ATTORNEY-GENERAL (NEW SOUTH WALES) v BREWERY EMPLOYEES UNION OF NEW SOUTH WALES

6 CLR 469
1908 - 0808A - HCA

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(Judgment by: GRIFFITH CJ)

Between: ATTORNEY-GENERAL (NEW SOUTH WALES)
And: BREWERY EMPLOYEES UNION OF NEW SOUTH WALES

Court:

Judges:
Griffith CJBarton J
O'Connor J
Isaacs J
Higgins J

Subject References:
Constitutional law
Commonwealth legislation
Validity of trade mark laws
Internal trade of State
Interference with
Workers' trade marks
Union label
Registration
Persons aggrieved
Injunction
Industrial law
Intellectual property
Trade Marks

Legislative References:
Trade Marks Act 1905 (Cth) No 20 - Pt VII
Constitution (Cth) - s 51(i); s 51(xviii)

Hearing date: 30 March 1908; 31 March 1908; 1 April 1908; 2 April 1908; 3 April 1908; 6 April 1908; 7 April 1908; 8 April 1908; 9 April 1908; 10 April 1908; 11 April 1908; 8 August 1908
Judgment date: 8 August 1908

Sydney

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Judgment by:
GRIFFITH CJ

This is an action brought by the Attorney-General for the State of New South Wales at the relation of four joint stock companies carrying on the business of brewers in that State, the companies being joined as plaintiffs. The defendants are the Brewery Employes' Union, (which is a trade union, registered as such in New South Wales), and is also an industrial union registered as such under the Industrial Arbitration Act 1901 (N.S.W.), their secretary, and the Commonwealth Registrar of Trade Marks. The plaintiffs claim (1) a declaration that Part VII. of the Trade Marks Act 1905 (relating to workers' trade marks) and the regulations thereunder are null and void and that the defendant Registrar has no authority to keep a register of workers' trade marks under it; (2) a declaration that the registration of a mark or label which has in fact been registered in the register of workers' trade marks is without lawful power or authority; (3) a declaration that this mark or label is not a trade mark; (4) an order to cancel the registration; and (5) an injunction to restrain the defendant Registrar from keeping a register of workers' trade marks. The action is based upon the contention that Part VII. of the Trade Marks Act 1905 is not within the competency of the Commonwealth Parliament.

The defendants contend that the Act is within the competency of Parliament, and further that, even if it is not, the plaintiff companies cannot raise the question in the present action, since no injury has been done to them by the mere registration of the mark, and that the Attorney-General for a State is in no better position.

The first condition of any litigation in a Court of Justice is that there should be a competent plaintiff, i.e., a person who has a direct material interest in the determination of the question sought to be decided. The Court will not decide abstract questions, nor will it decide any question except when raised by some person entitled by reason of his interest to claim a decision. This doctrine should certainly not be relaxed for the purpose of bringing in question the validity of Statutes passed either by the Commonwealth Parliament or by a State legislature. It is, therefore, material to consider and deal with this point before considering the substantial point of the validity of Part VII. of the Act. For, if the plaintiffs are not entitled to ask for a decision, any opinion of the Court given at their instance would be extra-judicial.

For the purpose of dealing with this objection it must be assumed that Part VII. of the Act is invalid, and that the keeping of the register of workers' trade marks under it is an assertion of authority unauthorized by law.

Parts III., IV., V. and VI. (secs. 15 to 73) of the Trade Marks Act follow in the main the lines of the English Trade Marks Act 1905. The definition of a trade mark uses the word "distinctive," but there is no formal definition of the word itself, as in sec. 9 of the English Act. Provision is made, as in the English Act, for rectification of the register on the application of any person aggrieved (sec. 71), but this provision does not apply to the mark in question. Part VII. (secs. 74 to 77) is headed "Workers' Trade Marks."

Sec. 74 is as follows:

"74(1)

No person shall-

(a)

falsely apply to any goods for the purpose of trade or sale; or

(b)

knowingly sell or expose for sale, or have in his possession for sale or for any purpose of trade or manufacture, any goods to which there is falsely applied; or

(c)

knowingly import into Australia any goods not produced in Australia to which there is applied a mark which is a distinctive device, design, symbol, or label registered by any individual Australian worker or association of Australian workers corporate or unincorporate for the purpose of indicating that articles to which it is applied are the exclusive production of the worker or of members of the association (and which mark is hereby declared to be a workers' trade mark), or any mark substantially identical with a registered workers' trade mark, or so nearly resembling it as to be likely to deceive.

(2)

The workers' trade mark is falsely applied unless in truth-

(a)

the goods to which it is applied are exclusively the production of the worker or of members of the association; or

(b)

The goods to which it is applied are in part but not exclusively the production of the worker or of members of the association, and the mark is applied in such a manner as clearly to indicate that its application does not refer to, describe, or designate the parts of the goods not being the production of the worker or of members of the association; and

(c)

The mark is applied to the goods (being goods produced in Australia) by the employer for whom they are produced, or, with the authority of the employer by the worker or a member of the association registering the mark.

(3)

In this section- `Association' includes any number of associations acting together, and in such case the members of the `association' shall be the members of the associations which are acting together; `Production' means production, manufacture, workmanship, preparation or product of labour; `Produced' has a meaning corresponding with `production.' Penalty: Fifty pounds, in addition to any liability to forfeiture provided by law."

Sec. 75 provides that:

"(1)

A worker or association may register a workers' trade mark in the prescribed manner and shall thereupon be deemed the registered proprietor thereof, and be entitled to institute legal proceedings to prevent and recover damages for any contravention of this Part in respect of that trade mark.

(2)

A workers' trade mark may be removed from the register for the causes and in the manner prescribed, and subject thereto the registration of the trade mark shall continue for fourteen years, at the expiration of which it shall cease unless renewed in the manner prescribed.

(3)

A workers' trade mark shall not be capable of assignment either by act of the parties or by operation of law.

(4)

Parts III., IV., V. and VI. of this Act shall not apply in relation to workers' trade marks.

(5)

A workers' trade mark shall not be registered if it is substantially identical with any registered trade mark within the meaning of this Act or so nearly resembles it as to be likely to deceive."

The respondent union, taking advantage of this provision, have obtained the registration of a mark or label as a workers' trade mark, as to which it is sufficient to say that in form it is such that, but for its registration, a mark very like it might be registered under the Act as the trade mark of the plaintiff companies collectively, or by any of them separately. When I say "very like," I mean so like that, if the defendants' mark is valid, a mark so used by the plaintiffs would be likely to deceive. The plaintiffs, other than the Attorney-General, contend that under the circumstances they are aggrieved by the unauthorized registration of such a mark. They support this contention on two grounds. They say, first, that if provision had been made in this part of the Act for a summary application for rectification of the register by the removal of an unauthorized mark at the instance of "persons aggrieved," they would come within that expression as interpreted in the case of Powell v Birmingham Vinegar Brewery Co ((1894) A.C., 8); s.c. sub nomine In re Powell's Trade Mark ((1893) 2 Ch., 388), and that they are equally aggrieved, and equally entitled to invoke the aid of the Court to redress their grievance, whether provision is or is not made in the Act for a special and summary remedy. In the second place they allege in their statement of claim-which is admitted for the purpose of this case-that the registration and user of the defendant Union's mark will injure and interfere with them in carrying on their business and in selling their goods and in employing labour. This statement of damage is amplified in the particulars delivered by the plaintiffs as follows:-

(a)

It will compel the plaintiffs (other than the Attorney-General) to allow the use of the mark on their goods or lose business with members of the said Brewery Employes' Union of New South Wales or persons licensed by it to use the said mark or in sympathy with the said Union.

(b)

Many people who now buy the plaintiffs' (other than the Attorney-General's) goods will refuse so to do if the said mark were used on the said goods: others if the mark were not used.

(c)

It will prevent the plaintiffs (other than the Attorney-General) from or render it difficult for the plaintiffs (other than the Attorney-General) to employ workmen unless members of the said union or persons licensed by it to use the said mark.

(d)

It will prevent the plaintiffs (other than the Attorney-General) using the same or a similar design.

(e)

It will render the plaintiffs (other than the Attorney-General) liable to actions and prosecutions for the infringement of the said mark.

I will deal with these contentions separately. In Powell's Case ((1894) A.C., 8, at p. 10), in which the question was whether the appellant was aggrieved by the registration as a trade mark of the words "Yorkshire Relish," Lord Herschell L.C. said:-

"My Lords, the first question raised is whether the respondents were `persons aggrieved' within the meaning of the 90th section of the Trade Marks Act of 1883. That section provides that: `The Court may on the application of any person aggrieved ... by any entry made without sufficient cause in any such register' (that is, a `register kept under this Act') `make such order for expunging or varying the entry as the Court thinks fit.' The respondents are in the same trade as the appellant; like the appellant, they deal amongst other things in sauces. The Courts below have held that the respondents are `persons aggrieved.' My Lords, I should be very unwilling unduly to limit the construction to be placed upon these words, because, although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many persons may be affected who nevertheless would not be willing to enter upon the risks and expense of litigation. Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and whenever the trade mark if remaining on the register would or might limit the legal rights of the applicant so that by reason of the existence of the entry upon the register he could not lawfully do that which but for the appearance of the mark upon the register he could lawfully do, it appears to me that he has a locus standi to be heard as a `person aggrieved'."

In the same case Lord Watson said ((1894) A.C., 8, at p. 12):-

"In disposing of the appellant's contention that the respondents were not `aggrieved persons,' it appears to me that the Courts below proceeded on the right construction of sec. 90 of the Act of 1883. In my opinion, any trader is, in the sense of the Statute, `aggrieved' whenever the registration of a particular trade mark operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must entail a corresponding disadvantage upon a trader who might possibly have had occasion to use the mark in the course of his business. It is implied, of course, that the person aggrieved must manufacture or deal in the same class of goods to which the registered mark applies, and that there shall be a reasonable probability of his finding occasion to use it. But the fact that the trader deals in the same class of goods and could use it, is prima facie sufficient evidence of his being aggrieved, which can only be displaced by the person who registered the mark, upon whom the onus lies, showing that there is no reasonable probability that the objector would have used it, although he were free to do so. That reading of the Statute appears to me to be in substantial conformity with the construction adopted by the Court of Appeal in In re Riviere's Trade-mark (26 Ch. D., 48), and also in In re Apollinaris Company's Trade-marks ((1891) 2 Ch., 186)."

In the Court of Appeal Bowen L.J. had said ((1893) 2 Ch., 388, at p. 406):-

"Persons who are aggrieved are persons who in some way or other are substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained. It is very difficult to frame a nearer definition than that. In the Apollinaris Case ((1691) 2 Ch., 186), it was pointed out, not as a complete or exhaustive definition, that people would be aggrieved if they are in the same trade and dealt in the same article. To my mind, it is equally true that persons would be aggrieved if they are in the same trade, and might reasonably be expected to deal in the same article, though not prepared to prove at the moment that they had formed a clear determination to do so. Supposing that this mark ought not to be on the register, it hampers those who are in the trade and who might wish to consider the question of embarking in another branch of the trade if lawfully entitled to do so. It would be, to my mind, an unbusinesslike construction to place on the term `aggrieved,' to say that it could only be applicable to those who actually had formed a fixed and crystallized intention of dealing in the particular article if permitted to do so. If a man is hampered in his arrangements of business matters in the future by the fact that a trade mark is on the register which ought not to be there, he is a person who, to my mind, is sufficiently aggrieved to come within the section."

These are, in my opinion, authoritative and binding commentaries upon the meaning of the term "person aggrieved" as used in the English Trade Marks Act. But the word "aggrieved" was not treated as having a special meaning in that Statute. Whether a person is aggrieved or not by the act of another depends upon the nature of the act complained of and the manner in which it will affect the complainant. The form of procedure to be adopted to obtain any relief to which he may be entitled is quite irrelevant to the question whether he is entitled to any relief. In my opinion, therefore, the plaintiffs in the present case are persons aggrieved by the registration complained of, just as in Powell's Case ((1894) A.C., 8), in the sense that it hampers them in carrying on their business with the freedom which they are entitled to enjoy in the absence of any valid legislation restraining it. This is of itself sufficient to give them a locus standi to appeal to a Court of Justice for redress of the grievance and for prevention of the continuance of the wrongful act which works the grievance; and, if no other appropriate remedy is provided, the remedy is by action.

With regard to the second ground of the plaintiffs' contention it appears to me that they are free by the law of the land to carry on their business and offer their goods for sale without publishing to the world any statement as to the persons whom they have employed in the production, and that any interference with this freedom which may operate to their prejudice is unlawful unless justified by Statute.

It is said that the registration of the mark in question and its use by other rival traders would not have any such prejudicial effect, since the plaintiffs themselves might acquire the right to use it. But, since they could only do so by the exclusive employment of members of the defendant Union, it is plain that they are interfered with to this extent-that they are no longer free to compete with rival traders on the same terms as before. They must either use or abstain from using the mark. The user or non-user are of equal significance. They are, therefore, obliged to inform their customers that they do or do not exclusively employ persons who are members of the defendant Union, and this information may be of great importance in the opinion of a large class of persons to whom they look for custom. It was suggested that such an interference is so trivial that the Court should disregard it, which seems a singular argument to use in a case in which the right to the mark has been so long and so strenuously contested. In my opinion, this interference with freedom is substantial, and is, unless authorized by some positive law, unlawful and actionable. To use the words of Holt C.J. in Ashby v White (Raym. (Ld.), 938, at p. 955):-

"A damage is not merely pecuniary, but an injury imports a damage, when a man is thereby hindered of his right";

of which he gives many illustrations. I think, further, that the injury is a particular injury to every person whose freedom is so interfered with, and that every such person may maintain an action for an injunction to restrain the interference.

Assuming, however, that the individual plaintiffs are not entitled to maintain the action, I will proceed to consider whether the Attorney-General for the State is entitled to maintain it as against the defendant Registrar.

It was not contested in argument that if the Commonwealth having no authority at all to deal with the subject matter of trade marks, had nevertheless purported to set up a register of trade marks, the office of the Registrar is such that a quo warranto would lie against him. But it was said that in such a case the quo warranto could only be brought by the Attorney-General of the Commonwealth. Quo warranto is not the appropriate remedy in the present case, because the appointment of a Registrar of Trade Marks is admittedly authorized by the Constitution, and the objection is not to the unwarranted assumption of the office, but to the assumption of functions which do not lawfully appertain to it. In Mr. Shortt's book on Informations it is said that in such a case the appropriate remedy is injunction or prohibition (page 132). It is clear that in such a case there must be some way of preventing, and not merely of punishing, the illegal assumption of authority. It would appear from Coke's Entries that in ancient times the process of quo warranto was applied in cases of the assumption by a lawful corporation of functions not within the terms of its franchise. There is no modern instance of the use of the writ for this purpose, but it is now settled that, in any case when a public corporation claims to exceed its powers in respect of a subject matter of such a nature that the excess tends to the injury of the public, the Attorney-General can maintain an action to restrain the excess: London County Council v Attorney-General ((1902) A.C., 165); Attorney-General v Shrewsbury (Kingsland) Bridge Co (21 Ch. D., 752); Attorney-General v London and North Western Railway Co ((1900) 1 Q.B., 78). In my judgment this doctrine applies to any person holding a public office who claims to exercise functions which are not authorized by law and are in their nature injurious to the public or to members of the public. As to the contention that the proper Attorney-General to sue is the Attorney-General of the State by whose law the corporation or officer claims to be authorized, I think it is founded on a misconception. The ground of the Attorney-General's right to interfere is a common injury to the public, and it appears to me that, if a person claims to be authorized by law to exercise some public function which is in fact not authorized by law and is injurious to the public of a State, the Attorney-General for the State may sue to protect the rights of the public of the State.

For these reasons I am of opinion that this action is properly instituted.

I proceed to consider the much more difficult question whether Part VII. of the Trade Marks Act is within the competency of the Parliament.

It should not be necessary to point out that the question for our determination is neither whether it is expedient that an obligation should be laid upon employers to inform their customers that they do or do not employ and but union labour, nor whether it is expedient that the Federal Parliament should have power to lay such an obligation upon them. The sole question is whether under the Constitution the power to lay such an obligation has been conferred upon the Commonwealth or is retained by the States exclusively. This Court has no concern with the expediency either of granting such a power to the Commonwealth or of its exercise. Its duty is limited to an examination of the Constitution and a declaration of its meaning. It would indeed be a lamentable thing if this Court should allow itself to be guided in the interpretation of the Constitution by its own notions of what it is expedient that the Constitution should contain or the Parliament should enact. Section 51 of the Constitution authorizes the Parliament "to make laws for the peace, order, and good government of the Commonwealth with respect to (i.) Trade and commerce with other countries, and among the States; ... (xviii.) Copyrights, patents of inventions and designs, and trade marks." The Act now in question purports to be an exercise of the last mentioned power.

The plaintiffs contend that the "workers trade mark" authorized by Part VII. to be registered by an association of workers is not a trade mark at all in the sense in which that word is used in the Constitution. The defendants answer that the mark in question is a mark; that it is to be used in connection with trade, which includes manufacture and production; and that this is sufficient to bring the Act within the power. Now, while there is no doubt that within the ambit of its powers the Parliament is supreme, it has no authority whatever beyond that ambit. It is necessary, therefore, to consider the nature of the authority conferred by sec. 51 (xviii.). Whatever that authority may be, it is for the Parliament, and not for the Court, to prescribe the mode of its exercise. But it is for this Court to determine, when its interposition is sought, whether an asserted authority is or is not conferred by the Constitution.

The meaning of the terms used in that instrument must be ascertained by their signification in 1900. The Parliament cannot enlarge its powers by calling a matter with which it is not competent to deal by the name of something else which is within its competence. On the other hand, it must be remembered that with advancing civilization new developments, now unthought of, may arise with respect to many subject matters. So long as those new development relate to the same subject matter the powers of the Parliament will continue to extend to them. For instance, I cannot doubt that the powers of the legislature as to posts and telegraphs extend to wireless telegraphy and to any future discoveries of a like kind, although in detail they may be very different from posts and telegraphs and telephones as known in the nineteenth century. An instance of a quite different kind of subject matter is immigration, the meaning of which term cannot alter, however the methods of bringing persons within the geographical limits of the Commonwealth may be extended.

We have then to choose between these two conflicting lines of reasoning, and to say whether the term "trade marks" used as defining a subject matter of legislation is to be taken in the wider or more limited sense. Apart from any light thrown on the question by the history of the use of the word in legislation or otherwise, it might be contended with much force that the term means "a mark used in connection with trade," the term "trade" being, perhaps, limited to the exchange of vendible articles by way of commerce. If this view is accepted, the Parliament has absolute authority to prescribe

(1)

whether any marks be so used at all;

(2)

what marks may be so used;

(3)

whether certain marks must be so used;

(4)

by whom any marks may be so used;

(5)

by whom any marks must be so used;

(6)

the signification to be given to any particular mark;

(7)

the conditions of the particular trade upon which the right or obligation to use the mark shall depend.

Such authority would undoubtedly involve a very large power of interference with the conditions of domestic trade, but that is no objection if the authority is given.

If, on the other hand, the term "trade mark" is interpreted strictly according to the definitions which had been given in English Courts before the year 1900, the result would be that, although new kinds of marks and new purposes to which marks of the old kind may be applied may be, and indeed have been, devised since that time, the authority of Parliament is limited to dealing with the particular kind of trade mark then known, and to the use of trade marks for the particular purposes then recognized, with the result that all new developments of the subject matter would fall within the domain of State legislation.

Each of these views appears to lead to consequences which prima facie could not have been intended. Our duty is to find, if we can, some construction which is in harmony with the general scheme of the Constitution.

I proceed to examine the language of the Constitution with this object.

The power to legislate with respect to "trade and commerce" conferred by sec. 51 (i.) is not unlimited. In the case of United States v De Witt (9 Wall., 41, at p. 43) Chase C.J., delivering the judgment of the Supreme Court, said:-

"That Congress has power to regulate commerce with foreign nations and among the several States, and with the Indian tribes, the Constitution expressly declares. But this express power to regulate commerce among the States has always been understood as limited by its terms, and as a virtual denial of any power to interfere with the internal trade and business of the separate States; except, indeed, as a necessary and proper means for carrying into execution some other power expressly granted or vested."

This doctrine has been the foundation of a great number of decisions as to the validity of the legislation of Congress, and it has never been doubted.

The same doctrine follows from the literal words of sec. 51 (i.) of the Australian Constitution, which confers the grant of power, not in general terms, but only as to "trade and commerce with other countries, and among the States." This is, emphatically, an instance in which the rule expressio unius exclusio alterius must be applied.

It follows that the power does not extend to trade and commerce within a State, and consequently that the power to legislate as to internal trade and commerce is reserved to the State by the operation of sec. 107, to the exclusion of the Commonwealth, and this as fully and effectively as if sec. 51 (i.) had contained negative words prohibiting the exercise of such powers by the Commonwealth Parliament, except only, in the words of Chase C.J., "as a necessary and proper means for carrying into execution some other power expressly granted." It follows that, in order to warrant such an interference with the trade and commerce of a State as would be authorized by the extended meaning claimed for the words in question, it must be shown that such a power of interference is a necessary and proper means of carrying into execution the power to legislate as to trade marks. If such an invasion of the exclusive powers of the States was intended, it is strange that the power should have been conferred in language which seems at first sight so inadequate for the purpose.

In my opinion, it should be regarded as a fundamental rule in the construction of the Constitution that when the intention to reserve any subject matter to the States to the exclusion of the Commonwealth clearly appears, no exception from that reservation can be admitted which is not expressed in clear and unequivocal words. Otherwise the Constitution will be made to contradict itself, which upon a proper construction must be impossible.

I turn now to sub-sec. (xviii.), as to which the first observation that occurs is that trade marks are grouped with copyrights and patents of inventions and designs, the whole forming a class of property of a special kind, in the nature of monopoly, and as to which before 1900 an International Convention had been made between Great Britian and other countries, to which Convention three of the Australian Colonies had become parties. So far as regarded any future Convention it was obviously necessary that the subject matter should be under the control of the Commonwealth. This, read with sub-sec. (i.) suggests that the concept of a trade mark as used in sec. 51 had primarily nothing to do with the details of internal trade and commerce.

In the case of Attorney-General for Quebec v Queen Insurance Co (3 App. Cas., 1090, at p. 1100) in which the question for consideration was the meaning of the term "direct taxation" under the British North America Act, Sir G. Jessel M.R., delivering the opinion of the Judicial Committee, said:-

"Now, here again we find words used which have either a technical meaning or a general, or, as it is sometimes called, a popular meaning. One or other meaning the words must have; and in trying to find out their meaning we must have recourse to the usual sources of information, whether regarded as technical words, words of art, or words used in popular language."

The learned Master of the Rolls then proceeded to apply this test, and considered the words first as words of art and then as words used in popular language. I propose to follow the same course.

First, then, what was the meaning of the term "trade mark" in 1900 regarded as a term of art?

Before the year 1837 very few cases are reported in which this term or any analogous term was used, and in none of them, so far as I know, was it used as a term of art. In Blanchard v Hill (2 Atk., 484, at p. 485) Lord Hardwicke L.C., said:-

"Every particular trader has some particular mark or stamp; but I do not know of any instance of granting an injunction here, to restrain one trader from using the same mark with another."

In Motley v Downman (3 My. & C., 1, at p. 16), which was a suit for an injunction to restrain the use by the defendants of a mark "MC," which the plaintiff was in the habit of using to distinguish tin plates made at his works, Lord Cottenham L.C. said:-

"The case, then, is, that a person who, as tenant of particular works, had derived the benefit of using the distinguishing mark employed for the purpose of marking the goods made there, quits the premises, and establishes a similar manufactory elsewhere, and there, after his lease of the previous works has expired, uses the mark which he had obtained the right to use, or at least the benefit of using, by being tenant of those works; and then he says to the landlord of those works, `Not only have I acquired the right to the use of this mark, but you have lost the right to the use of it.' "

It will be noticed that the learned Lord Chancellor used the words "mark" and "distinguishing mark," but not the term "trade mark." Millington v Fox (3 My. & C., 338), which came before Lord Cottenham in 1838, is the first instance of an injunction being granted to restrain the use of a tradesman's distinguishing mark. The bill alleged that the steel manufactured by the plaintiffs "had always been distinguished by certain marks upon the bars or pieces of steel so manufactured" and asked for an injunction to restrain the defendant from "stamping steel with the before-mentioned names or marks." The term "trade mark" does not seem to have been used in the pleadings or in the argument. Up to this time, therefore, it would seem that the term was not known in English law as a term of art. It had been, as said by Lord Hardwicke, the practice of traders to use their own marks to denote their goods, and from early times certain marks used in trade had been the subject of legislation in England, principally with regard to gold and silver plate and cutlery. The main object of this legislation appears to have been to protect the public by requiring a mark to be used as a warranty of quality, which, if false, could be traced to the trader responsible for it. It is very likely that these marks were colloquially spoken of as trade marks, although we are not referred to any instance of such use. Such legislation was undoubtedly legislation prescribing conditions of internal trade.

The term "trade mark" is found in English legislation for the first time in the Merchandise Marks Act 1862 (25 & 26 Vict. c. 88). That Act, the preamble of which recited that it was expedient to amend the law relating to the fraudulent marking of merchandize and to the sale of merchandize falsely marked for the purpose of fraud, contained various provisions for punishing the fraudulent use of trade marks. That term was to include "any and every such name, signature, word, letter, device, emblem, figure, sign, seal, stamp, diagram, label, ticket, or other mark as aforesaid lawfully used by any person to denote any chattel, or (in Scotland) any article of trade, manufacture, or merchandize, to be an article or thing of the manufacture, workmanship, production, or merchandize of such person, or to be an article or thing of any peculiar or particular description made or sold by such person, and shall also include any name, ... mark, or sign which in pursuance of any Statute or Statutes for the time being in force relating to registered designs is to be put or placed upon or attached to any chattel." Up to this time a trade mark had not in England been treated in Courts of Justice as being itself a substantive subject of property, and the definition given in the Act probably included any possible mark or sign that had been used to distinguish one trader's goods from another's. I think that it is not unreasonable to infer that after the passing of this Act the term "trade mark" came to have in England a meaning substantially the same as, if not identical with, this definition, but whether the word had come to be regarded as a term of art or not is not easy to say. The Act of 1862, with or without provisions for registration, was adopted by all the Australian Colonies except Western Australia. In 1875 the Act 38 & 39 Vict. c. 91 was passed which established a register of trade marks as defined by the Act, and provided that after 1st July 1876 a person should not be entitled to institute proceedings for the infringement of a trade mark as defined by the Act unless such mark was registered. The idea of property in a trade mark is here for the first time suggested in the Statute book. It had already in the interval been accepted in the Courts, in a case to which I will directly refer.

Sec. 10 was as follows:-

"10. For the purposes of this Act:

A trade mark consists of one or more of the following essential particulars; that is to say,

A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner; or

A written signature or copy of a written signature of an individual or firm; or

A distinctive device, mark, heading, label, or ticket;"

and there may be added to any one or more of the said particular any letters, words, or figures, or combination of letters, words, or figures; also "Any special and distinctive word or words or combination of figures or letters used as a trade mark before the passing of this Act may be registered as such under this Act." It will be observed that other marks, which were trade marks within the meaning of the Act of 1862, but were not trade marks within the Act of 1875, and were therefore not capable of registration, were left with such protection as they had before. I do not think that this Act effected any change in the general meaning of the term "trade mark," whether regarded as a term of art or as a popular term.

In 1883 the Patents Designs and Trade Marks Act (46 & 47 Vict. c. 57) was passed. That Act repealed the Act of 1875 and made other provisions for the registration of trade marks, but preserved the definition of a trade mark in terms which, for the present purpose, were substantially the same as in the Act of 1875. By sec. 103 Her Majesty was empowered to make arrangements with foreign States for the mutual protection of patents, designs, and trade marks on certain conditions, and by sec. 104 the advantages of sec. 103 might be extended to British Possessions. This Act was adopted in several of the Australian Colonies before 1900.

In 1884 Her Majesty acceded to an "International Convention for the protection of industrial property," which had been made in 1883 between several other nations. This convention extended to trade marks, which were described in the French of the original Convention as marques de fabrique and marques de commerce. The first paragraph of Article VI., according to the English version, provided that "every trade mark duly registered in the country of origin shall be admitted for registration, and protected in the form originally registered in all the other countries of the Union." The final protocol to the convention declared that par. 1 of Article VI. was "to be understood as meaning that no trade mark should be excluded from protection in any State of the Union from the fact alone that it does not satisfy, in regard to the signs composing it, the conditions of the legislation of that State (scilicet as to registration); provided that on this point it comply with the legislation of the country of origin, and that it had been properly registered in said country of origin," and proceeded: "With this exception, which relates only to the form of the mark, and under reserve of the provisions of the other Articles of the Convention, the internal legislation of each State remains in force." The Convention applied, therefore, to registered trade marks only. It is to be observed that it was not thought necessary to define the meaning of the terms marque de fabrique and marque de commerce, the only declaration made on the subject being that the form of the mark was not to be material. The substantial character of the thing, or, in other words, the concept denoted by the term, was not treated as requiring definition. In my judgment this Convention affords strong, if not conclusive, evidence that by 1884 the term "trade mark" and the corresponding foreign terms had acquired a definite and accepted meaning in commerce. That meaning, however, did not include every mark which would be a trade mark within the meaning of the English Act of 1862, for Article VIII. of the Convention provided that a trade name (which was a trade mark for the purpose of that Act) should be protected in all the countries of the Union without necessity of registration, whether it did or did not form part of a trade mark.

What then was this meaning? We find, in the first place, that a trade mark was regarded as forming a kind of property called "industrial property," and that a trade name was regarded in the same way. There was thus recognized a new kind of incorporeal right, being a right of persons with regard to articles of commerce, the substance of the right being the advantage to be derived from making known to possible customers the fact that the articles were articles with which the owner of the mark was in some way connected. In the Act of 1862 the connection was described in the words "used by any person to denote any chattel, or (in Scotland) any article of trade, manufacture, or merchandize, to be an article or thing of the manufacture, workmanship, production or merchandize of such person." In the dictionary of the French Academy under the word "marque" it is said:-

"'Marque.' II se dit particulierement, dans le Commerce d' un chiffre, d' un caractere, d'une figure quelconque appliquee par empreinte ou autrement sur differentes sortes de merchandises, soit pour designer le lieu ou elles ont ete fabriquees, le fabricant qui les a faites, ou le marchand qui les vend; soit pour attester qu' elles ont ete visitees par les preposes charges de leur fair acquitter les droits. La marque de la fabrique. La marque de la douane. La marque de l' orfeore. La marque du controle. La marque du fabricant, du marchand, de l' ouvrier ... L' ouvrier a mis sa marque a son ouvrage."

There were, then, two substantive elements at least involved in the concept of a trade mark at this time, one, that the mark was itself the subject of a proprietary right, the other, that the owner of that right must have some connection with the articles upon which the mark was used.

In 1887 the Merchandise Marks Act (50 & 51 Vict. c. 28) was passed, by which the Act of 1862 was repealed and other provisions were substituted. In this Act the meaning of the term "trade mark" is limited to marks registered under the Act of 1883 or entitled to protection under a Convention made under sec. 103 of the latter Act. Other marks used in commerce are grouped under the term "trade description," the meaning of which is sufficiently wide to include all the marks called trade marks for the purposes of the Act of 1862.

I think that this Act affords some evidence that the term "trade mark" was no longer in common use in the wide sense in which it was used in the Act of 1862. I will now refer to some instances in which the meaning of the word was discussed by the English Courts before 1900.

In the case of the Leather Cloth Co v American Leather Cloth Co (4 D. J. and 8., 137; 33 L.J. Ch., 199) Lord Westbury L.C. laid down for the first time the doctrine that the jurisdiction of the Court in the protection given to trade marks rests upon property, and that the Court gives relief by injunction because that is the only way by which such property can be effectively protected. In the same case, on appeal to the House of Lords, Lord Cranworth said (11 H.L.C., 523, at p. 533):-

"The right to a trade mark is a right closely resembling, though not exactly the same as, copyright. The word `property' when used with respect to an author's right to the productions of his brain, is used in a sense very different from what is meant by it when applied to a house or a watch. It means no more than that the author has the sole right of printing or otherwise multiplying copies of his work. The right which a manufacturer has in his trade mark is the exclusive right to use it for the purpose of indicating where, or by whom, or at what manufactory, the articles to which it is affixed was manufactured. If the word `property' is aptly used with reference to copyright, I see no reason for doubting that it may with equal propriety be applied to trade marks."

Lord Kingsdown said (11 H.L.C., 523, at p. 538):-

"A man may mark his own manufacture, either by his name, or by using for the purpose any symbol or emblem, however unmeaning in itself, and if such symbol or emblem comes by use to be recognized in trade as the mark of the goods of a particular person, no other trader has a right to stamp it upon his goods of a similar description. This is what I apprehend is usually meant by a trade mark, just as the broad arrow has been adopted to mark Government stores, a mark having no meaning in itself, but adopted by and appropriated to the Government."

I have already shown that by 1883 the right had come to be generally known as a species of "industrial property."

In Edwards v Dennis (20 Ch. D., 454, at p. 473), a case under the Act of 1875, Cotton L.J. said:-

"A trade mark is a mark used in trade to distinguish the goods of the person who uses it," and again, "The person with whom the Act is dealing is a person who would have been entitled under the old law to bring an action for the infringement of his trade mark, that is to say, a trade mark actually used by him. The first section therefore assumes that it is dealing with a person who is using his trade mark."

In the same case Lindley L.J. said (30 Ch. D., 454, at p. 476):-

"Pushed to an extreme the argument means this-that a man having no business at all by simply registering a trade mark acquires the exclusive right to use it. That construction of the Act seems so irrational that I cannot adopt it. A trade mark has no sense except in connection with trade. ... The argument is based upon the expression in the 2nd section of the Act that `a trade mark must be registered as belonging to particular goods, or classes of goods.' No doubt the Act is so expressed; but does it mean that there is to be registration irrespective of the fact as to whether the person registering manufactures any goods or not? In my opinion it is perfectly ridiculous to suppose it means that a trade mark is to be registered as belonging to goods which the man does not manufacture at all. It must mean that the mark is to be registered, not in connection with nothing, but in connection with the particular trade in respect of which he desires to use it."

In In re Wood's Trade Mark (32 Ch. D., 247, at p. 259) Lindley L.J. said:-

"What is meant by a distinctive trade mark? It must mean some mark which distinguishes the goods to which it is attached as those made or sold by the person who uses the mark."

Fry L.J., referring to the definition of a trade mark in the Act of 1875, said (32 Ch. D., 247, at p. 262):-

"It appears to me that to satisfy the requirements of that definition the word or words must be distinctive in this sense, that they distinguish the manufacture of the person who has registered the trade mark from the manufacture of all other persons. I say `manufacture,' but of course there may be cases in which they distinguish, not the manufacture, but the selection, or some other operation, upon the goods. But in all cases the word or words must distinguish the product of the person claiming the trade mark from the product of all other persons."

In In re Australian Wine Importers, Ltd (41 Ch. D., 278, at pp. 280, 281) Kay J. said:-

"It seems to me that in all these cases there is a most singular ignoring of the meaning of a trade mark. What does a trade mark mean? It means that the mark under which a particular individual trades, and which indicates the goods to be his goods-either goods manufactured by him or goods selected by him, or goods which, in some way or other, pass through his hands in the course of trade. That is the meaning of a trade mark. It is a mode of designating goods as being the goods which have been, in some way or other, dealt with by A.B., the person who owns the trade mark."

The learned Judge there uses the words "dealt with" to express the connection between the goods and the owner of the mark to which I have already referred.

In Re Sykes & Co 's Trade Marks (43 L.T., 626), Hall V.C. held (indeed the point does not seem to have been contested) that a person who carried on the business of a bleacher in Scotland was entitled to have a trade mark registered. As I understand the case, the applicant carried on a separate and independent business of bleaching the goods of other persons. In Richards v Butcher ((1891) 2 Ch., 522) the actual question for decision was whether the words "Monopole" and "Dry Monopole" had been used as trade marks before the passing of the Act of 1875. But the language of the learned Lords Justices shows the sense in which the word trade mark was used at that time. Lord Esher M.R. said ((1891) 2 Ch., 522, at p. 543):-

"Now, what constitutes the use of anything `as a trade mark?' Not the mere use of it, but the use of it in a particular way, and with a particular result. You use the thing `as a trade mark,' if you use it in business, or, as is often said, in the market, as a mark to denote your goods, and to distinguish them from the goods of anyone else. You use it, not merely as a writing, but as a mark in the market, and you must show that you used it in the market for the purpose of distinguishing your goods, and, I think, you must also show that the market accepted it as a distinguishing mark of your goods-then you use it as your `trade mark."'

In my opinion it follows, from a consideration both of the Statute law of England and the Australian Colonies up to 1900 and of the authoritative expositions of the law with respect to trade marks in British Courts of Justice, that, whether the term "trade mark" as used in sec. 51 (xviii.) of the Constitution is to be regarded as a term of art or as a word used in popular language, it did not in that year denote every kind of mark which might be used in trade or in connection with articles of trade and commerce, but meant a mark which is the visible symbol of a particular kind of incorporeal or industrial property consisting in the right of a person engaged in trade to distinguish by a special mark goods in which he deals, or with which he has dealt, from the goods of other persons.

This concept includes in my opinion five distinct elements:-

(1)

A right which is in the nature of property;

(2)

The owner of the right must be a person, natural or artificial, engaged in trade;

(3)

The right is appurtenant or incident to the dealing with goods in the course of his trade;

(4)

The owner has such an independent dominion over the goods to which the mark is to be affixed as to entitle him to affix it to them; (It is not material whether this right is incident to his possession of the goods or arises under an agreement with the owner of them.)

(5)

The mark distinguishes the goods as having been dealt with by some particular person or persons engaged in trade; (I use the word "particular" not as meaning that the person in question is indicated nominatim, but as indicating that he is a person who has an independent individual right with respect to the goods in question, and who is capable of ascertainment upon inquiry).

With regard to this species of property the power of the Parliament is absolute. They can prescribe the conditions on which it may be acquired, retained, or enjoyed; they may possibly even prohibit its enjoyment altogether; but they cannot, by calling something else by the name of "trade mark," create a new and different kind of industrial property.

In the ordinary course of events, and in the absence of legislation, it might easily happen that the same mark had been adopted by more persons than one, so that such a mark would not be absolutely distinctive. But this contingency does not affect the quality of distinctiveness involved in the concept of a trade mark, any more than the fact that there are more persons than one bearing the name of John Smith deprives that name of the quality of distinctiveness. The circumstance, therefore, that the same mark was allowed in some cases (e.g. Manchester Cotton Marks) to be registered by more than one person did not affect in any way the nature of the concept.

We were pressed with the fact that in some of the States of the American Union Statutes had been passed before 1900 by which workers' marks had been recognized by law. The earliest of these Acts, which was passed in 1889 in the State of California, authorized trade unions to adopt a "trade mark," to register it, and to affix it to any goods made, produced, or manufactured by members of the union. In most of the States the words used were "a label, trade mark, or form of advertisement." Contemporaneously, however, with these Statutes, a number of decisions were given in the Supreme Courts of several of the States to the effect that such a mark was not a trade mark in the ordinary acceptation of the word. The legislation referred to was, of course, within the competence of the legislatures, who were free to call the label by any name they thought fit. In my opinion, this legislation cannot be relied upon as showing any change in the meaning of the term "trade mark" in the British Empire, either regarded as a technical term or word of art, or in its popular sense. If knowledge of it is to be imputed to the framers of the Constitution, it must be taken that they also know that the great weight of American authority was adverse to the view that the workers' labels were trade marks.

The plaintiffs contend that the "workers' trade mark" described in Part VII. of the Trade Marks Act is not a species of industrial property such as I have described, but something quite different; that it is in the nature of an abstract right, or right in gross, not appurtenant to any right of property in, or control over, the goods for which it is to be used; that in substance it does not indicate that the goods to which it is affixed have been dealt with by any particular person or persons so as to distinguish them from goods dealt with by other persons; that, if the right, if any, thus created can be regarded as a species of industrial property, it is not the same kind of property as that mentioned in sec. 51 (xviii.); that, if it cannot be so regarded, this part of the Trade Marks Act is an ineffectual attempt to regulate and control the internal trade and commerce of the States, just as if it had been enacted that any manufacturer of goods shall affix to his products a mark indicating the persons employed in the manufacture, or the rate of wages paid to them, or any other particular regarding the conditions of manufacture.

The defendants, on the other hand, contend that any individual worker is entitled to acquire a right to a trade mark as a proprietary right, and is free to use the mark or not to use it upon goods upon which he works, as he thinks fit, subject to any express contract between him and the owner of the goods; that the same rule applies to partnerships; that the number of the members of a partnership is immaterial unless limited by positive law; that the rule also applies to a joint stock company; and that, according to modern notions, a trade union is entitled to enjoy the same rights with respect to this kind of industrial property as a joint stock company.

So far as regards an individual worker or a partnership or joint stock company, I do not see any answer to this last argument. But so far as regards trade unions or industrial unions or associations of workers, corporate or unincorporate, other considerations arise. It is not within the competence of the Commonwealth Parliament to create new forms of property, or new forms of associations or partnerships for domestic trading purposes, or to confer upon existing partnerships or associations any capacity beyond those which they possess under the laws of the States, except, in either case, as incidental to the execution of some other express power. If Part VII. of the Trade Marks Act merely provided that any body, corporate or unincorporate, which by the law of a State may lawfully hold property, may be the owner of a trade mark (which would not be necessary if the mark in question is property) no objection could be offered on that score. The Act, however, purports to create new kinds of associations or bodies politic and to confer upon them the capacity of owning a worker's trade mark, which it calls property.

The defendant Union is a trade union, and also an industrial union, under the law of New South Wales, and, if the only objection to Part VII. of the Act were that based on the creation of new and unauthorized associations, it might be contended that the provisions relating to such associations are severable from the rest. Without expressing any opinion on that point I proceed to consider how far the workers' trade mark conforms to the concept of a trade mark as I understand it.

(1)

Is the right, if any, created by the Act in respect of the workers' trade mark a right of property? The mere prohibition of the use of a thing appertains to the criminal law, and does not create a right of property in that thing. For instance, a prohibition, such as exists in some semi-civilized countries, of the wearing of a particular garb by any but married women does not confer a right of property in the exclusive use of that garb on married women collectively. I do not think that the bald enactment in sec. 75 that the association shall be deemed the registered proprietor of the workers' trade mark is effectual to create a new sort of property. The effect of the Act is to draw a distinction between members of certain unions and the rest of the community, and to enact that the rest of the community may not say that any member of the unions has dealt with the goods in question. This is quite a different idea from the right of an individual to publish the fact that he has dealt with them.

(2)

Does the workers' trade mark denote that the owners of it are persons engaged in trade? In my opinion a trade union cannot be regarded as an artificial person engaged in trade, although the individual members of it may be so engaged.

The term "trade union" is defined by the New South Wales Trade Unions Act 1881 (45 Vict. No. 12), sec. 31, as meaning "any combination whether temporary or permanent for regulating the relations between workmen and employers or between workmen and workmen or between employers and employers or for imposing restrictive conditions on the conduct of any trade or business whether such combination would or would not if this Act had not been passed have been deemed to have been an unlawful combination by reason of some one or more of its purposes being in restraint of trade Provided that this Act shall not affect.

(1)

Any agreement between partners as to their own business;

(2)

Any agreement between an employer and those employed by him as to such employment.

(3)

Any agreement in consideration of the sale of the good will of a business or of instruction in any profession trade or handicraft."

If a trade union should, without authority, enter into the business of trading, there is no doubt that it could be restrained at the suit of a member: Yorkshire Miners' Association v Howden ((1905) A.C., 256), or, I apprehend, at the suit of the Attorney-General for the State. The same consequences would follow similar action by an industrial union, not being a joint stock company or trade union. It is not suggested that the respondent union is in fact a trading body. It has never been decided that a trade union can engage in trade. In the case of Linaker v Pilcher (84 L.T., 421) it was contended that the funds of a trade union were not liable to satisfy a judgment for damages in respect of a libel published in a newspaper issued by the union for union purposes, on the ground that the publication of the paper was trading and therefore ultra vires of the union. It was held by Mathew J. that the funds were liable, not, however, on the ground that trading was intra vires, but on the ground that the publication of that particular newspaper was not trading.

(3)

For the same reason it follows that the alleged right is not appurtenant or incident to any dealing with goods in the way of trade by the owner of the mark.

(4)

Has the union such an independent dominion over the articles to which it is to be affixed that they may lawfully affix it to them while they are in their hands? The union might perhaps stipulate that no persons other than members of the union should be employed in the production, and that the mark should be put by the owners upon the articles before sale. But this is an entirely different concept from the right of dominion involved in the concept of a trade mark.

(5)

The workers' trade mark does not in fact purport to distinguish the articles to which it is affixed by identifying any workmen engaged in the production of them as individual persons or as members of a corporation or partnership engaged in trade, but merely indicates that certain members of the community, i.e., non-unionists, have not been engaged in their production, just as a mark might indicate that no Asiatics or coloured persons had been so engaged. Such a distinction, however desirable in itself, could not have been effected by a trade mark, as the term was understood in 1900. If the right to make such a distinction were conferred by law and could be regarded as property, it would be property of a very different kind from a trade mark as then understood.

In my opinion, therefore, the workers' trade mark does not conform in any respect to the concept of a trade mark as used in the Constitution.

Since, then, the Parliament has no power either to create new kinds of property, or new kinds of bodies politic, except as incidental to some express power, or to create new offences, except by way of sanction to a law already passed under some express power, (Lyons v Smart ( 6 C.L.R., 143 )) there is nothing left upon which Part VII. of the Act can validly operate except the mark of an individual worker.

In my judgment this Part of the Act is an attempt to regulate the internal trade of the States. It does not fall within, and is not incidental to, any of the express powers conferred on the Parliament to regulate that trade, and, except so far as those powers extend, the power of the States is exclusive.

I think, further, that the whole of the provisions of Part VII. are so bound up together that it is impossible to say that the Parliament would have enacted the provisions relating to individual workers without the rest. In my opinion, therefore, the whole of Part VII. is invalid.

It follows that the plaintiffs are entitled to a declaration: (1) that the defendant Registrar has no authority to keep a register of workers' trade marks, and (2) that the defendant Union's mark is not a trade mark within the meaning of the Constitution, and also to an order to cancel the registration, and an injunction to restrain the Registrar from continuing to keep such a register.