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: ISAACS 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 JHiggins 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:
ISAACS J

The plaintiffs contend that Part VII. of the Trade Marks Act 1905 is unconstitutional and void as being beyond the power of the Federal Parliament to enact.

They cannot succeed without establishing two things, first, their right to challenge the validity of the Act, and then its invalidity.

As to the first, the Court cannot be called on, or with propriety assume, to question the legality of what Parliament has enacted as the will of the nation unless such a determination is absolutely necessary. It is a duty that has to be discharged when necessity arises as fearlessly and fully as the lightest that presents itself, and is in one respect the special function of this Court, but the interference must be essential. The paramount law of the Constitution must be upheld whenever a judicial controversy in which it is involved comes properly before the Court, but this exercise of judicial power is only legitimate in the last resort: See Bruce v Commonwealth Trade Marks Label Association ( 4 C.L.R., 1569 ); Chicago and Grand Trunk Railway Co v Wellman (143 U.S., 339, at p. 345); and the learned Editor's note in the report of Webb v Outtrim ((1907) A.C., 81, at p. 88).

Unless, therefore, the plaintiffs, or one of them, can show some legal cause of complaint, the infringement actual or contemplated of some private right (see per Lord Cairns L.C. in "Singer" Machine Manufacturers v Wilson (3 App. Cas., 376, at p. 391), or, in the case of the Attorney-General for New South Wales, some interference with the general community he represents, the Court should not proceed to determine the main question. If in the absence of such circumstances it expressed its view as to the legality of the Act, it would be overstepping its own constitutional functions, and offering an extra-judicial opinion as to the conduct of a co-ordinate branch of the Government.

Learned counsel for the plaintiffs have stated that they would be content with a mere declaration under Order III. r. 1 of the High Court Procedure Rules. With a slight, but not unimportant, modification, it is in the form which the present English corresponding rule has assumed. But the declaration referred to in the rule even in its extended form presupposes the establishment of an existing right. Its present form was designed to meet such cases as were in Jackson v Turnley (1 Drow., 617) and Rooke v Lord Kensington (2 Kay & J., 753) pointed out as beyond the ambit of the older rule: See also Privy Council in Rajah Nilmony Singh v Kally Churn Battacharjee (L.R. 2 Ind. App., 83, at p. 85) and Sardut Ali Khan v Khageh Abdool Gunnee (L.R. Ind. App. Supp. Vol., 1800, at p. 171) and per Lord Collins M.R. in Williams v North's Navigation Collieries (1889), Ltd ((1904) 2 K.B., 44, at p. 49). If a present and complete right is shown, or if facts supporting such a right are alleged as existing as between the parties though its enjoyment or enforcement may be deferred, a declaration may in a proper case be made whether the right be contractual: Societe Maritime v Venus Steam Shipping Co ((1904) 9 Com. Cas., 289); or non-contractual: London Association of Shipowners and Brokers v London and India Docks Joint Committee ((1892) 3 Ch., 242). But the right must not be dependent for its existence on possible events in the future, for in that case how could the Court declare it? Possible breaches of existing rights are different.

The individual plaintiffs assert a locus standi in two ways. First, they set up a business right, that is, the right to carry on their business of making and selling beer unmolested and free from dictation, or, in other words, free from compulsion to employ union labour or lose custom if they do not. If compulsion existed I should think their claim good. But how does registration amount to or authorize compulsion? The fact that the defendants register their mark in a book in the Trade Marks Office, does not induce or deter a consumer as to the beer he drinks. The use by other persons of a union mark on their beer might affect plaintiffs' custom, but that can be done independently of registration, and registration gives no further right of user than exists without it; as Buckley L.J. said In re Application of Lyle and Kinahan Ltd (24 R.P.C., 249, at p. 262), the registration of a trade mark confers no right of user but only that of restraining others from using that trade mark.

The only contingency in which registration could possibly affect the plaintiffs prejudicially is this: should they attempt to deceive the public by affixing the mark so as to represent as union made any beer that is not so made, they would be at once exposed to statutory correction. To honest brewers, such as I assume the plaintiffs to be, that could be no possible ground for objection; a dishonest brewer intending to apply the mark untruly has no right to claim protection for his dishonesty. Ex turpi causa non oritur actio. No right can form the basis of a cause of action if it rests on public deception: Ford v Foster (L.R. 7 Ch., 611). Therefore the plaintiffs' claim to protect a business right fails.

The second right they assert is a right, should they ever desire to exercise it, of selecting a trade mark resembling the one sought to be registered by the defendants. I do not understand a claim to something which is non-existent and may never exist, which is yet unconceived and may never even be desired; which, if ever conceived, desired, and brought into existence by anybody, may come into existence as the exclusive property of some Australian brewer other than the plaintiffs. They might with even more reason assert an exclusive claim to fish still in the sea, because there, at least, the things already exist.

The case of Powell v Birmingham Vinegar Brewery Co ((1894) A.C., 8) does not advance the plaintiffs' case. What was established there both in the Court of Appeal and the House of Lords, and formed the basis of the judgments, was this: that "Yorkshire Relish" was the name of the article itself, and no trader can validly assert an exclusive right to call articles of merchandise by their true names, for that would amount to a virtual monopoly in the sale of the things themselves. The objectors relied on an existing business right to sell the sauce. This view of Powell's Case ((1894) A.C., 8), is fully borne out by the later case of In re Trade Mark of Wright, Crossley & Co (15 R.P.C., 377).

Neither does Paine & Co v Daniells and Sons' Breweries ((1893) 2 Ch., 567) carry the plaintiffs any further. That case was a decision with regard to "a party aggrieved" for the purpose of special statutory application, but is no authority for a right of action depending purely on the principles of the common law. Registration alone could not produce injury to business. It is not a condition of user, and therefore no component part of it. If mere distant possibility of impediment dependent on conjectural occurrences be enough to entitle a plaintiff to challenge the validity of an Act of Parliament, I do not see why any person in the community could not, immediately an Act was passed relating say to the incorporation of Banks, raise the question of its constitutionality, because he already has the legal power of associating with others to form a banking corporation, and if he should choose to exercise it at some date, however distant, the Act stands in his way.

So far as the individual plaintiffs are concerned I think they have shown no case whatever.

I next consider the position of the Attorney-General for New South Wales. The fact that he acts on the relation of another is not material. If a public right is infringed, and the whole community is thereby affected, the Attorney-General may protect the public interest by appropriate action. If the public interests involved are State interests, the State Attorney-General may sue; if Commonwealth interests are involved, then the Commonwealth Attorney-General, representing the larger community, may sue.

As determined recently in the steel rail and wire netting cases, it is a fundamental truth that Commonwealth legislation looks to the Commonwealth as a whole and draws no distinction between States. So far as the claim of the Attorney-General for New South Wales rests on the right of individuals to register trade marks, I am of opinion it should fail for want of interest, because under a valid Commonwealth Act the right to register is a right which they can only enjoy as Australians, that is, as members of the larger and not the smaller community.

But if under the assumed powers of a federal Statute-in fact invalid-some usurpation of State administration or judicial authority is attempted in the State, it would be a trespass on State territory, and the Attorney-General for the State, as representing the King, could apply to restrain it. His rights in this respect could not be lessened merely because a similar usurpation was asserted over the territory of other States. And if there is a legislative usurpation, if an Act of the Commonwealth Parliament unauthorized by the federal Constitution, occupies part of the legislative field exclusively reserved for the State of New South Wales, and by its commands, operative in all parts of Australia, prescribes to the citizens of that State the rules of conduct they must follow under penalty, I am of opinion that the case is parallel with that of administrative and judicial intrusion upon State territory. The Attorney-General for a State in such case does not depend upon the infringement of rights possessed by individuals as Australians under a federal Statute, but protects on behalf of the Crown those rights and functions with which the King, guided solely by his State representatives and advisers, is invested in respect of the State.

The fact that his rights and functions in other States are similarly affected is immaterial.

If, therefore, Part VII. of the Act is beyond the power of the Parliament, its provisions constantly operating in New South Wales, and assuming to govern the conduct of residents of that State in relation to rights existing independently of Commonwealth legislation, the Attorney-General may protect the Royal powers from usurpation by obtaining a declaration that the legislation is unauthorized.

A question was raised during the argument, and may appropriately be dealt with here, whether sub-sec. (c) of sec. 74 and the provisions for registration were not sustainable under the trade and commerce power, even if other portions of Part VII. were ultra vires, as not being referable to that power, and not within the power as to trade marks.

Doubtless a good deal may be said for the validity of sec. 74 (c), which is decidedly severable in words, sense, and operation, from the rest of the Part, except mere registration, and that might be regarded as auxiliary to sec. 74 (c).

Protective provisions of this nature find a place in English and American legislation; and so in secs. 88 and 90 of the Act now under consideration.

The Court could, it is true, give perfect effect to every word of sub-sec. (c) without adding a word, or straining a word, and without calling in aid any power other than the trade and commerce power and its incidental powers. Therefore such cases as the Trade Mark Cases (100 U.S., 82) are not applicable, because, as Miller J. pointed out, the Court was there asked, not to disregard words that had been used, but to insert into general words other words of limitation that had not been used. So in all the cases that have followed that decision-viz., United States v Ju Toy (198 U.S., 253) and the precedents cited by Holmes J.: Illinois Central Railroad Co v McKendree (203 U.S., 514), and The Employers Liability Cases (207 U.S., 463). Consequently those cases are not relevant. But another principle comes into play. Though sub-sec. (c) is separate from sub-secs. (a) and (b), as one branch of a tree is separate from another, it is not an independent enactment. The same trunk, the same main purpose and idea, unites and supports them all. Sub-sec. (c) is a very important enactment, but it is clearly intended to guard against evasion of the proprietary rights in a trade mark, and would not have been enacted if it were thought the main purpose was unlawful. If the principal fails, its accessory, I conclude, cannot stand.

The Court is therefore bound to consider the validity of the provisions for registration of workers' trade marks. They are challenged on the ground that the marks are not and cannot under any circumstances be brought within the meaning of the expression "trade marks" as found in pl. xviii. of sec. 51 of the Constitution. If that is so, the objection is valid, for, the Commonwealth being a Government of enumerated powers, unless those powers are large enough of themselves to authorize such provisions, the legislation must fall. The Federal Parliament, in my opinion, based upon decisions of the Privy Council - The Queen v Burah (3 App. Cas., 889, at p. 904) and Hodge v The Queen (9 App. Cas., 117, at p. 132) - as within the limits of its conferred powers authority as great as the Imperial Parliament. I have expounded this view at length in the Excise Cases, and do not repeat my reasons. I adhere to them. But the Commonwealth Parliament cannot extend its powers; that would be breaking through the Constitution, and invading the domain reserved to the States. And no considerations of expediency or desirability springing from any source whatever are permissible to the Court in determining the limits of an express and substantive power. It is a mere question of dry law as to the extent of the power granted, to be determined on ordinary legal principles. Those principles have been plainly stated by Lord Selborne in The Queen v Burah (3 App. Cas., 889), and I still accept them as my guide here.

The burden of establishing illegality is on the plaintiffs, and they endeavour to discharge it by denying to these marks certain characteristics which, it is contended, are essential to the fundamental concept of a trade mark. The essentials of a trade mark, according to the plaintiffs, are:-

(1)

Ownership of the goods must co-exist with ownership of the mark used in connection with them.

(2)

Personal identification of the proprietor of the trade mark.

(3)

Exclusive ownership of the trade mark by the registered proprietor.

(4)

An existing business actually carried on at the time the mark is acquired, the acquisition being possible only by user of the mark in the business; or, what is substantially the same thing, by means of preliminary registration followed by immediate business user of the mark.

(5)

The business must be an independent commercial business.

(6)

The proprietor must be a person or association capable by State law of owning a trade mark.

If these grounds of objection to the legislation are found not to be substantiated there is no reason for treating it as invalid.

There is one governing principle which ought to be made clear at this point. To ascertain the really essential characteristics of a trade mark it is necessary to distinguish what is merely occasional, though frequent, and to strip the expression of everything that is not absolutely fundamental. If we find some attribute universally attaching to the idea in all circumstances, that attribute is probably indispensable; but if any feature, however usual its presence may be, is not invariably existent, if trade marks, well recognized and established and enforceable by English law, can be found without that feature, it cannot, I apprehend, be asserted that the fundamental concept includes the variable feature. The power of legislation is with respect to trade marks-that is, trade marks in the fullest sense, and not merely usual or ordinary trade marks. The fundamental concept once ascertained, the power is unlimited. I shall consider the various points in order, one by one.

(1) Ownership of the goods

Some of the cases-more particularly some of the American cases-do undoubtedly lead to the supposition that a trade mark cannot be owned except in conjunction with the ownership of the goods to which it is applied. Most of the English decisions cited were cases where the two facts co-existed. But during the course of the case this argument for the plaintiffs weakened, in view of instances that were suggested, and in the face of a decision such as that of Re Sykes and Co 's Trade Marks (43 L.T., 626, at p. 627). That case, which was not and cannot be impeached, is decisive of the position that ownership of the goods is not essential to proprietorship in a trade mark. The material facts were:-Sykes and Co were calico bleachers, who neither made bought nor sold calicoes, but merely bleached them for manufacturers or merchants. It was the custom in the bleaching trade to stamp the bleacher's mark in blue color inside the first fold of each parcel of calico, which was then stitched up, the trade mark of the manufacturer or merchant being stamped on the outside of the parcel. The bleacher's mark was looked for, not by the public, but by skilled wholesale buyers, as a guarantee that the calico was bleached by a particular house, and that the length of calico contained in the parcel was measured by them. The report says:-

"Thus they differ from ordinary trade marks, and convey a meaning only to skilled persons, who can readily distinguish the difference between marks closely resembling one another."

Points of importance may be noted:-

(1)

The bleachers had no ownership in the property.

(2)

Their contribution to its production was labour only, viz., bleaching and measuring.

(3)

The marks indicated bleaching and measuring by the applicants, and were looked upon as a guarantee in those respects.

(4)

The only right of bleachers to use the marks on other people's goods was custom, that is, a generally recognized permission.

Hall V.C. decided that they should be registered as trade marks, the limitation as to user being immaterial for present purposes. This case is a clear instance of what the law regards as the "lawful user" of a mark upon goods-a very material point when statutory definitions come presently under review.

Apart from the recognized authority of that decision, it must, on reflection, be admitted that, in the known circumstances of trade and commerce, to deny to persons engaged in business the right to protect themselves by means of trade marks indicating their skill, whether of manufacture or otherwise, exerted upon goods passing through their hands, would be to ignore the necessities and facts of daily commercial intercourse.

It is, however, desirable, and having regard to the elucidation of others of the objections raised, essential to thoroughly examine this branch of the argument, because a clear comprehension of what is meant by "the goods of the proprietor of the trade mark" is I believe most helpful to a proper understanding of the rest. I go at once to the recent English Trade Marks Act 1905, and point to the definition of a trade mark in that Act.

In sec. 3, the definition section, we find that for the purpose of the Act:-

"A `Trade Mark' shall mean a mark used or proposed to be used upon or in connection with goods for the purpose of indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture, selection, certification, dealing with, or offering for sale."

It has been said that this Act, being later than the Commonwealth Constitution Act, is not to be taken as a reliable guide to discover the meaning of the term "trade mark" in the Constitution. In some respects that may be true, but for the present I think the definition I have quoted is a substantially accurate definition of a trade mark as it has always been known, that is to say in its essentials. The questions as to what persons can own a trade mark, how it can be created, its assignability, or method of assignment, and all other incidents, which may or may not attach to it, are entirely beside that which is here the primary and controlling problem, namely, "what is the thing itself, which is called a trade mark?" To any suggestion that the definition I have quoted is new, in the sense that it enlarges the former conception of a trade mark, I would refer to the opinion, none the less reliable for being stated under circumstances of more than ordinary responsibility, given by the learned principal promoter of the Bill which has now become the English Act. Lord Justice Fletcher Moulton (then a member of the House of Commons), was a member of the Select Committee appointed by the House to examine and report upon the Bill, and he himself gave evidence before the Committee. His statements I refer to only as those of an eminent lawyer upon a subject with which he is conspicuously conversant. At that time, as the Bill stood, the definition was precisely as it stands now except that the word "certification" was not yet inserted. Mr. Fletcher Moulton was asked this question:-

"Take trade mark, does that in your opinion introduce an alteration in the law as regards what is meant by trade mark?" The answer was "No, excepting this; it puts clearly what I think has not been always clear to the Courts that it is not merely manufacture that entitles a man to a trade mark in goods. Take the case of the trade mark of Whiteley, the universal provider; I think he has as his trade mark two hemispheres with a map of the world. Probably nothing on which this trade mark appears is his manufacture, but he offers it for sale, and he selects it and he is perfectly entitled to have a trade mark for that purpose. So that the only way in which the definition of trade mark possibly enlarges-but I should rather say ascertains-the meaning of trade mark is that I have formally used the words: `manufacture, selection, dealing with, or offering for sale.' I may say that I put in `dealing with' because it was pointed out to me that in some of our very large export trades, the export agent has a trade mark which he puts on goods that pass through his hands. The large export houses that work on indent from abroad, have marks of their own, which they use in this way and it was suggested that `manufacture, selection, or offering for sale,' might not include that mode of use, so in order to meet the point I put in the words `dealing with."'

Further on Mr. Fletcher Moulton says of the expression "selection" that it might come under "offering for sale," but it might be that a person buys on indent for other people. "Selection," he adds, "has always been considered to be a very important part of the handling of goods." He says:-

"It is a new expression, but it is a valuable one in that way."

He was then pointedly asked, "How far, according to your view, is there any extension of the subject of trade mark by this definition beyond what the Courts have already decided under the existing law?" The reply was:-

"I do not think that there is any real extension, but I think it recognizes the extension which the Courts have, when necessary, put upon it."

Again the learned witness said:-

"May I explain ... why I have used the words `they are the goods of the proprietor of such trade mark.' What I want to guard against is appearing to mean that they are the property of that man; they are his goods, not in the sense of their being his property";

in fact a man may put his trade mark on goods worth thousands of pounds without having a penny of interest in them.

The case of Major Bros. v Franklin & Son ((1908) 1 K.B., 712) is a judicial decision that property in the goods as ordinarily understood is not essential to a trade mark. It perhaps will be convenient to state Lord Justice Moulton's concentrated view on the nature of a trade mark. He said: "A trade mark is almost a concept: it is a thing capriciously chosen for the purpose of indicating origin, and therefore it must have a distinctive character, but it need have nothing else."

I think, therefore, it is clear that ownership of the goods is no necessary part of the concept of a trade mark.

(2) Personal identification of the trade mark proprietor

This objection is that, in order to be a trade mark, the mark must point to some particular person or persons of whose workmanship the goods are. If by this is meant that the workmen are to be personally identifiable by means of the trade mark the authorities are overwhelming against it. It is sufficient to refer to Birmingham Vinegar Brewing Co v Powell ((1897) A.C., 710, at p. 716). If it means "a particular manufacture," as Lord Herschell in that case said it did, then I cannot see the point of the objection. The distinctiveness required by the Commonwealth Act is that the mark shall indicate that the articles to which it is applied are the exclusive production of the workers or of members of the association registering the trade mark. That is distinctive.

The degree of distinctiveness is immaterial. Once the position is grasped that the expression "the goods of the proprietor of the trade mark" does not mean the ownership of the goods or anything more than that the goods have in some way been "dealt with" by them-I leave out of consideration for the present who can be the owners of the mark-then it cannot be necessary that the mark should point to any particular individuals composing the proprietors of the mark as being the specific persons handling the specific articles. That would not be necessary in the case of a trading firm having branches, members and servants in various parts of the world. I am, of course, not now considering the actual mark tendered for registration in this case, for, on the point of constitutionality of the section, that is beside the question, and on that point of constitutionality it is the provisions of the Act alone that are to be regarded. We have to assume a worker or members of an association of workers who can possibly be considered the producers of goods in whole or in part. Whether a given mark or a given association answers the necessary requirement of the Act is quite another question. I see no reason for differentiating between the case of members of an association of workers, working for wages for an employer producing articles and indicating by a mark that the goods are the product of members of the association, and the case of the same persons being members of the same association of workers, but working by independent contracts for the same employer. Looking to the definitions already quoted there is as much distinctiveness of origin in the one case as in the other. If there were some special method of preparing or treating an article of merchandise, a method only known or practised by a particular association of wage earners, why would not a mark indicating that the article is prepared or treated by some member of the association be distinctive, and a most excellent guarantee to the public, and of the same character in all respects as if the association were in independent business?

(3) Exclusive proprietorship of mark

The next objection is that in order to be a trade mark the right to apply it must be exclusive. Lord Cranworth said in the Leather Cloth Co v American Leather Cloth Co (11 H.L.C., 523, at p. 534):-

"The right which a manufacturer has in his trade mark is the exclusive right to use it for the purpose of indicating where, and by whom, or at what manufactory, the article to which it is affixed was manufactured."

This view is as a general rule, but not invariably, carried out in the Trade Marks Registration Acts. But the truth is that the Courts in restraining by injunction the use of another's trade mark as such-that is, without regard to passing off-required proof that the mark belonged to the plaintiff, in other words, that it was his exclusively, in the sense that its use was not of common right. I do not now specifically deal with the Three Mark Rule, which I shall more particularly refer to presently, but of the generality of cases. The word "exclusive" in Lord Cranworth's dictum requires some limitation of its literal meaning. If it be material, I deny that the exclusive right of one person or one firm to use a particular mark is essential to its character of trade mark at common law, if exclusive be understood in the strictest sense. In the vast majority of cases the right is exclusive, because the mark has been originated by the particular trader using it. And if a trade mark has been so employed in the market as to indicate that goods come from one particular firm to the exclusion of all others, that firm has what is termed exclusive property in the mark for the goods: Somerville v Schembri (12 App. Cas., 453). But circumstances can easily be conceived where, by acquiescence or concurrent user, the mark has either been allowed to be copied or is used as a trade mark by another or others, so that no Court could restrain the use of it. This seems to be assumed by the Privy Council in Somerville v Schembri (12 App. Cas., 453). Still it could not be truly said that it has ceased to be a trade mark of its own originator, though it had ceased to be his trade mark exclusively, or that it was not a trade mark of any of the persons concurrently using it. A valuable illustration bearing on this point is afforded by the written precis of the evidence to be offered by Mr. Chas. Bailey to the Select Committee, which is worth quoting in his own words. On p. 54 of the report appears a reference to the difficulties attending the registration of trade marks on goods belonging to the Manchester cotton classes. He there says:-

"28.

When the Act of 1875 became law, and all trade marks then in use were called in, deposits were made in Manchester and London of upwards of 44,000 marks upon Manchester cotton pieces goods and yarn.

"29.

Many of these marks had been originated by bleachers who placed them in their stamp books, from which their Manchester customers could select marks appropriate for the goods which they gave to the bleachers to bleach, finish, and make up. Thus the same mark might be used by more than one merchant for more than one market, and they could not in the majority of cases be considered the exclusive marks of any particular merchant.

"30.

Many other marks, however, had been originated by export merchants and were confined by them to particular goods, or to particular customers abroad, and until the 44,000 marks had been called in it was not discovered that the same, or very similar, marks had been used by several traders unknown to each other, with the result that these traders could not claim such marks as their exclusive property.

"31.

As large numbers of these marks were of a very valuable character, and had been used upon goods, exported to various markets, without clashing with one another, it was felt that protection ought to be given to such of them as had not been in too general use in the trade.

"32.

Accordingly the Commissioners of Patents, with whom rested the duty of drawing up rules for the application of the Patents Act of 1875, drew up what is known as "the Three Mark Rule" under which three, or fewer, owners of the same, or very similar marks, were allowed to register such marks as had been in use prior to the 13th August 1875.

"33.

When there were more than three owners of the same, or very similar, marks, actual registration was withheld; but all such marks received quasi-registration by being placed in a separate list known at the Manchester office as the `B list,' and the comptroller was authorized to grant to the owners of such marks `certificates of refusal to register' in case such owners had occasion to take legal proceedings against infringers."

Mr. Bailey's precis affords much more information of an interesting character bearing on the question, but I have quoted sufficient to elucidate the matter in hand.

It seems clear, then, that in a department of trade of great proportions there existed before the first Registration Act in England a large number of trade marks, including in its three classes, as appears in the documents before the English committee, more than one-third of all the effective trade marks in all the 50 classes put together, and recognized commercially as trade marks, though not exclusively the property of any one person or firm. These marks would have been protected as trade marks within the meaning of the English Act of 1862, and, if that Act had provided for registration, might have been registered under it. That being so, it at once establishes the point that exclusive ownership, however usual, is not an invariable characteristic of a trade mark, and not being invariable is no essential part of the concept. It is plain, too, that instead of adopting the Three Mark Rule, which was an arbitrarily selected number, the limit might have been fixed at any higher number without affecting the principle. Before the English Act of 1883 it was held by Jessell M.R., In re Jelly, Son and Jones's Application (51 L.J. Ch., 639), that different persons up to three might register identical old trade marks in respect of the same goods, but if more than three were entitled to the mark then by "the rule of the Court" they could not be registered, since they came under the classification of common property. But a rule of the Court does not affect a legislature having plenary powers so as to constitute the rule a fundamental part of the concept of a trade mark.

Indeed, Lord Justice Moulton in his evidence spoke of a special difficulty in connection with registration, which was largely a difficulty arising out of historical considerations; in other words, as he said, "from the fact that trade marks existed long before there was any thought of registering them. That difficulty is the case of identical trade marks; trade marks so nearly resembling one another that if there were no special circumstances you would not allow them to be in different hands." And he continues: "The most common source of such trade marks is that before the first Act, 1875, there were no means by which one person could learn the trade marks adopted by another, so that a perfectly honest, independent concurrent user of the same trade mark was not uncommon." The learned witness pointed out that the difficulty was endeavoured to be met in the Bill, and in secs. 18 and 21 of the Act of 1905 the Imperial Parliament has made certain provisions for the registration of identical marks (sec. 10), and of the same trade mark or nearly identical trade marks for the same goods or description of goods by more than one proprietor. Though the legislation is new, it is apparent from what has been said that the all important fact of concurrent rights to the same mark is of very old standing.

The English Act of 1862 was, with the addition of registration, copied in New South Wales by the Act of 1865. The English Act of 1883 recognizes this, because in sec. 72 it provided that-"Except where the Court has decided that two or more persons are entitled to be registered as proprietors of the same trade mark, the comptroller shall not register in respect of the same goods or description of goods a trade mark identical with one already in the register with respect to such goods or description of goods." This was followed by Queensland in 1884, Act No. 13, sec. 70; Western Australia in 1884, No. 7, sec. 29; Victoria in 1890, No. 1183; sec. 16; South Australia in 1892, sec. 16; and Tasmania in 1893, sec. 80.

Were it not for the desirability of dealing with these objections fully I should have under this third head contended myself with saying that, granting for the sake of the argument that exclusiveness was essential, it is obvious that the mark referred to in this Act as the adopted mark of any particular worker or association must in its nature be exclusive to the worker or to the members of the association as the case may be.

(5) Independent commercial business

This objection is that the applicants do not carry on an independent or commercial business, and are therefore not capable of owning a trade mark. This seems an appropriate point at which to refer to the various statutory definitions of a trade mark before 1905. In 1862 the English Parliament in the Merchandise Marks Act defined trade mark as follows:-

"The expression `trade mark' shall 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 ... to be an article or thing of the manufacture, workmanship, production, or merchandise of such person, or to be an article or thing of any peculiar or particular description made or sold by such person":

the rest of the definition may be omitted. This was said by Vice-Chancellor Chatterton in Wheeler v Johnston (3 L.R. Ir., 284, at p. 290) to be the best definition he could adopt.

Similar definitions were provided in various Australian Acts relating to trade marks and fraudulent marks on merchandise. Thus in 1863 South Australia, in 1864 Victoria, Queensland and Tasmania, and in 1865 New South Wales passed Statutes of this nature. That of New South Wales remained unaltered until after the passing of the Federal Constitution.

From time to time, and more or less following the lead of English legislation on the subject, the Colonies except New South Wales, and except also, until 1884, Western Australia, passed prior to federation amending Statutes as to trade marks and their registration. Broadly speaking the definition accorded with the English definitions.

It will be seen that the statutory definition was on its face equally applicable to a workman as to an employer, provided the workman could "lawfully use" it by applying it to goods to indicate his workmanship, and would, I apprehend, have protected in England any of the Cutler's Company marks. The question resolves itself into what is meant by "lawful user?" Is it impossible for a worker who is an employee to "lawfully use" a trade mark to indicate "his goods" in the sense established?

One of the principal points-if not the principal point-made for the plaintiffs was that a trade mark is property, but property of such a nature as to be inseparable from goodwill, not assignable apart from it, inconceivable without it, and, therefore, that the trade mark of a worker, an employee who has no goodwill, was impossible because outside the fundamental concept of a trade mark.

Many cases may be found to bear out the argument of learned counsel that assignment of goodwill carries with it a right to trade marks used in the business. But it does not follow that the rule is universal or a necessary part of the fundamental concept. Indeed, it is clear that, if the trade mark is one indicating personal acts or skill of the individual using it in his business, it is not recognized by common law as assignable at all, because it would be deceptive if used by the assignee, and so, in that case at least, it is not deemed part of the goodwill. See Bury v Bedford (4 D. J. & S., 352); Pinto v Badman (8 R.P.C., 181); Leather Cloth Co v American Leather Cloth Co (11 H.L.C., 523); Thorneloe v Hill ((1894) 1 Ch., 569). The English and Australian States Trade Marks Acts forbade assignment of a registered trade mark at all, except in connection with goodwill. So far it is established that, generally speaking, a trade mark is assignable with goodwill; in the cases of registered trade marks it is not assignable at all without the goodwill; in certain cases, by reason of possibilities of deception, it is not assignable even with goodwill. But still it is said that does not establish the assignability of a trade mark in any case without goodwill. Even that position is not, however, tenable. This, I repeat, is not a question of rule and exception; not a case of a majority of instances. One instance standing clear and well established of a class of trade marks assignable independently of goodwill, that is independently of a business, is sufficient to dispose of the argument that incapability of assignment apart from goodwill is proof that an independent business is indispensable to the existence of a trade mark. Under the Cutlers' Company Act marks granted were the assignable personal property of the grantee-at least of non-freemen, and where assignment would not deceive. See per Turner L.J. in Bury v Bedford (4 D. J. & S., 352, at p. 370). Kerly on Trade Marks, 2nd ed., p. 103, says:-

"In this respect they differed from ordinary trade marks, which are, and always have been, assignable or capable of transmission only in connection with the business in which they are used."

As already pointed out, the Constitution gives power to legislate with respect to "trade marks," not merely ordinary "trade marks." The Cutlers' Company Acts (I quote them from Sebastian on Trade Marks, the only source available to me) have been in existence since 1623, and have been recognized in all English legislation for the registration of trade marks down to the present time. I would here observe that I attach more importance to a well established English trade mark than to foreign definitions, there being as yet no international agreement as to what constitutes a trade mark. (See Lord Justice Moulton's evidence in the English Committee's report, at p. 9.) Foreign definitions vary greatly in scope. In passing, too, I may observe that in Victoria and Western Australia the legislature for some purposes went so far as to expressly include within the term "trade mark" even trade descriptions. So that it cannot be said there was any universally recognized and defined limit of "trade mark" in Australia so as to cut down whatever fundamental notion appertained to the expression under ordinary English law. Turning then to the Cutlers' Company Acts, one of them, 41 Geo. III. c. 97 (1801), afterwards amended but not materially for this purpose, we find that it empowered a freeman of the company to give his mark by will to any person, in the same manner as his other personalty, subject to his widow's life estate, and which she might sell; and in default of a will the mark passed like the owner's other personalty, subject to the widow's life estate.

The condition of assignability along with goodwill therefore fails as a universal element of a trade mark. But, apart from assignability, it remains to be seen whether a trade mark can be lawfully possessed by anyone not yet engaged in an independent business.

Again, the Cutlers' Company Acts afford an answer to this question. An Act of 1791 (31 Geo. III. c. 58), by sec. 7, provided that apprentices, who had served seven years, were to have at 21 years of age their freedom of the company and a mark assigned to them.

The Act of 1801 before referred to enacted by sec. 5 that parish apprentices, who proved to the satisfaction of a justice that they had regularly served a freeman for seven years, were to be entitled to their freedom and a mark.

There can be no doubt that the marks referred to were trade marks in the strictest sense, and if the workmen ever set up in business they would have been protected as such, and further that no independent business was requisite to entitle the apprentice to an assignment of the mark. As already pointed out, once assigned, the mark was transmissible even apart from any business, that is, it was assignable in gross (see Encyclopaedia of English Law, 1st ed., p. 234).

The mere assignment by the Cutlers' Company conferred the property in the trade mark (see per Fry L.J., in In re Hudson's Trade Marks (32 Ch. D., 311, at p. 325), and the widow or the legatee under the will, or the beneficiary in intestacy of the owner of a cutler's trade mark may not have had any business at all.

No English case, so far as I know, excludes from the common law conception of the trade mark the possible notion of a paid workman owning one to indicate his workmanship. In Leather Cloth Company v American Leather Cloth Co (11 H.L.C., 523, at p. 545), Lord Kingsdown says:-

"If an artist or an artisan has acquired by his personal skill and ability a reputation which gives to his works in the market a higher value than those of other artists or artisans, he cannot give to any other persons the right to affix his name or mark to their goods, because he cannot give them the right to practice a fraud on the public."

Apparently his Lordship was thinking of an artisan who placed his works on the market, but it is the personal skill and ability and reputation of the artisan which form the point of the observation.

This passage was quoted in Pinto v Badman (3 R.P.C., 181, at p. 192), by Lord Esher M.R., who added "There is the rule and the reason of it."

In Burgess v Burgess (3 D. M. & G., 396, at p. 904), Turner L.J. says:-

"No man can have any right to represent his goods as the goods of another person."

Recollecting that the term "his goods" means not necessarily his property, but goods in respect of which he has performed some labour or in respect of which he is in some way identified, there seems to me no inherent objection to a paid workman being included in the very general terms used by the learned Judges. If Stradivarius had been a paid servant of some vendor of violins and working for a stipulated salary, but with the contractual or customary right of specially marking violins made by him, why should he not have the same right to the mark as if he were carrying on an independent business of making violins and remunerated by way of a fixed price, but under an engagement to work for no one else than the one merchant who employed him?

Why should these general principles be restricted to persons who carry on business independently? "Independently," though best expressing the contention, is a wrong word; for an employer manufacturer is no more independent of his workmen than his workmen of him. They are equally engaged in business in the large sense of the word, and the product is the product of their joint contributions. Lindley L.J. in Rolls v Miller (27 Ch. D., 77, at p. 88), speaking of the word "business" in a restrictive covenant, said:-

"The word means almost anything which is an occupation, as distinguished from a pleasure-anything which is an occupation or duty which requires attention is a business-I do not think we can get much aid from the dictionary."

In Cigar Makers' Protective Union v Conhaim (12 Am. S.R., 726, at p. 729; 40 Minn., 243), one of the cases most strongly relied on by the plaintiffs, even the majority of the divided Court admitted that the members of the union were all engaged "in the same kind of business, to wit, the making of cigars." The distinction drawn was:-

"But they are not engaged in business together. The business and business interests of one are as distinct from those of another as though they followed entirely different kinds of business."

I shall revert to that case in another connection, and only desire at this point to emphasize the fact of recognition that workers have a business.

In Hetterman v Powers (102 Ky., 133; 80 Am. S.R., 348) the Court also recognized that the working men were engaged in the "business" of working for wages: and so with other cases.

In Schmalz v Wooley (57 N.J. Eq., 303; 73 Am. S.R., 637, at p. 643) the Court, in words which seem to place the matter upon a perfectly satisfactory legal basis, says:-

"The public object sought in the protection of trade marks is to bring upon the market a better class of commodities, and the means for attaining that object is by securing to those who are instrumental in supplying the market whatever reputation they gain by their efforts towards that end. The workmen by whose handicraft the commodity is made is one of these instruments, just as is his employer who furnishes the raw material and owns and sells the finished product; and if the former is permitted by the owner to place upon the commodity a mark to indicate whose workmanship it is and thereby commend his workmanship to other employers, this licence from the owner should be deemed a right against everybody else."

I pause there for a moment to observe that user of such a mark under such a licence would constitute a lawful user, and would satisfy every condition of a trade mark under the English Act of 1862 or the New South Wales Act of 1865. The Court proceeds to say:-

"His aptitude in his trade is his property, and if by a mark he can have it identified as his in the market, he may enhance its saleable value and thus secure the same sort of advantage as his employer by similar means. No reason exists why this advantage should not be protected by the Courts in the same manner and to the same extent as is the like advantage of the employer. The mere fact that one rather than the other of these persons has placed the product upon the market has no rational bearing upon the matter, for both alike have had the market in view in the efforts they have made and through those efforts the market is supplied."

The lawfulness of application of the workers' trade mark to any articles made by the owner of the mark would depend entirely upon circumstances. A commission agent or a bleacher might be restricted by the prohibition of the owner of the goods from placing his mark upon them; or he might be permitted to do so. In the one case his application of the mark would be unlawful; in the other lawful-other conditions of lawfulness being observed, such as absence of imitation of another's mark.

(4) Existing business and prior user, or the equivalent

Probably at common law prior user is essential to confer ownership of a trade mark. The English Act of 1875 allowed ownership by registration: See In re Hudson's Trade Marks (32 Ch. D., 311, at p. 325), though, as decided by the House of Lords in John Batt & Co v Dunnett ((1899) A.C., 428), unless the person registering the mark either deals in the goods for which the mark is registered or bona fide intends to deal in them, the registration is unauthorized. This case is relied on to support the objection now under consideration. The Lord Chancellor referred to "the trade which he (the appellant) had either begun or intended to begin." It was held that the Act, properly construed, conferred no right to register a trade mark under the circumstances of the case because on the facts the appellant at the time of registration had not and did not intend to have any trade whatever in the goods. The Act did not apply to such a case at all. But that was merely construing a piece of legislation, as to the extent to which, by the terms of the Statute, registration apart from user conferred the right of ownership of the mark. Once the stage is reached that registration can and does to any extent-independently of any actual present user, and actual present business-confer rights of ownership, it displaces the argument that prior user is inherently indispensable to the creation of a trade mark. The extent to which such a legislative provision may go is for the discretion of Parliament and not of the Courts to lay down.

(6) Capacity of an association to own a trade mark

We are at last brought face to face with the final problem whether there is anything so inherently repugnant to the conception of a trade mark, in an association of workers possessing one for the purpose of distinguishing their productions from similar articles of other persons, that the federal legislature cannot confer any right to such proprietorship; or whether if not inherently repugnant, the capacity to hold trade marks must be given, if at all, by State law.

It may be useful to recall the steps by which we have reached this point. It has been shown by instances that cannot be disputed that none of the features specifically mentioned and dealt with above can be considered essential, that is to say:-

(1)

Ownership of the goods;

(2)

Personal identification of the trade mark proprietor;

(3)

Exclusive ownership of trade mark;

(4)

Independent commercial business;

(5)

Existing business or prior user of mark.

These points once established, it is difficult to understand how the provisions attacked are illegal. In the case of an association of workers, it is plain that it is possible to clearly identify the membership at any particular moment-the method of entry into the association and qualifications are immaterial-and if so, why is the law that permits such an association to register a trade mark unconstitutional?

As regards the single workman, I am happy to think I have the support of the learned Chief Justice in the view I take. But I see no difference in principle between a law enabling an association to register, and one permitting a single workman to register.

Suppose that not merely a Stradivarius himself, but also nine others of his family possess and exercise the secret of an unrivalled method of manufacturing or varnishing violins, it is plain on precedents already cited-such as the concurrent cotton marks, that, equally with Stradivarius, each person separately, even though working for wages, may use, and if the law so provides, may register the same trade marks for violins. It would indicate, not the particular member of the family that produced or finished the instrument, but that it was one of the Stradivarius family. And if they may separately register, I do not see why a law may not permit them to jointly own and register the mark, for registration by an unincorporated association is nothing more than a joint registration by all the persons associated. Can it be truly said that such a law is inherently repugnant to the fundamental conception of a trade mark? An association of merchants might jointly use and register such a mark because each one might, and if so I cannot see why a difference in this respect should exist with regard to an association of workmen, if each one may adopt the mark selected. The doctrine said to be extracted from American cases, to the effect that at common law trades unions cannot have a trade mark, seems to me either irrelevant or fallacious if put forward as English law.

Conhaim's Case (12 Am. S.R., 726, at p. 729) held that a mark adopted by a cigar makers' union was not a legal trade mark-(1) "because it is not adopted nor used to indicate by what person the articles were made; (2) because its use is not enjoyed as an incident to any business, and the right to use it cannot be transferred, even with the transfer of the business in which it might have been employed; ... and (3) because there is no exclusiveness in the use, or right to use" it. The first reason is opposed to the highest English authority above cited; the second reason was partly founded on the Court's opinion already noticed, that, though each workman had a business, the union as such had none, and the rest of that reason assumed that, unless the right to use a mark was transferable with the business, the mark could not ever be a trade mark-which is shown to be clearly against English law; and the third reason, as we have seen, is not universal. The decision may have been right or wrong in the State of Minnesota; I do not pretend to offer any opinion as to that.

Another case much pressed was McVey v Brendel (144 Pa. St., 235; 27 Am. S.R., 625), in which the Court held that an unincorporated association, the Cigar Makers' International Union, formed "for promoting the mental, moral, and physical welfare of its members," but which is neither a manufacturer nor a dealer, cannot acquire a trade mark in a label adopted by it, distinguishing and discriminating between the work of union and non-union workmen. The Court rested its decision as to trade mark upon the ground that the union was not a business organization engaged in making cigars for sale, and was not a trader within the meaning of the common law or within the purview of the Act of Congress, and therefore could not have a distinctive label. That principle would deny such a right to a single workman equally with an association, and if unsustainable in the one case is equally so in the other. The ultimate decision may have been unassailable, but the reasoning upon which it is based is all that is of importance here. The rest of the case is immaterial. As opposed to these decisions there are others cited by the defendants, chiefly Hetterman v Powers (102 Ky., 135; 30 Am. S.R., 348) and Schmalz v Wooley (57 N.J. Eq., 303; 73 Am. S.R., 637). In Hetterman's Case (80 Am. S.R., 348) the Court says that they may admit that the label is not used as a trade mark in the ordinary sense of the word, as it is not a brand put on the goods of their owner to separate or distinguish them from the goods of others. Now, so far, I think the Court was intending merely to indicate that the case in hand was not one of the usual cases where ownership of the mark coincided with the ownership of the goods. I arrive at that conclusion because the Court proceeds to say: (80 Am. S.R., 348, at pp. 350, 351, 352)-"But we cannot agree on that account that it does not represent a valuable right which may be the subject of legal protection. Why may not those engaged in skilful employment so designate the result of their labour as to entitle them to the fruits of their skill when it is admittedly a source of pecuniary profit to them? And this, though they may not own the property itself?"

They are not, it is true, "in business" for themselves in the ordinary sense, but they have property rights nevertheless. They may not select a label and be protected in its use apart from its connection with some commodity; but they not only select it in this instance, they apply it to property, and it does not at all matter that the tangible property is that of another. So far it seems to me the Court was in perfect accord with the words quoted from the evidence of Lord Justice Moulton.

The judgment proceeds:-

"In order to get the benefit of the superior reputation of cigars made by them, the appellees select and apply this label as a distinguishing brand or mark. And it would be strange if this thing of value, this certificate of good workmanship, and which makes the goods made by them sell and thus increases demand for their work, be entitled to no protection, because those making the selection and application are not business men, engaged in selling cigars of their own. The man who is employed for wages is as much a business man as his employer in that larger sense in which the word `business' has come to be used by statesmen and legislators."

Further on the Court says:-

"The learned Chancellor below, in an exhaustive opinion reviewing all the authorities, among other things, said, and we can say it no more clearly, that `the known reputation of a particular kind of skilled labour employed in the development of a particular product or class of products determines to a large degree the value or price of such products when put on the markets. To stamp or label a commodity as the product of a particular kind or class of skilled labour determines the demand for and the price of such product or commodity. The marketable price of a commodity influences the scale of wages paid for its manufacture. The higher the price, the higher the wages paid; hence it is indisputable that the employee whose skilled labour, in the production of a particular commodity, creates a demand for the same that secures for him higher remunerative wages, has as definite a property right to the exclusive use of a particular label, sign, symbol, brand, or device, adopted by him to distinguish and characterize said commodity as the product of his skilled labour, as the merchant or owner has to the exclusive use of his adopted trade mark on its goods."'

In Schmalz's Case (73 Am. S.R., 637, at p. 643), after stating the principles previously adverted to upon which a workman may be considered entitled to protection in respect of his skill, the Court proceeded to point out how Weener v Brayton (152 Mass., 101) was faulty in its ratio decidendi, and thereby answered one of the objections in this case, viz., that the trade union mark did not indicate the particular persons by whom the articles labelled were made, but merely persons who were not connected with each other in any business. The Court said: "The first clause of this objection would unduly restrict the law of trade marks as everywhere recognized, for it is established that, whatever be the quality indicated by a trade mark, the mark need not point out the particular person from whom that quality is derived. The law has placed no limit upon the number of persons who may unite for business purposes and jointly acquire property in a trade mark, and yet it is evident that, if there be many, some of them may have no personal share in producing the article identified by the mark."

In this, the Court was in exact line with the House of Lords in Powell's Case ((1894) A.C., 8) above cited.

It continued:-

"The second clause in the objection assumes what does not appear to be true in the case before us. We understand from the bill that the members of the association represented by the complainant are connected together as journeymen hatters; that their skill in this trade and their mutual assistance in profiting by its practice from the motive and chief aim of their association. This connection is as clearly one for business purposes as is that of members in a partnership or of stockholders in a corporation. Although it is a comparatively novel species of relationship, it has become an established one, and therefore calls for the application of those general principles of law and equity which are applied to other species of business associations. According to these principles, we think a workman or a number of workmen engaged in the same branch of industry and banded together for their mutual profit in the pursuit of their common vocation, may acquire a right of property in a trade mark designed to distinguish their workmanship from that of other persons, and that a trade mark so owned is entitled to the same protection as other trade marks."

In Weener v Brayton (152 Mass., 101, at p. 105), and, as I think, properly criticized in Schmalz's Case (73 Am. S.R., 637), the Court admitted that "Upon the question whether labels of this character are valid trade marks there has been some contrariety of opinion. In People v Fisher (50 Hun., 552), said the Court, "under the New York Penal Code, which does not define a trade mark in essential particulars differently from the definition usually adopted independently of the Statute, it was held that the label was a valid trade mark." The Massachusetts Court however proceeded to declare its inability to agree with that view. It appears from the judgment in State v Bishop (128 Miss., 373; 49 Am. S.R., 569) that People v Fisher (50 Hun., 552) was decided by the New York Court on very much the same lines as Schmalz's Case (73 Am. S.R., 637). See also per Folyer J. in the New York Appeal Court in Congress and Empire Spring Co v High Rock Congress Spring Co (45 N.Y., 291; 6 Am. Rep., 82).

In my opinion, the views presented in Hetterman's Case (80 Am. S.R., 348) and Schmalz's Case (73 Am. S.R., 637) are correct, and amply sustain the constitutionality of the enactment so far as it permits associations of workmen to register a trade mark which they, independently altogether of the Statute, have adopted.

In the report of the Select Committee upon the English Bill of 1905, Mr. Griffin, who under Mr. Dalton acts, as I understand, as Registrar of Designs and Trade Marks, stated that there are frequent applications from trade unions to register a mark which is going to be used upon all goods made by the trade union, and he added:-

"Of course it is not a trade mark in any sense; it is only a kind of hall mark, but at the same time there is no reason why it should not be protected. It would mislead the public just as much if it were forged or misstated as if it was a real trade mark."

He calls it a "quasi-trade mark," and explains that neither it nor the Fisheries Board Mark had the ordinary qualifications of a trade mark, because it would not be put on by a trader to distinguish his goods from those of another.

Apparently, Mr. Griffin is stating the ordinary understanding of a trade mark arising from the working of the Acts, and the practice of the Courts.

It is because the practice of the Courts, to which text-writers have mainly turned their attention when considering the nature of the thing protected, has obscured the central notion of a trade mark that the present difficulty has arisen. The Common Law Courts gave a remedy by way of damages for deceit, then chancery first aided common law, and next undertook independently to enjoin on the ground of property. Property, in the sense of the right of applying the mark to certain goods and so guarding the trade in their goods, was-at all events till lately-almost always asserted where the same person owned both mark and goods. At times a case like Re Sykes and Co 's Trade Marks (43 L.T., 626) appeared, but the general case seemed to press itself forward as the only one, until the foundations of the matter come to be examined. The growing requirements of commercial and industrial life constantly demand the more extensive application by the Courts of well established principles. As Lord Cottenham L.C. in Millington v Fox (3 My. & C., 338) applied an old principle, viz., the protection of property by injunction, to a somewhat new phase of human affairs, viz., the increased importance of trade marks as such, so the same principle seems to me to be capable of application in the later developments of industrial rights. The Courts might or might not prove equal to the occasion in the absence of legislation; but if legislation which exists assumes a certain class of business or trade as a condition of registration, (see per Lindley M.R. in In re Batt & Co 's Trade Mark ((1898) 2 Ch., 432, at p. 440), and forbids recognition of rights without registration, it leaves the Courts powerless even if the common law principle standing alone would suffice. Is there anything then in the inherent nature of a trade mark which stands in the way of the National Parliament, having express power to legislate "with respect to trade marks," meeting the possible, and as we must assume from the Act itself, the now existing needs of society, by protecting artisans and public alike in the way attempted? The power over trade marks, though undoubtedly a power to protect and regulate property, was not conferred for the sole benefit of the merchants or other business men owning marks, it was for the general good government of the people of the Commonwealth, and public protection from fraud which always was an element in the action of the Courts in cases of trade marks, (see, for instance, per Lord Westbury in Hall v Barrows (4 D. J. & S., 150), and particularly per Lord Herschell in Reddaway v Banham ((1896) A.C., 199, at p. 209):-

"The word `property' has been sometimes applied to what has been termed a trade mark at common law. I doubt myself whether it is accurate to speak of there being property in such a trade mark, though, no doubt some of the rights which are incidental to property may attach to it."

This, as Sebastian on Trade Marks, 4th ed., p. 168, says, represents the prevailing opinion in recent times, is in my judgment a consideration that is not foreign to the power of legislation conferred upon the Commonwealth Parliament with reference to the same subject matter.

Before Federation each State had the full and uncontrolled power of a unitary state to legislate with reference to trade marks, to regulate them, to protect them, to limit them, to prescribe the modes of acquiring them, to affix consequences to them, to enact who might possess them, to annex to them any condition of assignability or to annul any conditions already existing, and, in short, to deal with the subject in any manner it thought fit. It had also the power arising from its unlimited right of legislation of transferring from any other distinct branch of law any subject however foreign, and of arbitrarily including it henceforth among trade marks. This last authority I do not hold the Commonwealth Parliament can exercise unless it has among its other granted powers jurisdiction also over the subject so transferred. But having cleared the term "trade mark" of the non-essentials which have clung around it by reason of certain remedial procedure and the notions which inevitably root themselves in the soil of every day practice, and thence branch out until at times they obscure the central object itself, we find that trade marks mean nothing more or less than marks used in trade and connected in some way with goods in order to identify the goods with persons, that is, to indicate their connection with some persons or class of persons who singly or in association have in some way dealt with or operated in relation to the goods. The British Parliament has acted upon this in sec. 62 of the Act of 1905 with regard to special trade marks, making exceptional provisions as to their registration, still treating them as fairly within the ambit of trade marks. This enactment the Commonwealth Parliament has followed in sec. 22 of the Trade Marks Act 1905. If the Commonwealth Parliament could validly pass that section, it seems decisive of the present question. If it could not, then could the State Parliament enact it, and so create side by side with the Commonwealth Trade Marks Act another branch of trade marks law, recognized as such by the Imperial Parliament, but altogether outside Commonwealth control? I do not think this diversity of jurisdiction was intended by the Constitution. With respect to trade marks defined as above, the Commonwealth Parliament has, as I think, complete jurisdiction, and if so, I fail to understand why it cannot lawfully enact that this or any other association of Australians might become the possessors of a trade mark. The State, it is true, has general power over the personal capacity of its citizens. If in exercise of that power it said that no person under 25 years of age or women should be capable of holding property, would the Federal Parliament, though having full power with respect to trade marks, be incompetent to permit these classes of persons to become proprietors of trade marks? And if the Federal Parliament, on the other hand, enacted that such persons should not have the right of possessing trade marks, how could the State override that by enacting that they should? The Commonwealth has, for instance, express power with respect to bankruptcy and insolvency, sec. 51 (xvii.), and marriage (xxi.); but the State might enact that no person under 25 should have the capacity to become insolvent or to marry. Could the Commonwealth powers be so neutralized? I confess I do not understand the doctrine which acknowledges the plenary character of powers, and at the same time restricts them. Denying complete supremacy with regard to a power affirmatively granted is a doctrine which seems to me incompatible with sec. V. of the Commonwealth of Australia Constitution Act, and one which leads not merely to constant conflict, but also to inevitable uncertainty as to the respective spheres of national and State action and authority.

The power over trade marks is on the principle emphasized by the Privy Council as plenary as that of the Imperial Parliament; and though the planes of legislative action by Commonwealth and State may cross, whether on the field of criminal or civil law, as must sometimes happen by force of the interlacing circumstances of life, yet where they do, the former is supreme (sec. V. of the Commonwealth of Australia Constitution Act, and by the Privy Council in Toronto Corporation v Canadian Pacific Railway ((1908) A.C., 54, at p. 58).

My opinion is that the Commonwealth Parliament may give to any existing person or persons, or deprive them of, the right of holding or transferring trade marks. Part VII. of the Act does not create any artificial person for the purpose-and it is unnecessary to say that if it did that would be invalid-but it accepts certain independently existing facts:-(1) workmen single or associated, (2) a mark indicating their labour, and (3) their adoption of the mark; and then, with all these facts pre-existing, it permits registration and confirms or confers legal ownership and protects it. In this I see no excess of legislative authority.

The contention that an association of associations is incapable of being the owner of a mark is, in my opinion, of the same nature and open to the same answer as in the case of a single association. If the Parliament is once seised of legislative power over a subject, it can regulate it as it pleases. Further, the objection is immaterial, because the defendant association is not a compound association, and the provision as to compound associations is clearly severable if in itself invalid, and may be disregarded (per Miller J. in the Trade Mark Cases (100 U.S., 82)), without in the least affecting the main purpose of the enactment. There can be no doubt the legislature would have enacted all the rest if compound associations were known to be outside its powers. The compound association is auxiliary only, and is the accessory, not the principal enactment.

In view of my former parliamentary connection with the Statute, I have been more than ordinarily solicitous to re-examine the challenged provisions ab initio , and have endeavoured to follow in detail the various objections raised to their legality and to state explicitly the reasons upon which my judgment is based. This has led to a somewhat extended exposition, but I am of opinion that, while not departing in the least from the principle of not enlarging enumerated powers, the plaintiffs' case is answered by reference to the strictest legal considerations. An observation of the Lord Chancellor in John Batt & Co v Dunnett ((1899) A.C., 428, at p. 430), will illustrate my meaning. His Lordship said in effect that the appellant, in the circumstances appearing, might have been rather a dealer in trade marks than a dealer in rice, and was disposed to register attractive trade marks with a view of vending them to others. That was not permissible under the English Statute as it stood; but in what way would it be beyond the authority of a legislature having plenary power over the subject of trade marks to permit anyone to register labels or devices, to be used as trade marks, to constitute him the owner of the labels or devices with power to sell them to others, and to forbid others to use those labels or devices as trade marks unless with the permission of the owner? A contention of that nature appears to me unarguable, and yet the present case does not go so far.

The power to make such a law must exist somewhere in Australia. If not in the Commonwealth Parliament, it must still be in the States. If in the States alone, it must be because it is not legislation with respect to trade marks-but the mere statement of the proposition is its own answer. Nearly every argument of the plaintiffs is however contained in it. If it is unsustainable, it is because, to give legislative jurisdiction with reference to the registration and proprietorship of trade marks, actual trading is not necessary before registration, or before proprietorship can be conferred; and that it is not inherently foreign to the conception of a trade mark to give protection to the skill of a designer of a trade mark who does not happen to be a dealer in the particular goods. If these views be not faulty then why is it unconstitutional to allow workers, or an association of workers, to register as a trade mark any design denoting the origin of their productions and which shall belong to them exclusively, or, in other words, which no one else shall use at all, or if total prohibition be not sought, which no one else shall use unless truthfully? I am unable to assent to the argument that maintains the illegality of such an enactment. It is said that the States alone can do this. If so it would, as I think, be not only a restriction of the constitutional grant of power and a shortening of federal jurisdiction which might be required to effectually deal with the subject of trade marks, but also a commingling of powers assumedly equal, creating possibly conflicting provisions, and leading very probably to confusion in different States, on the one subject of trade marks. This is the very result, it seems to me, that the Constitution, by placing this power in a single hand for the guidance of the whole people, intended to avert. And in any case is it true that under State law a trade union is incompetent to own a mark?

The defendant union is formed under the New South Wales Trade Union Act 1881; and is also an industrial union duly registered under the State Industrial Arbitration Act 1901.

The New South Wales Act of 1881 is practically the same as English legislation. To the trade unions of New South Wales, the observations of Lord Macnaghten in the Taff Vale Railway Co v Amalgamated Society of Railway Servants ((1901) A.C., 426, at p. 437) is perfectly applicable. His Lordship said:-

"Parliament has legalized trade unions, whether registered or not; if registered, they enjoy certain advantages."

The Act provides (sec. 5) that the Companies Act is not to apply to a trade union. In the result the union, so long as it pursues no unlawful object-and none is suggested-is a legal association existing independently of Statute, though legalized by Statute, and perhaps registered under the Statute. Its objects are not prescribed by Statute, sec. 31 not being exhaustive or limiting its powers. See Steele v South Wales Miners' Federations ((1907) 1 K.B., 361); Linaker v Pilcher (84 L.T., 421). In the last mentioned case Mathew J. it is true said that publishing the newspaper was not trading, but that was because when he looked at the rules they gave no authority to trade. Having looked at the rules, and found that what they authorized was not trading but improving the condition and protecting the interest of the members, he held that there was no breach of the rules because as a matter of fact this was all that the newspaper was employed for.

I gather from his Lordship's judgment that, even if the union had been trading in fact, he would have held it good, if the rules had permitted it. He did not hold that it would have been ultra vires to trade if the rules so provided. It was argued in that case that a trade union was defined by sec. 23 of the Act, and that the definition showed that a trade union is not an association for the purpose of trade and could not carry on anything for business purposes or for profit, and therefore could not carry on a newspaper.

The learned Judge as to that contention said that the Act did not operate to cut down the rights and powers of the Society.

On the whole that case is, in my view, decidedly in favour of the position that, if its rules permit, a trade union may trade.

Steel's Case ((1907) 1 K.B., 361, at p. 367) is a very strong example. One of the objects of the trade union was "to provide funds wherewith to pay the expenses of returning and maintaining representatives to Parliament." Now, if that is a valid object, it is impossible, I think, to argue successfully that trading is unlawful. Yet it was held to be perfectly lawful. Darling J. held it was lawful on two independent grounds, one of which was the definition in sec. 16 of the Act (corresponding to sec. 31 of the New South Wales Act), but that definition was not intended to be exhaustive. He said that the lawful purposes of the union are not limited to the purposes set out in that section, and there was nothing to prevent the association from lawfully doing other acts beyond those there mentioned.

Phillimore J. rested his judgment solely on that view, and held that, as the object mentioned was not illegal at common law, there was nothing to prevent the union from prescribing it by its rules.

But all depends upon what the rules themselves provide (Yorkshire Miners' Association v Howden ((1905) A.C., 256)). Upon the authority of the cases cited it appears to me that a trade union is an unincorporated association of individuals with certain objects specified in the Act, which once were illegal but are so no longer; and that, unless forbidden by Statute, they may, like any other association of individuals, have any other objects not unlawful, and may define those objects by their social contract, that is, in their rules. And if trading by the owner of a trade mark were essential to its existence-though I have shown it not so-I can see no obstacle to trading by a trade union as that is not contrary to common law, nor, since the Companies Acts are expressly made inapplicable, to any Statute law.

This consideration has relevancy only to the extent of establishing that the union as a union is not struck with an inherent incapacity to trade, and that, for the purpose of owning a trade mark, it stands in substantially the same position as any single worker or any association of workers.

The legislation objected to here does not, in the view I have presented, attempt to create any new property, or do more than regulate in connection with goods in trade the use and registration of trade marks as fundamentally conceived.

My opinion upon the whole case, then, is that Part VII. of the Trade Marks Act is within the competency of the Federal Parliament, and that this action should be dismissed.