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: HIGGINS J)

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

Court:

Judges: Griffith CJ
Barton 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:
HIGGINS J

As for the first question submitted to us, I am of opinion that the statement of claim, taken with the particulars thereunder, does not disclose any cause of action maintainable by the brewery companies, or by the Attorney-General for New South Wales.

I shall have to examine this question in some detail, not only out of respect for the opinion of my colleagues, but because I am profoundly impressed with the wisdom of the practice, so well established in the Supreme Court of the United States, never to decide against an Act as unconstitutional, except "in the last resort, and as a necessity in the determination of real, earnest, and vital controversy between individuals": Chicago and Grand Trunk Railway Co v Wellman (143 U.S., 339, at p. 345). Nothing would tend to detract from the influence and the usefulness of this Court more than the appearance of an eagerness to sit in judgment on Acts of Parliament, and to stamp the Constitution with the impress which we wish it to bear. It is only when we cannot do justice, in an action properly brought, without deciding as to the validity of the Act, that we are entitled to take out this last weapon from our armoury; and the fact that the question raised in this case has not been argued before any other bench, and possibly may not be argued, or even arguable, on appeal from us, adds to the weight of our responsibility in making sure that there is a cause of action.

The plaintiffs are the Attorney-General for New South Wales and four brewery companies. Briefly stated, the plaintiffs' whole case is that the Registrar of Trade Marks has, in obedience to the directions of the federal Trade Marks Act 1905, registered the defendant union as proprietor of "a worker's trade mark" under Part VII. of the Act; that the Federal Parliament had no power to enact Part VII.; and that the registration and user of the mark will injure and interfere with the plaintiffs' brewery companies in the manner specified in the particulars. Under the form of the order made for disposing of the two questions before trial, the plaintiffs have the advantage of the assumption that all their statements of fact are true.

No injury is alleged to have been done as yet by the defendants to any of the plaintiffs:-

"the registration and user (of the mark) will injure and interfere."

This is purely a quia timet action-an action to prevent an apprehended injury. The plaintiff breweries fear the results to their business if this mark should be applied to a rival brewer's goods. But the mark has not yet been applied to the goods of any brewer, and it cannot be applied without the brewer's consent (sec. 74 (2) (c)). So far, no harm has been done, no damage has been suffered. For aught that appears in the statement of claim, no brewer will ever consent, and the mark may never be applied to any goods; and unless the facts show the injury to be imminent and inevitable-unless there be no obstacle between the defendants' alleged wrongful act and the alleged injury-the Court does not in a quia timet action grant an injunction, or any relief. Here the argument is that, if some rival brewer allow the mark to be used on his goods, the plaintiffs may be put in the dilemma of choosing between the custom of those who would be offended by the workers' mark and those who would be attracted by it; and they will suffer damage if they choose wrong, and if they decline to avail themselves of the invalidity of the mark by putting on the mark even though they do not employ union labour. Such speculative, hypothetical, statements are wholly insufficient as a basis for any judgment in any kind of action. The union and the Registrar-the only defendants-have done all that they can do, and there is as yet no cause of action, and there can be no cause of action, no injury, until some brewer allow the mark to be attached to his beer. How can an injunction be granted against people who have not done, and who cannot do, the injury apprehended? Putting out of sight all the other objections, how can the plaintiff breweries claim a declaration of right of or a rectification of the register, against defendants who do not and cannot, without some outsider's concurrence, injure them? It must appear in a quia timet action that, if the remedy be not given, the damage (and very substantial damage) must necessarily be suffered: Salvin v North Brancepeth Coal Co (L.R. 9 Ch., 705); Cowley v Byas (5 Ch. D., 944); Fletcher v Bealey (28 Ch. D., 688); Attorney-General v Corporation of Manchester ((1893) 2 Ch., 87; Story Eq. Jur., sec. 826).

There can be no cause of action unless there be: (a) some wrongdoing on the part of a defendant, and (b) some actual damage-or, at the least, some imminent and inevitable and very substantial damage resulting therefrom. In lawyers' phraseology, there must be both injuria (wrongdoing), and damnum (loss). If Part VII. is valid, there is no injuria. For, if Part VII. is valid, the registration was proper, and the plaintiffs have no ground for complaint. On the other hand, if Part VII. is invalid, there is no damnum, for the plaintiff breweries are as free to put the union label on their beer as they were before the Act. No doubt, they would be making a false representation to the public, if they did not in fact use union labour; but the only object, and the only effect, of the provision for registration in Part VII. is to allow of a prosecution of brewers or others who make such false representations; and if Part VII. is invalid, the plaintiff breweries cannot be prosecuted for the false representation. If Part VII. is invalid, the plaintiffs are in just the same position as before. Where, then, is the damnum from registration and user, if Part VII. is invalid? Or, rather-as there has not been and may not be any user-where is the damnum from mere registration?

The alleged damage is expressed in five ways; but I think I may, not unfairly, sum it up under three heads, taking the most favourable view of the plaintiffs' meaning. I shall assume, in favour of the plaintiffs, that Part VII. is, as they urge, invalid. They say (1) that the registration and/or user of the mark will prevent the plaintiff breweries from using the same or a similar design. But the plaintiffs do not allege that they want to use such a design, and, if they did, then, on the assumption that Part VII. is invalid, there is no protection for this mark, and the plaintiffs can in that case use the same or a similar design. This is a matter of law; and the Court is not bound by the plaintiff's statement as to the effect in law of registration and user. The plaintiffs say (2) that the registration and/or user of the mark will render the plaintiffs liable to actions and prosecutions for the infringement of the mark. This allegation shows no cause of action if the actions and prosecutions are not to be successful; and they cannot be successful if-as is assumed-Part VII. is invalid. But the plaintiffs say (3) that they will be embarrassed in their business by the registration and/or user of the mark; for, if some rival brewers use it, the beer-purchasing public will see that their beer is made by union labour; and this will attract one class and drive away another. The plaintiffs, it is said, will have to make up their minds whether to use the mark or not; and if they use the mark, they will have to employ union labour. It is not stated whether the plaintiffs will lose or gain more custom by not having the mark; and it is not alleged that to employ union labour, and union labour only, will be injurious to their business. I venture to say that to bring forward this embarrassment as a cause of action is preposterous. No action lies for placing a person in a dilemma as to his commercial interests, for putting before him an inducement to use this or that kind of labour. A union is entitled to embarrass a manufacturer who is not fair to his employes-unless they embarrass him by means of some wrong done to him. They can embarrass him by agreement with a rival brewer, or in any other way. The embarrassment, if any, comes from the use of the label (which is lawful without the Act), not from the registration. No action lies even for doing the plaintiffs harm in their interests, unless the act complained of is a legal wrong to the plaintiffs: Mogul Steamship Co v McGregor, Gow & Co (23 Q.B.D., 598, at p. 613), per Bowen L.J.. If Part VII. is invalid (as must be assumed, or else the plaintiffs have no possible case) the plaintiffs can with impunity, so far as the Act is concerned, use the union label and yet not employ union men; and I have yet to learn that an action lies for so acting as that a plaintiff is tempted to tell an untruth. It is now further said that the registration of the mark interferes with the freedom of the plaintiffs to carry on their business without publishing to the world any statement as to the persons whom they employ. It ought to be enough to say that the plaintiffs cannot go beyond the particulars of damage which they have furnished, and that this alleged damage does not appear in the particulars. But where is the interference with freedom to be found? If all that is meant is a strong commercial inducement to act in a certain way, this is not actionable-no more actionable than if one hatter sell a certain kind of hat for a cheaper price than another hatter. If there were no workers' mark legislation at all, a rival brewer could put on his goods the mark showing that they are made by union labour, and the plaintiffs would have no ground of complaint. These objections to the action are quite independent of the objection that no hurt can come until some brewer consent to have the mark applied to his goods. Moreover, the damage complained of is too remote-is not the natural and reasonable consequence of the defendants' acts. The defendant Registrar enters in a book in Melbourne a picture which the other defendant gives him. The entry is ultra vires, nugatory (the plaintiffs say). If the business of the plaintiffs be injured, it is not the natural result of the defendants' action. The registration does not cause the damage (if there should be any); the mere use by another brewer, without registration, would cause the damage (if any).

Order III. sec. 1. of the High Court Rules does not help the plaintiffs. The words are even more guarded than the corresponding, much misunderstood, rule in England (Order XXV. sec. 5); for the declaration without other relief can only be granted in an action "properly framed." The rule does not mean, either here or in England, that a declaration will be made at the instance of a plaintiff who has no cause of action: (Offin v Rochfort Rural Council ((1906) 1 Ch., 342, at p. 357); or who has no rights in himself against the defendants under the circumstances existing at the date of the writ: Honour v Equitabte Life Assurance Society of the United States ((1900) 1 Ch., 852); Williams v North's Navigation Collieries (1889) Ltd ((1904) 2 K.B., 44). The plaintiffs must have an existing right in themselves as against the defendants at the date of the writ: what is their existing right here? The Court is certainly not going to declare that plaintiffs have a good ground of defence if and when the mark is used, and if and when the union sues them: North Eastern Marine Engineering Co v Leeds Forge Co ((1906) 1 Ch., 324, at p. 329; (1906) 2 Ch., 498).

The case of In re Powell's Trade Mark; Powell v Birmigham Vinegar Brewery Co ((1893) 2 Ch. 388; (1894) A.C., 8) is not, in my opinion, any authority for this action. It is cited, not as an answer to all the objections above stated, but only to some of them; and it does not answer even these. It is a mere decision as to the meaning of the words "person aggrieved" in the English Trade Marks Act. But a "person aggrieved" within that Act has not necessarily a cause of action. An action lies only where a wrong is done to the plaintiff-actual, or, at the least, imminent and inevitable. A motion under the Act to rectify the register is a special machinery devised to keep the register pure, and it may be made by a person who sees that a wrong to him is merely possible. In an action, the plaintiff sues because of wrong done in fact (or certain to be done) to him. In the motion to rectify, the mover moves because of the public mischief resulting from wrong entries in the register: per Lord Herschell L.C. ((1894) A.C., 8, at p. 10); but, to prevent the time of the Court from being wasted by mere debating society arguments, the mover must have some possible interest in the entry in the register Paine & Co v Daniels and Sons Breweries; In re Paine & Co 's Trade Marks ((1893) 2 Ch., 567, at p. 584). Therefore the Court held that a rival trader, who finds that the mark constitutes prima facie a block to the free exercise of his immediate business, is a person sufficiently "aggrieved" to make the motion. But the order is made in the interests of the public, not of any private person. It is not made as between the applicant and the respondent: Eno v Dunn (15 App. Cas. 252, at p. 264). The issues raised are radically different from the issues raised in a litigation between parties; so that, for instance, the alleged fraud of the person "aggrieved," or his delay, or his acquiescence, or estoppel, is treated as irrelevant to the motion, although most relevant in an action: Kerly on Trade Marks, 2nd ed., p. 271; Re Hill's Trade Mark (10 R.P.C., 113, at p. 116). Besides, in Powell's Case ((1894) A.C., 8), the applicant, the person "aggrieved" by the registration, was a rival in trade who might use the mark if the register did not prevent him: not so here. He was prevented by the registration from using the mark: not so here, if, as the plaintiffs say, the Act is invalid. In short, the fact that a rival trader might move to rectify the register does not show that he has a cause of action for damages or for anything else.

The case of London Association of Shipowners and Brokers v London and India Docks Joint Committee ((1892) 3 Ch., 242) has been much discussed. It seems to me to confirm the view that there is here no right of action. The P. & O. Company had in London a permanent dock specially appropriated to it under an agreement. The dock committee had made regulations as to the admission of vessels to ordinary unappropriated docks. These regulations were held to be ultra vires; and it was held that the P. & O. Co suffered no special damage from the regulations, and therefore had no cause of action ((1892) 3 Ch., 242, at pp. 259, 265, 273), although it might choose to apply for a place in the unappropriated docks at any time. It was laid down ((1892) 3 Ch., 242, at p. 257) that the P. & O. Co "is not entitled to sue on behalf of the public for the purpose of preventing the defendants from exceeding their statutory powers irrespective of any particular injury done to any particular individual. The P. & O. Co must show that it is itself aggrieved before it is entitled to any declaration or relief in an action brought by itself." As the P. & O. Co did not want unappropriated berths, the order (dismissing the action) "must stand." ((1892) 3 Ch., 242, at p. 259) Bowen L.J. thought that, even if the P. & Co did want unappropriated berths, it was not entitled to an injunction, that its proper course was either to refuse compliance (with the excessive demand under the regulations) or to submit under protest, and bring action for the wrong ((1892) 3 Ch., 242, at p. 262). But a declaration was made "to prevent mistakes" (not expressly, so far as appears, "by consent"), which "does no more than record the concessions made at the Bar, and the admission to which the defendants' counsel were prepared to consent." ((1892) 3 Ch., 242, at p. 266). The appeal from the judgment dismissing the action was dismissed. This case, therefore, is not of any use to the plaintiffs; and, in any view of it, the plaintiff was, in that case, at the immediate point of being hurt by the defendant. It would, if it applied for an unappropriated berth, be refused at once except on condition of its making the excessive payment. Here, until some rival brewer use the mark, there can be no possible damage.

The objections to the claim made by the four breweries apply a fortiori to the claim made by the Attorney-General for New South Wales; but there are also other objections peculiar to his case.

(a)

The Attorney-General for New South Wales does not represent the public of Australia-the public to be affected by this Act. The Act does not affect people on one side of the Murray more than people on the other. An Attorney-General can sue for injury to the public-his public. He is the officer of the Crown; and, according to the principles of our law, the interest of the public is vested in the Crown. But the Attorney-General for New South Wales is not the officer of the Crown for the Commonwealth, that distinct juristic person referred to in Municipal Council of Sydney v Commonwealth ( 1 C.L.R., 208 ). If a public body is going beyond its powers, no doubt the Attorney-General may sue, in the interests of the public-his public. But the only official who has a right to represent the public of Australia is the Attorney-General for Australia; and this Court, the High Court of Australia, recognizes (as to federal Acts) no public interest smaller than the interests of the Australian people. All other interests, however important, are to be treated as private interests. It may be said that it is the interest of the present Attorney-General for Australia to support the federal Act, and to refuse to sue. But if he should refuse to act in the interest of the public, it is for the Federal Parliament, and ultimately for the electors, to deal with him and with the Government of which he is a member: London County Council v Attorney-General ((1902) A.C., 165, at p. 168).

(b)

The only injury alleged is an injury that will be done to the four plaintiff breweries. It is not alleged that any injury will be done to New South Wales, or to the public of New South Wales. An injury to these four breweries is not necessarily an injury to the public of New South Wales. If these breweries are injured they have their right of action; but no Attorney-General can sue on their behalf. According to Attorney-General and Spalding Rural Council v Garner ((1907) 2 K.B., 480) an Attorney-General cannot sue on behalf of a fraction of his public, however large. Even if the express allegation of injury in the statement of claim did not preclude us from implying an injury to New South Wales, to the public of New South Wales, neither the State nor its Attorney-General would have a cause of action, unless the act complained of necessarily tended in its nature to injure the State or the public of New South Wales; and in this case the registration of the mark-or even the user of the mark, if it should ever take place-would not satisfy this condition. Of course, it is not necessary that injury shall have actually occurred; the Court will interfere before it has occurred. But what may be injurious to individual traders may often be beneficial to the public. In Attorney-General v Shrewsbury (Kingsland) Bridge Co (21 Ch. D., 752) public rights of highway were actually interfered with; and so too in Attorney-General v London and North Western Railway Co ((1900) 1 Q.B., 78). In Attorney-General v London County Council ((1901) 1 Ch., 781; (1902) A.C., 165) a public body was spending public moneys for unauthorized purposes-was running omnibuses in the public streets-a business which Parliament had in effect forbidden it to carry on in the public interest. Lord Halsbury L.C. put the case expressly on this basis ((1902) A.C., 165, at p. 168). Neither a State nor an Attorney-General is exempted from the ordinary rule that a distinctive injury to the plaintiffs must be alleged or necessarily implied-in this case, an injury to New South Wales, or to the public of New South Wales.

(c)

The passing of an Act by one Parliament on a subject as to which another Parliament has exclusive power, and the making of an entry in pursuance of the Act, do not constitute a matter for judicial cognizance at the suit of the Government of the State that has the power. There is no injury to property or other injury for which the Court can grant an injunction. The remedy against an invalid Act is to resist it when it comes to be enforced.

(d)

If New South Wales as a State has a cause of action against these defendants, the action should be brought in its name. This is expressly provided in the Judiciary Act 1903, sec. 62; and see Penedo (Baron) v Johnson (22 W.R., 103); United States of America v Wagner (L.R. 2 Ch., 582).

It is not for the Court to indicate to these four breweries what they can do to test the validity of the registration of the workers' mark. But for my part I see no reason why one of the plaintiffs should not apply for registration of a similar design as a trade mark to be applied to his goods; or why the plaintiffs should not simply use the mark, and defend themselves in a proceeding for the penalty. I mention these as possible means of testing the validity of the Act, because it is urged that, unless an action lie of the kind before us, the plaintiffs cannot bring before the Court the question at all.

Inasmuch as the view which I have expressed, that the plaintiffs have no cause of action, is not the view of the majority of the Court, I proceed to consider the second question, as to the validity of Part VII. of the Trade Marks Act 1905.

Does sec. 51 (xviii.) of the Constitution give to the Federal Parliament power to enact the provisions of Part VII. of the Trade Marks Act 1905, which allow what the Act calls "workers' trade marks" to be registered and enforced?

Now, according to Part VII., the "workers' trade mark" is a mark which may be registered by a worker or a workers' union (or other association) to show that the goods marked are the workmanship of members of the union; and it is to be the property of the union. But the mark is not to be applied to any goods without the sanction of the owner of the goods. It is to be used by the owner of the goods for the purposes of his trade, as it is believed that many people will prefer to buy goods which bear a mark such as this, a mark which is a guarantee that the goods have not been produced by "sweated" labour. The mark is, in short, a device to enable the public, if they so desire, to discourage "sweating" of human beings-to give to purchasers the opportunity of carrying out the moral duty which "Parson Lot" (Charles Kingsley) inculcated sixty years ago, in burning words, in his pamphlet, "Cheap clothes and nasty." The mark is legal even without the Act; so that even if there were no Part VII. at all, such a mark could be applied to the goods by the owner of the goods or with his consent. Without any legislation at all this mark could be used by the owner of the goods for the purposes of his trade, for the purpose of attracting purchasers who are in sympathy with the objects of unions. But Part VII. is necessary for the purpose of punishing a manufacturer who untruthfully applies the mark to his goods. If Part VII. is void, that penalty cannot be enforced, and the manufacturer cannot be restrained by the union from applying it to his goods untruthfully. The plaintiffs' contention is, in short, that the Federal Parliament has no power to punish the untruthful application of a workers' mark to goods.

The case as put for the plaintiffs is short and simple. They say that, though the Federal Parliament has power to legislate about "trade marks," a "workers' trade mark" was not a "trade mark" within the accepted definition in 1900, the date of the Constitution, and that therefore the Parliament has no power to make any law as to "workers' trade marks." It is said that, though the mark is to be used by or with the consent of a trader, for the purposes of pushing trade, it is not a trade mark.

If the argument for the plaintiffs is right-if the powers of the Commonwealth Parliament are so rigidly and narrowly circumscribed as is contended-there will be some curious results, not merely as to trade marks, but as to most, if not all, of the subjects of legislation in sec. 51. No matter how circumstances may change, no matter what may be the developments of science, of the arts, of business enterprise, and of society to the end of time, the Parliament is confined for ever (unless there be an alteration in the Constitution) to such trade marks as the Court enforced in the year 1900. Even since that year the class of trade marks which the Court will enforce has been extended in Great Britain and Ireland so as to include marks such as the plaintiffs deny to be "trade marks" (English Trade Marks Act 1905, secs. 3, 62); and sec. 62 has been incorporated in our Trade Marks Act 1905 (sec. 22). But though the British legislation is, of course, valid, the Commonwealth legislation, to the same effect, for Australia, is to be treated as invalid. The Commonwealth is to be tied down to the practice in 1900. According to the plaintiffs' argument, the Federal Parliament having covered all the ground for trade marks as enforced by the law in 1900, the State Parliaments may, each for its own State, make such laws as they think fit, varying in character and in machinery, as to any marks to be used for purposes of trade, excepting only such trade marks as the Courts enforced in 1900. The several State Parliaments may, it is said, legislate even for "workers' trade marks," may create any new kinds of enforceable trade marks; and if the plaintiffs' argument be successful, we shall have as a result a position which must be confusing and baneful to traders and to the public-we shall have seven different bodies of law makers in Australia laying down laws as to marks used for trade purposes. But, if the plaintiffs are right, it cannot be helped. It is a flaw in the Constitution.

This doctrine of the plaintiffs, if it is to be accepted, cannot be confined to the subject of trade marks. It means that the Federal Parliament cannot give validity to any kinds of patents, or to any kinds of copyrights, which were not recognized in 1900. Copyright in designs is a recent and useful development in the law of copyright. If it had not been accepted before 1900, it could not-according to the plaintiffs-be now adopted by the Federal Parliament. Nor, if the developments of industry should render a further extension of copyright expedient, is it possible for the Federal Parliament to meet the want-if the plaintiffs are right. The argument means also that the Parliament cannot make the slightest alteration in the meaning of bills of exchange or of promissory notes-cannot, for instance, enact that a document shall be a promissory note even though it have some slight condition annexed to the promise. Again, the Parliament has power to make laws as to "marriage." But, according to the plaintiffs, if marriage with a deceased wife's sister had not been validated before Federation, the Federal Parliament could not validate it. For the word "marriage" did not, strictly speaking, include such a union-the union was voidable by judicial proceedings (absolutely void in Britain, since the 5 & 6 Wm. IV. c. 54). Then, Parliament is given power to make laws with respect to "parental rights;" is it to be restricted to parental rights as recognized in 1900? If it should ever be thought well to follow the example of other countries which treat infancy as continuing till 22, or 25 or even 30, is the Federal Parliament, in exercising its powers as to the "custody and maintenance of infants," bound for ever to the present meaning of infancy, as ending at 21? Many other illustrations may be given on a consideration of the other subjects entrusted to this Parliament as to the effects-or probable effects-of holding the plaintiffs' contention to be good. But the case of trade marks contains excellent illustrations within its own bounds. Text-writers have found themselves compelled to include in their treatises on "trade marks" dissertations on mere "trade names," and on "passing off" cases; for these matters are treated by the Courts on the same principles as those trade marks which satisfy the plaintiffs' definition; but, according to the plaintiffs, these matters have still to be left to the States. Yet the majority of so-called "trade mark" cases brought to the Courts are "passing off" cases-imitations of the "get-up" of goods. Before Federation, if the New South Wales Parliament, or any other of the Colonial Parliaments, saw fit, it could have allowed descriptive words to be used as a trade mark, and some of the Parliaments did in fact include "trade descriptions" under the term "trade marks;" but the Federal Parliament has not, it is said, any such power. Before Federation, any Colonial Parliament could have passed a law with regard to such a mark as the "hammer mark." This was only to be put on cutlery, etc, if wrought or forged (59 Geo. III. c. 7). So with hall marks for jewellery or for plate; so with marks for gunbarrels indicating proof. So with Sheffield marks, cotton marks, etc, which were originally dealt with in the English Trade Marks Registration Acts. So with misuse of the royal arms, false representations on shop fronts, etc, that the trader is successor in business, etc, to a well known name. So with marks on imported goods representing that they were made in Australia (cf. 39 & 40 Vict. c. 36, secs. 42 (a), 153). Unless such marks come within the rigid definition of enforceable trade marks in 1900-and (according to the plaintiffs) very few, if any, of these do so-the Federal Parliament is powerless.

If the plaintiffs are right in their argument, the Court is bound to treat the boundaries of the class of trade marks, and the boundaries of the other subjects, as finally settled and stereotyped in 1900, so far as the Federal Parliament is concerned. There may be development everywhere else; but so far as Australia and its Federal Parliament is concerned, there is an arrested development. In place of Australia having by its Constitution acquired for the Australian Parliament the power of dealing with the whole subject of marks used for the purposes of trade, it turns out that the Federal Parliament can deal only with the trade marks enforced by the Courts as property in 1900, and that each of the States separately must deal with the other parts of the subject. That is to say, although the Federal Parliament is not limited in its power to trade marks used in inter-state or foreign commerce, although it has admittedly power to regulate the internal commerce of any State so far as relates to trade marks-although it can, for instance, regulate a trade mark used by a maker of ploughs within a mere district of New South Wales-it cannot regulate the law as to trade names, or as to "passing off" cases, or as to any of the other marks (I must not beg the question by saying "trade mark") used on goods for purposes of trade. Even that offspring of timidity, the Federal Council, under the Federal Council of Australasia Act 1885, had wider powers. True, it did not get the power to make laws as to trade marks; but it got power to make laws as to copyrights and patents and as to "any other matter of general Australian interest with respect to which the legislatures of the several Colonies can legislate within their own limits, and as to which it is deemed desirable that there should be a law of general application" (sec. 15 (i)). There is no doubt as to what is desirable; there is no doubt as to the plenary power of each of the separate Colonies before Federation over the whole subject of trade marks and quasi-trade marks; and there is no doubt that under the Federal Council Act every mark, or name, or "get-up" that can be used for the purposes of trade could be dealt with by the Council. But we are told that the Federal Parliament has not the power of the Federal Council. Perhaps this result is unavoidable; and the plaintiffs are, of course, entitled to have the Constitution expounded and applied as it stands.

There are two questions involved in our inquiry. The main question is what is the ambit, the circumference, of the power "to make laws with respect to trade marks." The subsidiary question is, what was the meaning in 1900 of the two words "trade marks." It is curious that this latter question has been almost the sole subject of discussion. Of course, if it could be shown that this workers' trade mark contains all the essential attributes of a trade mark as understood in 1900, Part VII. of the Act is valid. But, as I shall show hereafter, it by no means follows that, if it does not contain all the essentials, Part VII. is invalid. Part VII. may possibly still be a valid exercise of the power to "make laws with respect to trade marks." Taking the subsidiary question first, if the two words "trade marks" be considered in their ordinary unsophisticated sense, as English words, they would mean merely marks used for purposes of trade; but the word "marks" shows that they are used to mark something, to identify something, to distinguish some things from others. Has this primary meaning been ever lost? The burden lies on the plaintiffs of showing that the meaning has become narrowed and limited. If the words can be treated as technical at all, they make up a trade term, a commercial term. They are not a technical legal term (at all events where-as in the Constitution-the words are not made one word or hyphenated). Trade marks-both the phrase and the things-were used by men of business long before the Courts took up the subject in the last century. To my mind the unfounded assumption that these words in themselves constitute a technical legal term (apart from their use for particular purposes, such as the purposes of particular Statutes), is at the root of much of the difference of opinion in this case. Owing to the form in which this case comes before us, we have not any evidence of any non-legal technical meaning for the words; and the burden of proof lies on those who affirm that a word is technical: Mansell v The Queen (8 El. & Bl., 54, at p. 109). As was said by Lindley L.J. in Ghatenay v Brazilian Submarine Telegraph Co ((1891) 1 Q.B., 79, at p. 85), the meaning of the words is a question of fact in all cases. But here we have no evidence on the question, and we have to fall back on the ordinary, grammatical, primary meaning in the English language; and that meaning is plain.

It is true, however, that this primary meaning is too wide for purposes of enforcement in the Courts. In 1838 the right to a trade mark was for the first time recognized and enforced by an English Court-the Court of Chancery. Now, the Court of Chancery could only enforce a right of property; and as property involves exclusive rights, the Court only applied its remedies in favour of the owner of the goods, or of the owner of some business with which the goods were identified. "The jurisdiction of the Court in the protection given to trade marks rests upon property, and ... the Court interferes by injunction, because that is the only mode by which property of this description can be effectually protected.": Per Lord Westbury L.C. Leather Cloth Co v American Leather Cloth Co (4 D.J. & S., 137, at p. 142). It is hard to see how the Court could, without legislation, have found property in a trade mark in any one who had neither ownership nor quasi-ownership of the goods or of the business. None but the owner (or quasi-owner) of the goods had a right to mark them; and it was he who got the benefit of the mark in trade. The legal text-writers have, therefore, confined their attention to such trade marks as the Courts will enforce-the only kind of trade marks which concerns lawyers-and they have laboured to frame satisfactory definitions of the enforceable trade mark. It is quite a common practice for experts in any calling to narrow the denotation of a class name to the purposes of their calling. To anglers "fish" often means "salmon;" to a horse dealer "beast" means "horse;" to a lawyer "trade mark" means a trade mark that fulfils the conditions necessary for legal enforcement. But conditions of legal enforcement do not enter into the definition of the expression "trade mark." All the logicians, I believe, manage to agree to this small extent, that any definition is imperfect if the class name is defined by its accidents instead of by its essential differentia (Mill's Logic vol. I., pp. 146, 156). There were many trade marks which could not be enforced in the Courts simply because no one could show that he had acquired an exclusive right to use them. Two or more traders might hit upon the same trade mark, independently; and-apart from legislation-they could not prevent other traders from using it too. It was for this reason that in the British Act of 1883 (sec. 72), Parliament, in forbidding the registration of identical marks, made an exception of cases "where the Court has decided that two or more persons are entitled to be registered as proprietors of the same trade mark." This language recognizes that there may be trade marks which do not fulfil the condition of exclusiveness as property. It is to be noticed-as Kerly on Trade Marks, 2nd ed., p. 26, points out-that the Courts, although they have frequently made expositions pointed to the difficulties of a particular case, have never yet formulated an exhaustive definition of "trade marks." Textwriters, it appears, have rushed in, where Judges have feared to tread. Some recent compilers of dictionaries have evidently followed up the gallant text-writers into the breach. Richardson, in 1855, does not refer to "trade mark" at all. But Worcester, in 1878, defines "trade mark" as "a particular mark, sign, device, writing, or ticket, put by a manufacturer upon his goods, to distinguish them from those of others." Even the plaintiffs' counsel would probably admit that it is wrong to limit the idea to manufacturers, or to the owners of goods. Webster (1892) puts it as "a peculiar distinguishing mark or device affixed by a manufacturer or a merchant to his goods, the exclusive right of using which is recognized by law." This is better, but it refers to enforcement by the Courts. But the Standard Dictionary (1901) says that the "trade mark" must be "secured to the user by legal registration." So this dictionary makes registration part of the definition, which is also wrong. It is evident that the learned compilers extracted these definitions from legal text-writers, the only place where they could find anything definite; but the text-writers had in view the practice of the Courts only. Dictionaries, as Hardcastle on Statutory Law (3rd ed. p. 165) tells us, are sometimes delusive guides, and "the best dictionary ... can never be an absolute authority on so varied and fluctuating a subject as language." It is our duty to look for the meaning of the words "as they would be understood by plain men who know nothing of the technical rules" of the Courts: Cargo ca Schiller (2 P.D., 145, at p. 161); and see Attorney-General v Winstanley (2 Dow & Cl., 302, at p. 310).

If we are at liberty, without evidence, to look beyond the ordinary grammatical meaning of these two words in conjunction, it seems to be a fair thing to examine the various meanings of the words as used, in order to find what attributes are common to all the meanings, and to see whether this workers' trade mark has all the common attributes. This mark is a distinctive device; it is to be attached to goods by or by the authority of the manufacturer, to identify the goods as being made by a certain body of journeymen; and it is to be used for purposes of trade, to attract buyers. What attribute is wanting? It used to be said (a) that the owner of the mark must own the goods. But that is not so, even for purposes of enforcement. The bleacher of linen which another has manufactured may have his trade mark for that linen: Sykes v Sykes (43 L.T., 626); and per Jelf J. in Major Brothers v Franklin and Son ((1908) 1 K.B., 712, at p. 717). So may the selector of goods have his mark: Hirsch v Jonas (3 Ch. D., 584); and per Kay J. in In re Australian Wine Importers Ltd (41 Ch. D., 278, at p. 281). But it is said (b) the mark must identify one particular trader, one sole concern. This is true, in the main, as to marks enforceable in the Courts. Yet even the Courts have recognized separate rights in two independent persons to the same mark by virtue of a devise of two separate business establishments: Dent v Turpin (2 John. & H., 139); and see Southorn v Reynolds (12 L.T.N.S., 75). But the practice of the "Three Mark Rule," and the whole case of cotton marks, referred to at length by my brother Isaacs, are, to my mind, conclusive. If a mark had not been used by more than three firms (before the Act of 1875) it was treated as the old mark of each firm, and each firm was entitled to registration. Therefore, there were certain trade marks which did not identify one particular concern only. Then it is urged (c) that the mark must identify a trading business of some sort carried on by the owner of the mark, and be inseparable from that business. This is met by the case of "Sheffield Marks." The British Act of 1883 (sec. 81) provided for a new register of trade marks at Sheffield. Every mark registered in the Sheffield register was to be registered in the general register of "trade marks." Every apprentice who had served for seven years was entitled to get a mark and to be made a freeman of the company of cutlers. The mark might be devised by will (subject to an alienable life estate in the widow) and in default of a will was to pass as personalty (21 Jac. 1 c. 131). If granted to a non-freeman of the Cutlers' Company the "trade mark" was clearly assignable in gross: Bury v Bedford (33 L.J. Ch., 465). It is clear, then, that the words "trade mark" were applied before 1900 to marks belonging to journeymen workers, to marks which did not identify any separate trading business, and which were assignable in gross. In short, the only attributes that I can find to be common to these words in all their varying uses, the only essential differentia from other marks is this-the marks must be used to identify the commodities with some person or body of persons and for the purpose of attracting trade; and these attributes are all found in this "workers' trade mark."

A consideration of the history of the words in the United States confirms this view. There, the Courts of Chancery were subject to the same limitations as in England; and they necessarily confined their relief to such trade marks as would be enforced in England. About 1889, in California, the cigarmakers' union sought to check sweating and its resulting evils by adopting a union label, and putting it on cigars made by unionists under wholesome conditions. The example of California was followed in several other States. But some manufacturers, who did not use union labour, sought to get the advantage of the label by putting it, falsely, on their goods. The unions took proceedings for infringement of their labels; but in most of the Courts appealed to it was held (and, as I think, rightly held) that the union label was not enforceable, as it did not identify any particular maker, or vendor, or any particular business. Then the legislatures of the States took the matter in hand (for there is no power in Congress, such as there is in our Federal Parliament, to legislate as to trade marks, except as to those used in inter-state or foreign commerce); and Acts were passed by most of the States prescribing registration of the union label as a trade mark, calling it a trade mark, and providing for its enforcement as a trade mark. All this took place before 1900; so that, when our Constitution was passed, union labels, of the same nature as these "workers' trade marks," were actually called in public Statutes "trade marks." I suppose it will not be contended that we are not to take into consideration the English language as used in America-the country where most of those who use the English language live. Probably, as our Constitution is contained in a British Act, if the British meaning were in conflict with the American meaning, that meaning should be adopted which the language would bear as coming from a British legislature in preference to the meaning which it would bear as coming from an American legislature. But this is not a case of conflict; and we are entitled, I think, to take into account the use of the English language wherever that language is heard-even if the sound have the timbre of a gramophone. Moreover, the Privy Council has recognized as legitimate an argument as to the meaning (in the Canadian Constitution) of the word "licences," based on the use of the word in the United States as well as on the use in Britain and Canada: Attorney-General for Quebec v Queen Insurance Co (3 App. Cas., 1090, at p. 1099); and it is not a violent assumption to suppose that the framers of our Constitution and the British Parliament know something of the long controversy as to the union label in the Courts and in the legislatures of the United States, and meant to give the Australian Parliament full power, under the head of "trade marks," to deal with the whole subject as it saw fit-power as full as each State of the Union had, as each Australian Colony had, as the British Parliament had, and as the British Parliament has since to a great extent exercised (Act of 1905, sec. 62).

On this part of the subject I have only to add that any definitions in the British Acts of 1862, 1875, 1883, and 1887 are merely definitions for the purposes of the Acts; and the International Convention of 1883 is similarly limited. These definitions and this Convention do not settle the meaning in our language of "trade marks."

I pass now to the main question-what are the limits of the power "to make laws with respect to trade marks"? Power to "make laws with respect to trade marks" is not the same thing as power to enforce trade marks, or even power to regulate trade marks. Under the power to make laws with respect to "marriage" I should say that the Parliament could prescribe what unions are to be regarded as marriages. Under the power to make laws with respect to "parental rights," I should say that it could define what those rights are to be. Under the power to make laws with respect to "promissory notes," I should say that it could increase the class of documents which in 1900 were known as promissory notes. Under the power to make laws with respect to trade marks, I cannot see why Parliament cannot, at the least, bring into the class of trade marks printed trade names and the "get up" of goods-rights in the nature of trade marks, things which were treated on the same principles as trade marks, but not hitherto called "marks" in current language.

What is committed to the Federal Parliament is not the class of things called trade marks, but the whole subject of trade marks. No doubt, we are to ascertain the meaning of "trade marks" as in 1900. But having ascertained that meaning, we have then to find the extent of the power to deal with the subject of trade marks-or, what is the same thing, to find the meaning of the "power to make laws with respect to trade marks." The usage in 1900 gives us the central type; it does not give us the circumference of the power. To find the circumference of the power, we take as a centre the thing named-trade marks-with the meaning as in 1900; but it is a mistake to treat the centre as the radius. As an instance of my view, if the "Hammer Mark" did not come within the meaning of "trade mark" in 1900, I think that the Federal Parliament would have power to deal with it as a trade mark, and to say that it shall be called a trade mark. Under the Act 59 Geo. III. c. 7, the "Hammer Mark" was not to be put on cutlery unless wrought or forged. There is no doubt that such a mark aided the trade of such cutlers as wrought or forged. In my opinion, the Federal Parliament could prohibit, by a penalty, the false use of the mark, and could give to these cutlers a proprietary right to the mark, enforceable by injunction. As already stated, the text-writers on the subject of trade marks always find it necessary to deal with rights resembling trade mark rights as well as with trade marks proper. There is no doubt as to their view of the ambit of the subject of trade marks. The name of the subject is taken from an example possessing pre-eminently the characteristics of the things comprised within the subject. As Dr. Whewell said of classification, "the class is determined, not by a boundary line without, but by a central point within."

The plaintiffs in their argument treat the power of the Federal Parliament to make laws with respect to trade marks as if it were a power to make laws with respect to cattle. In such a case, if a beast does not come under the term "cattle," as understood in 1900, there is no power, it is said, to make any laws about it. But I am clearly of opinion that this narrow doctrine propounded by the plaintiffs is, in construing a constitutional power to make laws, unwarrantable and absolutely wrong. In the first place, there is a vital distinction arising from the nature of the subject. Cattle are concrete, physical objects, and the boundaries of the class are fixed by external nature; whereas "trade marks" are artificial products of society, and dependent upon the will of society. The class "cattle" cannot well be extended by man; the class "trade marks" can be extended. Power to make laws as to any class of rights involves a power to alter those rights, to define those rights, to limit those rights, to extend those rights, and to extend the class of those who may enjoy those rights. In the same clause of sec. 51, power is given to make laws with respect to "copyrights" (rights of multiplying copies of books, etc); with respect to "patents" (rights to make or sell inventions); and with respect to "trade marks" (rights to use marks for the purposes of trade). The power to make laws "with respect to" these rights, involves a power to declare what shall be the subject of such rights. In the second place, although we are to interpret the words of the Constitution on the same principles of interpretation as we apply to any ordinary law, these very principles of interpretation compel us to take into account the nature and scope of the Act that we are interpreting-to remember that it is a Constitution, a mechanism under which laws are to be made, and not a mere Act which declares what the law is to be. Story pointed this out well (Commentaries, 2nd ed., sec. 455):-

"While, then, we may well resort to the meaning of single words to assist our inquiries, we should never forget, that it is an instrument of government that we are to construe."

In the United States Marshall C.J. in his famous judgment in M'Culloch v Maryland (4 Wheat., 316, at p. 407) recognized the same truth:-

"In considering this question, then, we must never forget, that it is a Constitution we are expounding."

The case of Re Klein (1 How., 277 (n.)) is a good instance of the application of this principle. At the making of the United States Constitution, the word "bankruptcy" had the original English meaning of an adverse proceeding by a creditor against a fraudulent debtor. This was the meaning from the beginning (34 & 35 Hen. VIII. c. 4), and at the time of the American Constitution. Yet it was held that Congress, under its power "to establish uniform laws on the subject of bankruptcies throughout the United States," had power to make a law for the voluntary sequestration of their estates by debtors-power to allow a voluntary bankruptcy at the instance and for the benefit of the debtor. It was also held that the Act was valid, although the word "bankruptcy" was properly applicable only to traders: Kunzler v Kohaus (5 Hill N.Y., 317); and see per Marshall C.J. in Sturges v Crowninshield (4 Wheat., 122, at p. 194). In short, Congress had the same power to widen the scope of bankruptcy law as the English Parliament possessed, and as it in fact exercised after the American revolution. In Canada, the Court of Appeal of Ontario followed suit: R. v Frawley (7 Ont. App. R., 246, at p. 265). Under the British North America Act 1867 the provincial legislatures had power to make laws with respect to "the imposition of punishment by fine penalty or imprisonment for enforcing any law of the province made in relation to any matter coming within any of the classes of subjects coming within the section" (sec. 92). The question arose, was a sentence of imprisonment with hard labour valid (in a case of selling liquors without a licence). Spragge C.J. pointed out that, if a mere Act of Parliament prescribed "imprisonment," hard labour could not be added; but that they had to deal with a constitutional power. "Imprisonment was one of the subjects with respect to which power of legislation had been conferred." The learned Judge quotes Vattel (qu. Story) and Marshall C.J. in M'Culloch v Maryland (4 Wheat., 316, at p. 407), in support of his decision that the sentence was valid. The Judicial Committee of the Privy Council also held that the sentence with hard labour was valid: Hodge v The Queen (9 App. Cas., 117, at p. 133). The same principle was recognized obiter in Re Lake Winnipeg Transportation Lumber and Trading Co (7 Manitoba R., 255), where an argument was overruled that the power of the Dominion Parliament to legislate as to "insolvencies" was confined to insolvencies as recognized at the passing of the British North America Act 1867. So, too, I presume, if a Parliament had powers conferred on it to make laws with respect to "police," that power would not be confined to making laws with respect to police as understood and defined at the creation of the power. There might be two kinds of police provided (as in France) with different functions and status. So, too, if the Parliament were granted power to make laws with respect to wills, I take it that a law could be made defining what documents are to be treated as wills, and would not be cramped for ever within the limits of the present meaning of the word-documents which are signed by the testator at the end and attested by the signatures of two witnesses in the presence of the testator.

It is not necessary for the purpose of the decision of this case to decide precisely what is the outer limit, the ring fence, of this power. But at present I am strongly inclined to the view that the grant of such a power, made by the British Parliament to the Federal Parliament, confers on the Federal Parliament as wide a power, with regard to Australia, as the British Parliament could itself have exercised, provided that the laws made would come fairly under the description of "trade mark laws," in ordinary parlance, if made by the British Parliament. It will also be found, I believe, ultimately, that the phrase under which powers are granted to the Federal Parliament gives to that Parliament even wider scope for its action than is given to the United States Congress by the corresponding grants of power in the United States Constitution. "Power to lay and collect taxes" is not as sweeping as our "power to make laws with respect to taxation." Power "to regulate commerce" may not be so wide as our power "to make laws with respect to trade and commerce." Power to "fix the standard of weights and measures" is more limited than our power "to make laws ... with respect to weights and measures." Moreover, the fact that in one case-the power with regard to piracies etc-there is express power in the United States Constitution to define piracies etc as well as punish them, may tend to show that the power of definition was excluded in the case of other powers. Yet I know of no instance in which the power to increase the area of a subject by definition-genuine, not colourable-has been denied; and, as I have already shown, the power has been actually recognized.

It is urged, of course, against this broader view of the powers, that, if it is right, the powers of the Federal Parliament would be practically unlimited-that the Federal Parliament would only have to call a spade a "trade mark," and then legislate as to spades. This is a mistake. I gave an instance during the argument. Suppose that the Federal Parliament desire to arrogate to itself the control of wills-a subject which is clearly not entrusted to the Federal Parliament. Suppose that it define "trade mark" as including a will, and enact that no will shall be valid unless registered as a trade mark. In such a case we should have no hesitation in treating such a law as invalid. It would be a sham. It would not be a law with respect to trade marks at all. It would be a law as to wills, under cover of a law as to trade marks. In such a case the Courts would have no difficulty in pronouncing that the Parliament had transgressed the boundary, had not applied itself to the exercise of its power at all. This is what the Privy Council decided in Attorney-General for Quebec v Queen Insurance Co (3 App. Cas., 1090). A provincial legislature in Canada had power to raise revenue by business licences, but no power to impose stamp taxes. It imposed a stamp tax, and called it a licence tax, and the Privy Council, looking at the substance of the Act, and not accepting as conclusive the name which the legislature chose to give it, said that the Act was void. It was not an Act "in relation to (insurance business) licences" at all. In some cases the task of the Court would be much more difficult, but it would have to be performed with such light as the circumstances in each case afford. We have some guidance on the matter from English cases, in which the limited powers of municipalities have come up for discussion. I apprehend that it is our duty to construe the powers of the Federal Parliament as liberally at least as the powers of municipalities to make by-laws. If there is power for a municipality to make by-laws as to nuisances, the municipality is not confined to the nuisances recognized by the law at the date of the grant of the power. In the case of White v Morley ((1899) 2 Q.B., 34, at p. 39) the municipal council had power to make by-laws for the prevention and suppression of nuisances not already punishable by virtue of any Act in force throughout the borough. A by-law was passed to the effect that any person who used the street for betting should be liable to a penalty. Such user was not in itself a common law nuisance, apart from the by-law; but the Court held the by-law to be valid under the power to prevent and suppress nuisances. "Where a thing is of such a character as that it can be a nuisance, it is to rest with the local authority to say whether it shall be considered to be a nuisance in the particular locality for which they have power to make by-laws. The Court can say whether it is reasonably possible for the prohibited act or thing to be a nuisance." In Kruse v Johnson ((1898) 2 Q.B., 91) also, Lord Russell of Killowen C.J. said (as to a by-law against playing or singing in the streets) that it was not necessary that the by-law should be confined to cases where the playing or singing amounted to a nuisance, or caused annoyance in fact. In those cases the power was merely to prevent or suppress nuisances; yet, if the plaintiffs in this case are right, the act should first be proved to come within the word "nuisance," as defined by the common law, before the by-law could be applied to it. But the Court declined to adopt any such narrow view of the powers conferred.

I am, therefore, of opinion that, even if the characteristics of the "workers' trade mark" did not bring it strictly within the class "trade marks" as understood in 1900, there is nothing in Part VII. of the Act which transgresses the power conferred on the Federal Parliament "to make laws with respect to trade marks." This opinion may not be quite necessary for the purpose of my judgment, inasmuch as I hold the view that the workers' trade mark does contain all the essential characteristics of a trade mark; but it is my duty not to let the narrow view of the nature of the federal powers pass without protest and by silence into unquestioned law.

I am also of opinion that there is nothing whatever in the law of New South Wales with regard to trade unions which render them incapable of owning or registering or using a trade mark. They can carry on a newspaper business: Linaker v Pilcher (84 L.T., 421); they can raise funds for parliamentary representation: Steele v South Wales Miners' Federation ((1907) 1 K.B., 361); and the true view seems to be that, if an association has the objects referred to in sec. 31 of the Trade Union Act 1881 (New South Wales) it has (subject to its own rules) unlimited freedom of action for the benefit of its members. The Trades Union Acts are Acts removing, not creating, disabilities. The defendant union is not even an artificial person created by the Federal Parliament for the purpose of holding this mark. It existed before the federal Act, and can carry on any business allowed by its rules, and hold any trade mark, if not prohibited by the law.

For these reasons I am of opinion that the second question should be answered in favour of the defendants.