par. 12 the defendant in the course of its trade had engaged and was continuing to engage in conduct that was misleading and/or deceptive and had engaged and was continuing to engage in conduct that was likely to mislead and/or deceive. Paragraph 12 alleges that the defendant carried on the business of manufacturing and selling items of wearing apparel and associated goods bearing marks identical with or deceptively similar to the plaintiffs' trade mark in respect of the word "Marlboro" and of a Marlboro label, whether as a word mark or some form of device mark does not appear.

Paragraph 14 of the statement of claim is as follows:

Further by the acts referred to in paragraph 12 hereof the Defendant in the course of its aforesaid trade and commerce and in connection with the supply or possible supply of the said apparel - (a) has represented and is representing that the said apparel has the sponsorship and/or approval of the Plaintiffs or one or other of them whereas none of such apparel had or has such sponsorship or approval; (b) has represented and is representing that the Defendant has the sponsorship and/or approval of and/or is affiliated with the Plaintiffs or one or other of them whereas the Defendant did not have and does not have such sponsorship or approval and was not and is not affiliated with the Plaintiffs or either of them. By par. 15 it is alleged that the defendant has passed off and was continuing to pass off its goods as those of the plaintiffs and further that it had passed off and was continuing to pass off its business as a business approved by or connected with that of the plaintiffs.

Paragraphs A(4) and (5) of the prayer for relief in the statement of claim are as follows:

A. Injunctions (including interim and interlocutory injunctions) restraining the Defendant by itself its servants or agents or otherwise howsoever -

(4) from passing off or enabling to be passed off any items of apparel or other goods not of the manufacture or merchandise of or connected in the course of trade with the Plaintiffs or either of them as and for goods of or connected in the course of trade with the Plaintiffs or either of them;

(5) from passing off or enabling to be passed off the business or any business of the Defendant as and for a business connected or associated with or approved by the Plaintiffs or either of them.

There are other allegations and relief of other kinds is also claimed including relief relating to the trade marks, relating to conduct alleged to be misleading or deceptive or likely to mislead or deceive and/or representing in the course of business and in connexion with the supply of items of apparel that such apparel has the sponsorship or approval of the plaintiffs or either of them, or representing that the defendant has the sponsorship or approval of or is affiliated with the plaintiffs or either of them. No question presently arises concerning any part of such relief.

The statement of claim also contains in par. 20 the following allegation as to the jurisdiction of the Federal Court:

This is an action for damages injunctions and other relief for contraventions of sections 52 and 53 of the Trade Practices Act 1974 (Commonwealth) and as such is within the original jurisdiction of this Honourable Court by virtue of sections 80, 82 and 86 of the Trade Practices Act and section 19 of the Federal Court of Australia Act 1976 and also for damages injunctions and other relief for passing off associated with the aforesaid contraventions and as such is within the original jurisdiction of this Honourable Court by virtue of sections 22 and 32 of the Federal Court of Australia Act 1976.

It will be seen that although this action proceeds upon a somewhat narrower front than that in United States Surgical Corporation v. Hospital Products International Pty. Ltd. the problem which arises is essentially the same in that it seeks to claim jurisdiction in the Federal Court based substantially on ss. 22 and 32 of the Federal Court of Australia Act. So far as s. 22 is concerned I have said in my judgment in that case that s. 22 does not confer jurisdiction and I do not need to add to the reasons there stated.

So far as s. 32 is concerned there is I think nothing which differentiates this case from the United States Surgical Corporation Case, save that there are only two matters raised in this statement of claim. For reasons which I have there given I am satisfied that s. 32 (1) is not constitutionally valid in so far as it purports to confer upon the Federal Court of Australia jurisdiction wider than that there indicated. It is I think clear that there is nothing in the jurisdiction conferred upon the Federal Court by the Trade Practices Act 1974 which enables the Federal Court to entertain an action in respect of the tort of passing off. The claim in respect of passing off is in my view distinct and severable within the meaning of that phrase as used in this context. It is a matter dependent solely on State law.

The present case is not like that which arose in Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. [17] where the Court held that the proceedings were directed to one single matter, namely the establishment of the plaintiff's claim to a registered trade mark. That was a single matter and arose under an Act of the Parliament within s. 76 (ii.) so that the Supreme Court of New South Wales was exercising federal jurisdiction in entertaining the proceeding.

In my opinion the Federal Court has no jurisdiction to entertain the claim made in par. 14 of the statement of claim or to grant the relief sought in pars A (4) and (5).

These two cases were heard together. The facts of each case are set out in the judgments of other members of the Court. In each case the Court is asked to decide whether the Federal Court of Australia has jurisdiction in respect of that part of the proceeding which claims relief other than that provided by the Trade Practices Act 1974, as amended. Although the circumstances of the two cases differ, I find it convenient, having regard to the conclusions to which I have come, to deal with them together.

Section 19 (1) of the Federal Court of Australia Act (1976) provides:

The Court has such original jurisdiction as is vested in it by laws made by the Parliament, being jurisdiction in respect of matters arising under laws made by the Parliament. The provision is an exercise of the power conferred on the Parliament by s. 77 (i.) of the Constitution, and defines the jurisdiction of the Court in terms of "matters arising under laws made by the Parliament" (s. 76 (ii.), Constitution). There is no doubt that each of the cases before us rightly attracts the jurisdiction of the Federal Court, at least insofar as they each seek relief provided under the Trade Practices Act. This is a law made by the Parliament whereby "jurisdiction is conferred on the Court to hear and determine actions, prosecutions and other proceedings under" Pt VI of the Act (s. 86). The section also, in exercise of the power conferred by s. 77 (ii.) of the Constitution, makes this jurisdiction exclusive of State courts.

Part VI of the Act deals with "Enforcement and Remedies". Its principal provisions may be summarily described. It authorizes the Minister or Trade Practices Commission to institute a proceeding in the Federal Court for the recovery on behalf of the Commonwealth of a pecuniary penalty imposed for a breach of a provision of Pt IV dealing with restrictive trade practices (ss. 76 and 77). It provides that a person who contravenes a provision of Pt V (Consumer Protection) other than s. 52 is guilty of an offence punishable on conviction by a fine (s. 79). It empowers the Court to grant an injunction, including an interim injunction, restraining a person from engaging in conduct in contravention of a provision of Pt IV or Pt V (s. 80). A person who suffers loss or damage by conduct of another person in contravention of a provision of Pt IV or Pt V may recover damages from any person involved in the contravention (s. 82). The Court has a number of other powers which may be exercised in respect of contraventions either of Pt IV or Pt. V. Matters of defence are provided by s. 85. It will be observed that the jurisdiction which the Federal Court derives from this Act is wholly statutory. Parts IV and V create the duties and obligations, and Pt VI is an exhaustive enumeration of the remedies that are available in the event of a contravention of any of the provisions of those Parts. The Act provides a code which neither requires nor permits resorts to any other law in the determination of the rights, duties and liabilities which it creates.

If the matter were res integra, I would not hesitate to conclude that the plain meaning of the words of s. 86 was that the Federal Court has jurisdiction to deal with actions, prosecutions and other proceedings under Pt VI, and nothing else. This is what the Act says. Nor would the conclusion be affected if the word "matters" appeared in the section instead of the phrase "actions, prosecutions and other proceedings". With all respect to those who think differently, I am unable to see how those aspects of a suit which rely on the general law to establish the entitlement to the relief claimed can be comprehended, within the ordinary use of language, as forming part of a matter arising under the Trade Practices Act. Such aspects do not in any way depend for their resolution on that Act. They have nothing to do with it. I am fortified in this conclusion not only by the precision with which s. 77 (i.) empowers the Parliament to define the jurisdiction of a federal court, but also by the presence of s. 77 (iii.), and generally by "the principles of interpretation applying to a strictly federal instrument of government" (Collins v. Charles Marshall Pty. Ltd. [18] ).

Furthermore, I am not satisfied that the decisions of this Court dictate a different answer to that which I have propounded by reference to the Constitution itself. Indeed, the earlier decisions would seem to be wholly consistent with it: cf. Miller v. Haweis [19] ; In re Judiciary and Navigation Acts [19a] . In the latter case, it was said by Knox C.J., Gavan Duffy, Powers, Rich and Starke JJ., in a joint judgment, after referring to ss. 75, 76 and 77 of the Constitution [20] :

This express statement of the matters in respect of which and the Courts by which the judicial power of the Commonwealth may be exercised is, we think, clearly intended as a delimitation of the whole of the original jurisdiction which may be exercised under the judicial power of the Commonwealth, and as a necessary exclusion of any other exercise of original jurisdiction. In the same judgment, their Honours made some observations concerning the word "matter" which have been cited with approval in several later cases: It was suggested in argument that "matter" meant no more than legal proceeding we do not think that the word "matter" in s. 76 means a legal proceeding, but rather the subject matter for determination in a legal proceeding. In our opinion there can be no matter within the meaning of the section unless there is some immediate right, duty or liability to be established by the determination of the Court. But it would no doubt be a mistake to confine attention to the meaning of a "matter" in the abstract. Sections 75 and 76 of the Constitution describe a wide range of "matters", each paragraph providing a context which will contribute to the meaning of the word: cf. Latham C.J. in Carter v. Egg and Egg Pulp Marketing Board (Vict.) [21] . Thus a "matter arising under a treaty" (s. 75 (i.)) describes a matter by reference to the nature of the controversy, regardless of who may be the parties to that controversy. On the other hand, a matter in which the Commonwealth is a party (s. 75 (iii.)) identifies a jurisdiction to deal with a matter regardless of its subject-matter, so long as the Commonwealth is suing or being sued. A question which has assumed importance in earlier decisions of this Court has been the scope of a "matter" involving the interpretation of the Constitution (s. 76 (i.)). A grant of original jurisdiction in such matters is not conditioned by any description of subject-matter; any set of facts grounding a claim by reference to any law at all, be it federal or state, imperial or common law, may in pursuit of either claim or defence raise a question requiring the interpretation of the Constitution, and thereby give rise to federal jurisdiction. It is clearly established that when the jurisdiction of the High Court is thereby attracted, the Court is "clothed with full authority essential for the complete adjudication of the matter and not merely the interpretation of the Constitution": Starke J. in R. v. Bevan; Ex parte Elias and Gordon [22] . Given, in such a case, the irrelevance of the subject-matter of the suit, coupled with the well-known difficulties associated with appeals to the Privy Council in federal matters and ss. 38A and 40A of the Judiciary Act, it is not surprising that the Court developed the doctrine that the Court had jurisdiction to dispose of all questions raised for decision in the case save those causes of action or claims for relief which were severable and distinct. "Matter" involving the interpretation of the Constitution received a generous denotation. See R. v. Carter; Ex parte Kisch [23] ; Hopper v. Egg and Egg Pulp Marketing Board (Vict.) [24] ; Carter v. Egg and Egg Pulp Marketing Board (Vict.) [25] ; Parton v. Milk Board (Vict.) [26] . 1. (1907) 5 C.L.R. 89. 2. (1921) 29 C.L.R. 257. 3. (1921) 29 C.L.R., at p. 265. 4. (1942) 66 C.L.R. 557, at p. 579. 5. (1942) 66 C.L.R. 452, at p. 465. 6. (1934) 52 C.L.R. 221, at pp. 223-224. 7. (1939) 61 C.L.R. 665, at pp. 673-674, pp. 680-681. 8. (1942) 66 C.L.R. 557, at p. 580, pp. 585-587, p. 602. 9. (1949) 80 C.L.R. 229, at p. 249, pp. 257-258.

However, a grant of jurisdiction which is referable to s. 76 (ii.) of the Constitution is necessarily dependent on subject-matter, and exclusively so. A matter arising under a law made by the Parliament is a description of the subject-matter for determination in the case. In my opinion, the word "arising" compels a less generous denotation of "matter" in this regard. As Latham C.J. said in Barrett v. Opitz [27] : "a matter may properly be said to arise under a Federal law if the right or duty in question in the matter owes its existence to Federal law or depends upon Federal law for its enforcement". To speak of the matter in terms of a right or duty is too limited. It may comprehend a right, title, duty, privilege, protection or immunity, or matter of defence: cf. Moorgate Tobacco Co. Ltd. v. Philip Morris Ltd. [28] . The important consideration is that the source of the relief claimed or defence asserted must be the federal law. In this regard, see Collins v. Charles Marshall Pty. Ltd. [29] .

1. (1945) 70 C.L.R. 141, at p. 154. 2. (1980) 145 C.L.R., at p. 457. 3. (1955) 92 C.L.R. 529, at p. 540.

Of course, it may be that the nature of the federal law is such that in some cases the grant of relief under it will be dependent upon the resolution of non-federal questions. In such cases, where the federal question cannot be resolved without the determination of the non-federal questions, the concept of "matter" arising under an Act will embrace the whole.

The recent decision of this Court in Moorgate [30] is an illustration of such a case, and I do not think that that decision requires me to come to a different conclusion to that which I expressed at the beginning of these reasons. The case involved the consideration of the nature of the jurisdiction exercised by the Supreme Court of New South Wales invested pursuant to s. 77 (iii.) in respect of a matter arising under a law made by the Parliament (s. 76 (ii.)), in this case the Trade Marks Act 1955. It will be noticed that there are two factors which distinguish it from a case involving the jurisdiction of a federal court defined in terms of s. 76 (ii.). The first is that the Supreme Court is a court of unlimited jurisdiction, save in so far as express statutory provision makes the jurisdiction of the High Court or the Federal Court exclusive of that of the several courts of the States (cf. Judiciary Act 1903, as amended, ss. 38, and 39 (1); Trade Practices Act, s. 86). In the present cases, the Federal Court either has or has not jurisdiction in respect of all the questions raised in each case, depending on the scope of the defined jurisdiction. In Moorgate , there was no doubt that the Supreme Court was seized with jurisdiction to hear and determine the whole case, the issue being whether in respect of some questions it was exercising State or federal jurisdiction. The second point of distinction was the relevance of the question concerning the jurisdiction of the Privy Council to entertain an appeal from the decision. Section 39 (2) (a) of the Judiciary Act precludes such an appeal from any decision given in the exercise of federal jurisdiction. In any case where the questions involved in the case are not severable and distinct from the precise question arising under the federal law, the task of discovering a foothold grounded in the former for an appeal to the Privy Council is as a matter of practical reality fraught with difficulty.

But be these things as they may, it seems to me that the critical factor in Moorgate was the essential relation of the non-federal questions to the issue of proprietorship arising under the Trade Marks Act. Their resolution was directly material to that issue. As was said in the joint judgment of Stephen, Mason, Aickin JJ., and myself [31] :

In this case the proprietorship issues were raised directly for decision on the pleadings, in the relief sought and in the presentation of the applicant's case. Indeed, both the pleadings and the manner in which the case was fought create the strong impression in our minds that registration of the trade mark " golden lights " was the real bone of contention between the parties. What is more, many of the issues which arise in the case under the contract, trust and fiduciary obligation claims would have inevitably arisen for decision in opposition proceedings. In these circumstances we find it impossible to conclude that the issues which arose under the Trade Marks Act were merely an "incidental consideration" They were directly pleaded and asserted by the applicant with a view to obtaining registration of a trade mark. 1. (1980) 145 C.L.R., at p. 457.

In my opinion, the circumstances of the present cases stand in contrast with those of Moorgate [32] . In the first case (Philip Morris Inc. v. Adam P. Brown Male Fashions Pty. Ltd.) the issues raised in respect of the alleged passing off claim have no necessary relation to those issues raised in respect of alleged contraventions of ss. 52 and 53 of the Trade Practices Act. That question therefore is not embraced within the matter arising under the Act. The same is true of the non-federal questions raised in the statement of claim in the second case before us (United States Surgical Corporation v. Hospital Products International Pty. Ltd.).

To this point I have been dealing with the jurisdiction of the Federal Court as it is defined by s. 19 (1) of the Federal Court Act. It remains to refer to other sections in that Act on which some reliance was placed. It was said that the provisions of s. 22 were relevant to the question of jurisdiction. With respect, this is plainly not so. The section is concerned to maximize the relief that can be granted "in every matter before the Court". It is not in terms directed to jurisdiction, and cannot be construed so as to enlarge the range of matters which can properly be brought before the Court.

Then it was said that s. 32 (1) is effective to confer jurisdiction in associated matters, that is to say, matters which, while not in themselves such as would attract the jurisdiction of the Federal Court, nevertheless are associated with matters within jurisdiction. The section is prefaced by the words "to the extent that the Constitution permits", but the Constitution does not permit the Parliament to define the jurisdiction of a federal court otherwise than with respect to any of the matters mentioned in ss. 75 and 76. It follows then that, by reason both of its express words and of the constitutional limits on the legislative power of the Parliament, s. 32 can do no more than to extend the jurisdiction of the Federal Court to include matters of federal jurisdiction which in the particular case are associated with a matter within jurisdiction. So understood, the section can have no operation in the first of the two cases before us, namely, Philip Morris Inc. v. Adam P. Brown Male Fashions Pty. Ltd. Whether or not that is so in the second case, United States Surgical Corporation v. Hospital Products International Pty. Ltd., will depend on whether a claim arises under the Copyright Act 1968 Cth and is a matter associated with a matter arising under the Trade Practices Act.

An attempt was made to sustain a non-federal operation for s. 32 by reference to the incidental legislative power contained in s. 51 (xxxix.) of the Constitution. But this paragraph does not empower the Parliament to extend the judicial power of the Commonwealth beyond the limits prescribed by Ch. III. In this regard, I am content to repeat the words of Knox C.J., Gavan Duffy, Powers, Rich and Starke JJ. in In re Judiciary and Navigation Acts [33] :

Section 51 (xxxix.) does not extend the power to confer original jurisdiction on the High Court contained in sec. 76. It enables Parliament to provide for the effective exercise by the Legislature, the Executive and the Judiciary, of the powers conferred by the Constitution on those bodies respectively, but does not enable it to extend the ambit of any such power. 1. (1921) 29 C.L.R., at p. 265.

In the United States of America, the Supreme Court has established a doctrine recognizing so-called "pendent jurisdiction". This term describes the existence of an implied incidental power referable to the exercise of jurisdiction under Art. III, s. 2 of the Constitution: see Osborn v. United States Bank [34] ; Hurn v. Oursler [35] and United Mine Workers of America v. Gibbs [36] . The last-mentioned case significantly revised and expanded the doctrine, saying that its enunciation in Hurn [37] was "unnecessarily grudging" [38] . However, in my opinion, the trend of American decision does not assist the plaintiffs. The concept of implied incidental power has never taken root in this country. There are major differences between Art. III of the United States Constitution and Chapter III of our Constitution (see Collins v. Charles Marshall [39] ) which diminishes any persuasion which the decisions of the Supreme Court might otherwise exert.

1. (1824) 22 U.S. 738, at pp. 819-824. 2. (1933) 289 U.S. 238 [77 Law. Ed. 1148]. 3. (1966) 383 U.S. 715 [16 Law. Ed. 2d 218]. 4. (1933) 289 U.S. 715 [16 Law. Ed. 2d 218]. 5. (1966) 383 U.S., at p. 725 [16 Law. Ed. 2d at p. 227]. 6. (1955) 92 C.L.R., at pp. 544-546.

In my opinion, therefore, the jurisdiction of the Federal Court does not extend to that part of the proceeding in each case which has been removed into this Court, save, in the United States Surgical Corporation Case, to the possible extent already mentioned by virtue of s. 32. I am conscious of, and burdened by, the consideration that such a conclusion may well not be in the best interests of litigants, who naturally seek convenience and economy in the resolution of their disputes. However, burdened as I am by that consideration, it seems to me that any other decision will not only offend the true intent and operation of the Constitution as established by its proper construction but diminish its effectiveness in maintaining a viable federation. The Constitution itself in s. 77 (iii.) provides the Parliament with a solution to the problem.