ATTORNEY-GENERAL (NEW SOUTH WALES) v BREWERY EMPLOYEES UNION OF NEW SOUTH WALES
6 CLR 4691908 - 0808A - HCA
(Judgment by: O'CONNOR J)
Between: ATTORNEY-GENERAL (NEW SOUTH WALES)
And: BREWERY EMPLOYEES UNION OF NEW SOUTH WALES
Judges:
Griffith CJ
Barton J
O'Connor JIsaacs 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)
Judgment date: 8 August 1908
Sydney
Judgment by:
O'CONNOR J
Two separate questions of law have been submitted for our consideration. I propose to deal at once with that which, though second in order, is first in importance, namely, whether the Parliament of the Commonwealth has power to enact Part VII. of the Trade Marks Act 1905. The whole controversy turns upon the construction of pl. xviii. of sec. 51 of the Constitution which enables Parliament to make laws for the peace, order, and good government of the Commonwealth with respect to "copyrights, patents of inventions and designs, and trade marks." The question to be determined is whether the subject matter upon which Parliament is thus empowered to legislate under the heading "trade marks" can include what is called the workers' trade mark created, regulated, and protected, by secs. 74 to 77 of the Trade Marks Act 1905.
The meaning of the expression "trade mark" is plain enough taking the words in their ordinary signification. So used the expression would include any mark used in trade or commerce, and would undoubtedly cover the kind of mark described as the "workers' trade mark" in the provisions now under consideration.
It cannot however be denied that the words taken together have acquired a meaning as a legal term. The expression "trade mark" has long been used to describe a special kind of mark used in trade, recognized as property, having well known legal incidents, and which had been for many years before the passing of the Constitution a subject of international agreement in Europe, America, and the different portions of the British Empire, and a subject of legislation in Great Britain and the several Colonies of Australia. The ambiguity, therefore, which meets us at the outset is this: has the Constitution used the expression in the sense which the words convey in their ordinary meaning, or has it used it as a legal term carrying its acquired signification with it?
The rule of interpretation to be applied in such a case is well known. Where words have been used which have acquired a legal meaning it will be taken, prima facie, that the legislature has intended to use them with that meaning unless a contrary intention clearly appears from the context. To use the words of Denman J. in R. v Slator (8 Q.B.D., 267, at p. 272):-
"But it always requires the strong compulsion of other words in an Act to induce the Court to alter the ordinary meaning of a well known legal term."
I have been unable to find either in the sub-section itself, or in any other part of the Constitution, any indication of the intention of the legislature to use the expression "trade mark" in any other than its recognized legal meaning. On the contrary, the more the matter is considered the more clearly it will appear that the expression cannot, consistently with the rest of the Constitution, have been used with any other meaning. I shall take one illustration. The effect of the commerce clause (pl. i. of sec. 51), read with the rest of the Constitution, is to leave under the exclusive control of the State all operations of trade and commerce carried on wholly within its own territory. The express words of the sub-section invest the Commonwealth with control of all trade and commerce other than that carried on wholly within the limits of a State.
The regulation of marks used in trade and commerce is a necessary part of the control of trade and commerce itself, and the exclusive right of the State to regulate all marks used in trade and commerce carried on wholly within its boundaries, and of the Commonwealth to regulate all marks used in other trade and commerce, would necessarily be included within their respective powers. But it became obviously essential in the distribution of powers between Commonwealth and State to deal in some special way with the kind of mark generally known and described by the legal term "trade mark," internationally recognized as property, carrying with it universally acknowledged rights, used both in the trade and commerce controlled by the State and in that controlled by the Commonwealth, and which was, at the time of the passing of the Constitution, a subject of agreement between the Colonies themselves and between the several Colonies and Great Britain. That species of mark could not in the nature of things be controlled by the States. It stood in the same position as copyrights, patents of inventions and designs, and could be dealt with effectively only by the national power of Australia. It was therefore specifically mentioned by the sub-section as amongst the subjects under Commonwealth control. And, interpreting the expression in its legal sense, the Commonwealth is thus empowered to legislate with respect to the trade and commerce of a State in so far as may be essential for the effective exercise of that control. If, however, the expression is to be taken in the ordinary sense of the words, as including every mark used in trade and commerce, it is difficult to see what limit can be placed on the power of the Commonwealth legislature to interfere in the control and regulation of the purely internal trade of a State. It would include the power to establish a registry, to direct what marks shall be registered, under what conditions they shall be applied for and used, and to what extent failure to comply with the conditions shall involve the restriction of any particular class of trade. There is hardly any operation of trade within a State that would not be subject to Commonwealth interference by virtue of such a power.
Under these circumstances not only is there no reason why the legal meaning of the expression should not be adopted, but it is clear that any other meaning would be entirely inconsistent with the whole scheme of distribution of the commerce powers of Australia which the Constitution has enacted.
What, then, is included within the legal term "trade mark" as used in the Constitution? In entering upon that inquiry some general principles of interpretation may well be kept in view. The Constitution, it must be remembered, is an instrument of government which from its nature must express its meaning in general terms. It is not only a law in itself, but an authority for making laws, and was intended by means of its broad general terms to adapt itself as far as possible to the changing conditions of trade and commerce, and to the new conceptions of legal rights and obligations which might in the ordinary course of things be expected to be evolved in the development of Australia. On the other hand it must always be remembered, as this Court has on several occasions pointed out, that the Constitution is something more than an instrument of government. It embodies the terms on which the people of the several States agreed for the sake of union to surrender their autonomy in certain respects. Keeping both these aspects of the Constitution in view, the true rule of interpretation would appear to be that there should be given to all legal and technical expressions the widest meaning that is consistent with the terms of the contract of union.
In the case of South Carolina v United States (199 U.S., 437, at p. 448) Mr. Justice Brewer, in delivering the judgment of the Court, says, in reference to construing the words of the American Constitution in the sense in which they are used by its framers:-
"The Constitution is a written instrument. As such its meaning does not alter. That which it meant when adopted, it means now. Being a grant of powers to a government, its language is general; and, as changes come in social and political life, it embraces in its grasp all new conditions which are within the scope of the powers in terms conferred. In other words, while the powers granted do not change, they apply from generation to generation to all things to which they are in their nature applicable. This is no manner abridges the fact of its changeless nature and meaning. Those things which are within its grants of power, as those grants were understood when made, are still within them; and those things not within them remain still excluded. As said by Mr. Chief Justice Taney in Dred Scott v Sandford (19 How., 393, at p. 426):-`It is not only the same in words, but the same in meaning, and delegates the same powers to the government, and reserves and secures the same rights and privileges to the citizens; and as long as it continues to exist in its present form, it speaks not only in the same words, but with the same meaning and intent with which it spoke when it came from the hands of its framers, and was voted on and adopted by the people of the United States. Any other rule of construction would abrogate the judicial character of this Court, and make it the mere reflex of the popular opinion or passion of the day."'
When, by the terms of this instrument of government and of union, the people of the several Colonies of Australia gave up to the Commonwealth the power to make laws in respect of trade marks-a power which when once exercised by the enacting of a law was to become exclusive within the area covered by that law-what was the subject matter of legislation which they thereby surrendered? I agree with Dr. Cullen that in ascertaining what that was we must remember that the power is "to make laws with respect to trade marks," that the power is not to be confined by mere conditions or qualifications attached by law to the use of trade marks at the time the Constitution was passed, except in so far as those conditions and qualifications were of the essence of the legal concept of trade mark as generally understood at that period. As Mr. Justice Brewer observes in the passage last quoted:-
"while the powers granted do not change, they apply from generation to generation to all things to which they are in their nature applicable."
Those words seem to suggest that the true line of inquiry is first to ascertain what were the essential characteristics of a "trade mark" in Australia at the time when the Constitution was passed, disregarding all conditions, qualifications, and attributes, which were not of its very nature and essence, and then to ascertain whether those characteristics are to be found in the "workers' trade mark" now under consideration.
In 1900 there were in force in all the Australian Colonies enactments relating to trade marks. There were also in Great Britain and other parts of the British Empire bodies of Statute law on the same subject. The English Courts and the Courts of the several Colonies had before then on many occasions expounded the law on the subject. If there were at that time any difference between the meaning of "trade mark" in English law and in the laws of the Australian Colonies we would be bound, I think, to assume that the Constitution used the expression in the sense known and recognized in Australia. But that question does not arise here because there was no such difference. On the contrary, there was and is universal agreement in the laws of every part of the British Empire as to what is included in the expression, and that universal agreement extends to the mercantile and business community as well as to lawyers and legislatures. In the course of argument some distinction was attempted to be drawn between the meaning of the expression in the lawyer's sense of the word and in that adopted by ordinary citizens. But there is no such distinction. The mercantile and business communities naturally use legal expressions with the meaning which the Courts and the legislature have attached to them.
Counsel on both sides brought under our consideration many American Statutes in force in 1900 and many decisions of the American Courts pronounced before that period. If it were necessary now to decide the matter, I would have no hesitation in holding that in 1900 the legal concept of a trade mark in that country was identical with that obtaining in Australia and in the British Empire generally. That view is strongly supported by the reasoning of the American Judges in many cases. In Weener v Brayton (152 Mas., 101) the question for decision was whether a union label, similar in all respects to that in question here, was a "trade mark." The Court held that it was not, that it was entirely wanting in the essential characteristics of a "trade mark" as that expression was understood in its ordinary legal meaning. For that reason, apparently, it was deemed necessary in many of the States of America to pass special legislation for the purpose of constituting the union label a trade mark and so bring it within the protection of the ordinary law of trade marks. The value therefore of illustrations from American legislation and American decisions in this controversy is that they would appear to demonstrate that the legal concept of a trade mark in that country was identical with that which obtained throughout the British Empire in 1900.
In inquiring what was included in the term "trade mark" in Australia in that year it is very important to consider the common law. The concept of a trade mark is the product of the common law, and in England, long before there was any legislation on the subject, trade marks as they now are had been established and recognized by the Courts. That had also been the case in America, and the observations of Mr. Justice Miller on their origin in that country are equally applicable here. In the Trade Mark Cases (100 U.S., 82, at p. 92) he says:-
"The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, the exclusion of use by all other persons, has been long recognized by the Common Law and the Chancery Courts of England and of this country, and by the Statutes of some of the States. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a Court of Equity, with compensation for past infringement. This exclusive right was not created by the Act of Congress, and does not now depend upon it for its enforcement. The whole system of trade mark property and the civil remedies for its protection existed long anterior to that Act and have remained in force since its passage."
After this species of right had been long recognized by the English Courts it was adopted and regulated by the English Statute law, and afterwards by Statutes in the several Colonies of Australia, which in substance followed the English legislation.
In the course of the very able argument addressed to us on both sides an exhaustive examination was made of the English Statute law relating to trade marks and of the Statutes in force in the several Colonies of Australia at the time when the Constitution was passed. But I have been unable to see that Statutes, either in England or in Australia, except the special English enactments which I shall next mention, have done more than adopt, regulate, and protect "trade marks" as recognized at common law.
Some reliance was placed by the defendants' counsel on a series of English Statutes relating to workers' marks known as cutlery marks, Sheffield marks, and to gold and silver plate marks or hall marks, and other marks of the same kind which it is unnecessary to enumerate; some of them, the gold and silver plate marks for instance, dating as far back as 2 Henry VI. c. 17. Speaking generally, their purpose was to protect the public against fraud in the sale of goods, and that object was accomplished by making it compulsory on manufacturers to impress or stamp on those goods a company mark, guild mark, or individual workmen's marks, as the case might be. In later years the interests connected with such marks became so numerous and important that their acquisition and use were regulated by Statute. Later still many of these special registers were incorporated with the ordinary trade mark registers under the Trade Marks Acts, and they became registered "trade marks." The marks thus dealt with, however, having their origin in local conditions or relating only to special trades, are in their nature and incidents entirely different from ordinary trade marks, and it appears plainly from the context in which the expression occurs in sub-section XVIII., and from a consideration of the Constitution as a whole, that its framers had in mind when the sub-clause was enacted "trade marks" as generally known and recognized in commerce, and protected by the Conventions of all mercantile nations, and not some special and local variety of mark used only in England.
After a careful consideration, therefore, of all the Statute law on the subject, I am of opinion that no useful purpose would be served by further reference to it, and I proceed at once to consider what was in 1900 the nature of the group of rights created at common law and recognized in England and in Australia by Statute law and by the commercial and business world under the designation "trade mark."
Trade marks were first judicially recognized in England in 1838, when the Courts of Chancery gave protection to the rights of property of traders in trade marks used by them in their business to distinguish their goods from those of other traders. In Ransome v Graham (51 L.J. Ch., 897, at p. 900) Bacon V.C. thus explains the origin of trade marks:-
"A manufacturer who produces an article of merchandise which he announces as one of public utility, and who places upon it a mark, by which it is distinguished from all other articles of a similar kind, with the intention that it may be known to be of his manufacture, becomes the exclusive owner of that which is thenceforth called his trade mark.
"By the law of this country, and the like law prevails in most other civilized countries, he obtains a property in the mark which he so affixes to his goods. The property thus acquired by the manufacturer, like all other property, is under the protection of the law, and for the invasion of the right of the owner of such property the law affords a remedy similar in all respects to that by which the possession and enjoyment of all property is secured to the owners."
Again, Cotton L.J., in delivering judgment in the case of In re Hudson's Trade Marks (32 Ch. D., 311, at p. 317), where a question was raised under the Trade Marks Act of 1875, adverts to the same aspect of the question. He says:-
"The mark proposed to be registered had never been used before the application, and accordingly the point, and it is a most important point, which we have to consider is this, whether the Act of 1875 enabled anything to be registered as a trade mark which had not been already used, and there is a very considerable difficulty on that point, because the very essence of a trade mark independently of the Act was user. The right could be gained, and only gained, by use in connection with articles sold by the person claiming to be entitled to the trade mark in such a way as to distinguish those goods as his goods. That was the very essence of a trade mark, and we find that there is a distinction in the Act of 1875 between those things which were used before the Acts as trade marks and those which had not been so used."
Not only was the trader's right to property in his trade mark recognized, but the exclusiveness of his right of user was also recognized. This recognition of the right of one person to use a particular mark to the exclusion of all other persons-a right in the nature of a monopoly-was founded upon public policy. Sebastian on Trade Marks, 4th ed., at p. 5, quoting from the judgment of the Supreme Court of the United States in Manhattan Medicine Co v Wood (108 U.S., 218), puts the true ground when he says:-
"The benefits derivable from the recognition of the exclusive right of a trader to his trade mark are apparent from the consideration that the `trade mark is both a sign of the quality of the article and an assurance to the public that it is the genuine product of his manufacture. It thus often becomes of great value to him, and in its exclusive use the Court will protect him against attempts of others to pass off their products upon the public as his. This protection is afforded, not only as a matter of justice to him, but to prevent imposition upon the public."'
The learned author goes on to point out (at p. 9) that on the same ground: "A trade mark cannot exist in gross and unattached to specific articles, for, if that could be so, the mark might come to be an instrument of deception, instead of a guarantee of genuineness." These principles, interwoven with the very origin and growth of the trade mark as recognized by all commercial nations, would seem to indicate those essential characteristics which distinguish it from all other marks used in trade.
Many definitions were cited in argument before us, but I shall not refer to them in detail. I propose to state only the conclusions at which I have arrived as to the general effect of them after very careful consideration. All definitions of the term agree on certain essentials founded in the origin and very nature of a trade mark. First, the proprietor of a trade mark must have some trade or business connection with the goods, such as of owner, manufacturer, seller, or as having selected, packed, or performed some other trade or business operation on them, and the mark must be used by him in the course of and in relation to that business connection. Secondly, the mark must be capable of distinguishing the particular goods on which it has been used from other goods of a like character in relation to which other persons have had a business connection of the like kind. These essentials would seem to follow necessarily from the origin of the trade mark, namely, its use by a trader in his business to distinguish his goods from those of other persons. The latter essential is the necessary basis of the right to exclude other persons from the use of the trade mark-the monopoly allowed in the public interest; for it is by virtue of its distinctiveness that the preservation and protection of the trade mark of one person against all the world is in the public interest.
In perhaps the broadest definition to be found in the textbooks, that by a well known American writer on trade marks, Hopkins (Hopkins on Trade Marks, 2nd ed., p. 30), the importance of "distinctiveness" as an essential of a trade mark is emphasized. "A trade mark is a distinctive name, word, mark, emblem, design, symbol, or device used in lawful commerce to indicate or authenticate the source from which has come, or through which has passed the chattel upon and to which it is applied or affixed." In a note on the same page the learned author explains that "distinctive" as used in the definition means that the mark must be something which "shall be capable of distinguishing the particular goods in relation to which it is to be used from other goods of a like character belonging to other people." The part of the explanation in inverted commas is an extract from the judgment of Lord Russell of Killowen C.J. in Rowland v Mitchell ((1897) 1 Ch. 71, at p. 74).
I take it, therefore, as established that the concept covered by the legal expression "trade mark," as used by the legislature, the Courts, and the commercial community in England and Australia at the time of the passing of the Constitution, necessarily involved the two essentials I have mentioned. It would follow that the power conferred upon the Commonwealth Parliament to make laws in respect of trade marks extends only to trade marks having these essential qualities, and that it cannot extend to any mark used in trade which is wanting in any of those essentials. Nor can the Commonwealth Parliament give itself jurisdiction merely by declaring that a mark created by its authority for use in trade is a trade mark within the meaning of the Constitution. It cannot thus expand its powers by its own legislative act and so assume a larger control over the internal trade of a State than the Constitution has conferred on it.
I come now to the next question, namely, whether the workers' trade mark which is the subject of these proceedings possesses those essential characteristics which the term "trade mark," as used in the Constitution, connotes. In so far as Australia is concerned the mark is entirely the creation of the Commonwealth Trade Marks Act 1905. The Act provides a special register for it, places it in a class by itself, and declares that a large number of the provisions relating to ordinary trade marks in the legal and commercial sense of the term shall not apply to it. Any individual Australian worker, or any association of workers corporate or unincorporate, or any number of associations acting together, may register a worker's trade mark, being a distinctive device, design, symbol or label registered for the purpose of indicating that the articles to which it is applied are the exclusive production of the worker or members of the association or of the association of associations, and then the worker or association or association of associations as the case may be shall be deemed the registered proprietors of the trade mark and may institute legal proceedings to prevent and recover damages for any contravention of the Act in so far as it relates to workers' trade marks. A penalty is imposed on any person who falsely applies the trade mark to any goods for purposes of trade or sale or knowingly exposes for trade or sale goods on which the mark is falsely applied, or who knowingly imports into Australia any goods not produced in Australia to which the mark is falsely applied. The mark shall be deemed to be falsely applied unless the goods to which it is applied are exclusively the products of the workers, or the members of the association of workers, or of the members of the association of associations, and unless it is applied to the goods by the employer for whom they are produced or with his authority by the worker or a member of the association of workers or association of associations.
It is to be observed that the proprietor of the trade mark is the worker who, or the association of workers or the association of associations, as the case may be, which registers it, but it is not to be placed on the goods by the proprietor of the trade mark, but by the employer for whom they are produced, or by the worker or member of the association with the employer's authority. In so far as the individual Australian worker is concerned, it is quite possible that all the conditions may exist necessary to constitute the workers' mark a trade mark in the sense in which I have pointed out the word is used in the Constitution. But that question does not arise at present. We are concerned with the Act in this case only in its application to workers' trade marks registered by associations of workers. Let us apply the test of the two essentials, as I have explained them, necessary to constitute a trade mark within the meaning of the Constitution. The proprietor of the mark is the association. But the association has no business connection with the goods. Individual members of the union may have such a connection as having taken part in one of the processes of manufacturing or handling them. But the individual members are not proprietors of the trade mark, nor can they apply it to the goods except when authorized to do so by the manufacturer. The latter, however, may apply it to his goods whether the members of the union or association consent or not, so long as the goods have been manufactured by union labour. It may be applied to the goods by the manufacturer, or it may be applied with his authority by the workmen who have assisted in the manufacture. But neither the manufacturer nor the workmen are proprietors of the mark. On the other hand, the proprietor of the mark, the association, has no business connection with the goods, nor has it any right to apply the mark to them. So that the ownership of the trade mark is completely divorced from any business connection with the goods, and from any right to use it on them. The mark, therefore, fails in the first essential.
Again, assuming that the manufacturer or the men, members of the association, who have themselves taken part in the manufacture, place the mark on the goods as the association's agent, they do not do so for the purpose of informing the public that either the manufacturer or any individuals or any corporation have had any business connection with the goods, nor that the association has had any business connection with them, but for the purpose of indicating that the persons unnamed who took part in the different processes of manufacture were all members of the employes' union of the trade in question. There is obviously nothing in such a mark or in its application to distinguish the product of one brewery from that of another.
The different breweries of New South Wales, for instance, each selling its own manufacture, are, it must be assumed, in competition for the favour of the public. But the workers' trade mark in no way aids the public to distinguish one set of goods from another. Every brewer employing union labour may use the mark. Its use distinguishes those who do not from those who do employ union labour. But amongst those who employ union labour there is no distinction of goods or of manufacture. Indeed, it is no part of the object of the mark or its application to make any such distinction. Its object simply is to distinguish the breweries in which union labour is employed from those in which union labour is not employed, just as a mark might be used to distinguish goods made in Australia or by white labour from those made abroad or by coloured labour.
But that is not the kind of "distinctiveness" in a mark which enables the public to distinguish the goods with which one person or corporation has had a business connection, using that phrase in the sense which I have explained, from those with which another person or corporation have had a business connection of a like kind. The mark is wanting, therefore, in the second essential, that of "distinctiveness," which is inseparable from the very nature of a trade mark as known to the law at the time when the Constitution was passed. No doubt, the sections under consideration provide that the "device, design," etc, shall be "distinctive," but in the context that can mean nothing more than "distinctive" within the limits fixed by the Statute. And, as I have pointed out, it is impossible that the mark as created can have any "distinctiveness" in the sense in which the law understands that expression.
It may be argued that the failure of the mark in the first essential might, as far as trade unions are concerned, be remedied by State enactments investing those bodies with fuller powers of carrying on business. As far as the present case is concerned there is nothing to show that the defendant union could carry on a business in connection with which the mark in question could be used. And it is difficult to see how any trade union under the laws of the several States could lawfully carry on such a business. But I do not base my judgment on that ground. It is open to the legislature of any State to create trade unions or any other legal entities and to invest them with such powers of trading and business as it may deem necessary. And a trade union or association might be endowed with powers of business and trading which would enable it to use a trade mark of the ordinary commercial kind. But, whatever its powers might be, it would be impossible to make up for the absence in the workers' trade mark of that characteristic of distinctiveness inherent in the very nature of a trade mark in the recognized legal sense, but which is entirely foreign to the nature and purpose of the mark created by Part VII. of the enactment now under consideration.
Some observations of Mr. Justice Devens, delivering judgment in the Supreme Court of Massachusetts in Weener v Brayton (152 Mass., 101, at p. 104), are worthy of consideration in this connection. In that case it was sought to protect as a trade mark the use of a union label much the same as the worker's trade mark in this case. He said:-
"However disreputable and dishonest it may be falsely to represent goods made by other persons to have been made by members of the union, upon which subject there can be but one opinion, those who do not carry on any business to which the use of the label is incident, who have not applied it to any vendible commodity which has been placed upon the market in which they deal, or of which they are the owners or manufacturers, cannot maintain a bill to restrain the use by the defendant of the label as a trade mark. It wants every essential element of such a mark; it does not indicate by what person articles were made, but only membership in a certain association; there is no exclusive use of it, but many persons not connected in business and unknown to each other may use it; its rightful use is not connected with any business; it cannot be transferred with any business, but such use is dependent only on membership in the association."
The more the matter is examined the plainer does it become that the whole nature and purpose of the workers' trade mark is different from that of the ordinary trade mark as known to the law. The latter originated in its use by traders for trade purposes, and has for its sole object the benefit and interest of the trader in competition with other traders. It has no other purpose to serve, and it has won its recognition as a necessary incident of trade for the benefit and protection of traders and of the purchasing public. The workers' trade mark is not an incident of the business in which it is used; its object is not the benefit of the manufacturer who uses it, nor does the benefit to the workman who has taken part in the manufacture arise directly from the use of the mark in the business-his benefit is the indirect gain which may come to him by advancement of the interest of his union generally. In my opinion, therefore, the workers' trade mark is wanting in the essential characteristics of a trade mark within the meaning of pl. xviii. of sec. 51 of the Constitution, and the Commonwealth Parliament in enacting the provisions of Part VII. of the Trade Marks Act has exceeded the powers conferred upon it by that sub-section.
But it was argued that the legislation complained of is not all void, and that the registration of the workers' trade mark would stand good in respect of such use of it as it was within the power of the legislature to enact. Whether that argument can be allowed to prevail in any instance depends upon the form of the Statute the validity of which is questioned. It may be taken, as I have already pointed out, that the power to make laws in respect of trade and commerce with other countries and amongst the States involves the right of legislating in respect of marks used in that trade and commerce. But the Parliament could validly exercise that power only by an enactment which confined its operations within those limits. The decision of the Supreme Court of the United States in the Trade Mark Cases (100 U.S., 82) is exactly in point. The United States Constitution conferred on Congress no special power of legislation in respect of trade marks. But that body, assuming to have the power under the authority which the Constitution has conferred on it of making laws relating to copyrights, passed an Act purporting to regulate trade marks generally. The Court held, assuming that the commerce power included the power to regulate trade marks used in the commerce under the control of Congress, that it could not be exercised except by a Statute which on the face of it confined within those limits the general expressions used in its provisions. Mr. Justice Miller, in delivering the judgment of the Court, says (100 U.S., 82, at p. 96):-
"When, therefore, Congress undertakes to enact a law, which can only be valid as a regulation of commerce, it is reasonable to expect to find on the face of the Statute, or from its essential nature, that it is a regulation of commerce with foreign nations, among the several States, or with the Indian Tribes. If it is not so limited, it is in excess of the power of Congress. If its main purpose be to establish a regulation applicable to all trade; to commerce at all points, especially if it is apparent that it is designed to govern the commerce wholly between citizens of the same State, it is obviously the exercise of a power not confided to Congress."
That principle is exactly applicable here. There is nothing in Part VIL, the only portion of the Trade Marks Act 1905 brought into question, to confine its operation exclusively to inter-state trade or trade with other countries, and, as there is no way by which the Court could in the Statute separate that which is within from that which is without the powers of the legislature, the whole Part must be declared void.
It was also contended that the Act was at least valid as an exercise of the power to legislate in respect of trade and com merce with other countries inasmuch as the provisions of the Statute in this respect separated that which was within from that which was without the power. Sub-sec. (c) of sec. 24 makes it an offence knowingly to import into Australia any goods not produced in Australia to which there is applied the workers' trade mark, a provision which may be assumed to be within the power of the legislature as a law respecting commerce with other countries, and the argument is that the registration under sec. 75 which is attacked may well stand as being necessarily in aid of that provision. Following that view the Court is asked, in effect, to strike out all the other sections relating to the workers' trade mark, and to turn the enactment into one having for its sole object the making of an offence to import into Australia goods bearing when imported the workers' registered label. But the purpose and object appearing on the face of the Act as passed was to enable goods manufactured in Australia to be so marked, and thus to give the Australian worker the benefits which would follow. Sub-sec. (c) was only ancillary to and in aid of that main purpose. We are thus asked to declare constitutional a provision which is merely ancillary to the main object, which, for the purpose of this argument, is admitted to be ultra vires.
The rule which should guide a Court in determining whether a portion of a Statute may be allowed to stand, although other portions are beyond the powers of the legislature, is well stated by the learned author of Black's Construction and Interpretation of Laws (1896 ed.), p. 96. "In such cases," he says, "it is the duty of the Courts not to pronounce the whole Statute unconstitutional, if that can be avoided, but, rejecting the invalid portions, to give effect and operation to the valid portions. The rule is, that if the invalid portions can be separated from the rest, and if, after their excision, there remains a complete, intelligible, and valid Statute, capable of being executed, and conforming to the general purpose and intent of the legislature, as shown in the Act, it will not be adjudged unconstitutional in toto, but sustained to that extent."
How could it be said that, after striking out the portions of Part VII. that are invalid, there remained, to apply the words just quoted, "a complete, intelligible, and valid Statute, capable of being executed, and conforming to the general purpose and intent of the legislature?" To allow that portion of Part VII. to stand as valid, and to declare the rest of it unconstitutional, would be, in my opinion, to bring into operation a law entirely different in its general purpose and intent from that which the legislature enacted, a result which this Court has no jurisdiction to bring about. For these reasons I am of opinion that the whole of Part VII. must be declared void as being beyond the power of the Commonwealth Parliament. That being so, it would follow that the registration complained of by the plaintiffs is entirely illegal.
But that does not determine the controversy between the parties. There still remains the first ground of objection that the statement of claim, as explained by the particulars, discloses no cause of action maintainable by the plaintiffs or either of them against the defendants or either of them. This Court would not, of course, decide the matter on any mere question of form, and would make any amendments in the designation of the parties or otherwise which might be necessary to determine the question substantially at issue, which I take to be this:-Has the Attorney-General for New South Wales or have the plaintiff breweries on the facts before us any cause of action against the defendants? The defendants put their contention in two ways. First, that the plaintiff breweries have shown no facts entitling them to damages or relief of any kind at the hands of the Court; secondly, that on the facts and circumstances stated in the special case the Attorney-General for New South Wales has shown no right to bring the complaint of the plaintiff breweries as relators before the Court.
Before examining these objections it is necessary to determine what it is that the brewery companies complain of. I take it as established that the Commonwealth Parliament exceeded their powers in enacting Part VII. of the Trade Marks Act 1905. It follows that the establishment of the registry of workers' trade marks is without any authority, and that the Registrar of Trade Marks, a public officer of the Commonwealth, purporting to act under the authority of a Commonwealth Statute, has placed the defendant union trade mark on the register, and that the defendant union threaten and intend to use the trade mark as a workers' trade mark duly registered pursuant to the Act; in other words, that they intend to exercise all the rights which registration of the trade mark purports to give them. The plaintiff breweries complaint is, in substance, that the illegal registration complained of will interfere with their freedom to carry on their business in their own way by compelling them to elect whether they shall use or shall not use the trade mark. They can acquire the right to use the trade mark only by employing in their respective businesses union men exclusively. If they do so they will incur the displeasure of many of their old customers; if they do not, they will displease all union men and their sympathizers. From these considerations they ask the Court to infer, and I think not unreasonably, that whatever course they may take must result in the loss of some of their present business, and they also ask the Court to infer that from this interference with their right to carry on their business in their own way they will suffer pecuniary damage. In addition to that the Attorney-General for New South Wales alleges that the establishment of the registry and the registration of the trade mark, being illegal acts in violation of the Constitution, are an infringement of the rights of the State in the control of its internal trade and commerce, and injurious to the people of the State, and in the circumstances that have arisen are especially so to the relators.
In my opinion, the plaintiffs' contention must be upheld on both grounds. As to the first, In re Powell's Trade Mark ((1893) 2 Ch., 388; (1894) A.C., 8) is a strong authority in the plaintiffs' favour. In that case the decision of Chitty J. was affirmed by the Court of Appeal and afterwards by the House of Lords. The point there involved was, not whether the applicants had proved or could prove damage by reason of the presence on the register of the trade mark complained of, but whether they were "parties aggrieved" within the meaning of the English Trade Marks Act, and as such entitled to make application under the section which gave a special remedy. Bowen L.J. in the Court of Appeal ((1893) 2 Ch., 388, at p. 406) said:-
"But then there is the other point made by the appellant, that the respondents to this appeal are not persons who are aggrieved. Persons who are aggrieved are persons who are in some way or other substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained. It is very difficult to frame a nearer definition than that. In the Apollinaris Case ((1891) 2 Ch., 186) it was pointed out, not as a complete or exhaustive definition, that people would be aggrieved if they were in the same trade and dealt in the same article. To my mind, it is equally true that persons would be aggrieved if they are in the same trade, and might reasonably be expected to deal in the same article, though not prepared to prove at the moment that they had formed a clear determination to do so. Supposing that this mark ought not to be on the register, it hampers those who are in the trade and who might wish to consider the question of embarking in another branch of the trade if lawfully entitled to do so. It would be, to my mind, an unbusinesslike construction to place on the term `aggrieved,' to say that it could only be applicable to those who actually had formed a fixed and crystallized intention of dealing in the particular article if permitted to do so. If a man is hampered in his arrangements of business matters in the future by the fact that a trade mark is on the register which ought not to be there, he is a person who, to my mind, is sufficiently aggrieved to come within the section."
The principle there laid down is, it seems to me, equally applicable to proof of the necessary damage or threatened damage necessary to support a claim to relief before this Court. If there is reasonable ground for supposing, as I think there is, that the registration of the defendant union's workers' trade mark is likely by interfering with the plaintiffs' right to carry on their trade in their own way to result in pecuniary loss in the manner which they ask the Court to infer, it cannot I think be said that damage flowing from such loss would be so remote as to prevent its being the foundation of their right to relief in this Court. The right of the Attorney-General for New South Wales rests, of course, upon a different ground. It is a principle well established in British law that when a corporation or public authority clothed with statutory powers exceeds them by some act which tends in its nature to interfere with public rights and so to injure the public, the Attorney-General for the community in which the cause of complaint arises may institute proceedings in the Courts of that community, with or without a relator, according to circumstances, to protect the public interests, although there may be no evidence of actual injury to the public. Attorney-General v Shrewsbury (Kingsland) Bridge Co (21 Ch. D., 752) was a suit for an injunction to restrain a company from constructing a railway bridge. The construction was authorized by a Statute which provided that the powers given under it would lapse if not exercised within five years. Notwithstanding that the period had elapsed, the company was proceeding with the work and was about to apply to Parliament for a renewal of their powers. There was no evidence of any actual injury to the public. Fry J. granted an injunction at the suit of the Attorney-General on the relation of two shareholders of the company (21 Ch. D., 752, at p. 755). He said:-
"One of the earliest cases on the subject is Attorney-General v Oxford, Worcester, and Wolverhampton Railway Co (2 W.R., 330, at p. 331). There, at the instance of the Attorney-General, the Court restrained the opening of a railway not authorized by the Board of Trade, and Lord Romilly, M.R., said that `the view he took of the case was this, that undoubtedly the Attorney-General might apply to the Court in cases of nuisance. It was properly said on the other side that in all such cases the Court required that the nuisance should be proved. But he was also of opinion that the Attorney-General, as parens patrice,' (meaning thereby, I conceive, as the representative of the parens patrice), `might apply to the Court to restrain the execution of an illegal act of a public nature, provided it was established that the act was an illegal act and it affected the public generally."'
In the same judgment (21 Ch. D., 752, at p. 756) he quotes Lord Hatherley as saying in Attorney-General v Ely, Haddenham, and Sutton Railway Co (L.R. 4 Ch., 194, at p. 199):-
"The question is, whether what has been done has been done in accordance with the law; if not, the Attorney-General strictly represents the whole of the public in saying that the law shall be observed."
Again, in London County Council v Attorney-General ((1902) A.C., 165), the same principle is recognized. The London County Council, purporting to act under their statutory powers to purchase and work tramways, were working lines of omnibuses in connection with their tramways. The Court of Appeal, in a suit by the Attorney-General on the relation of other omnibus proprietors, being ratepayers of the City of London, and carrying on lines of omnibuses in opposition to those of the County Council, granted an injunction against the further carrying on of the omnibus business. The decision was affirmed by the House of Lords. Lord Halsbury L.C., in giving judgment, in reference to a suggestion that it was within the power of the Court to control the Attorney-General's exercise of discretion on the cases in which he deemed it right in the public interest to interfere, said ((1902) A.C., 165, at p. 168):-
"If there is excess of power claimed by a particular public body, and it is a matter that concerns the public it seems to me that it is for the Attorney-General and not for the Courts to determine whether he ought to initiate litigation in that respect or not."
In a unitary form of government, as there is only one community and one public which the Attorney-General represents, the question which has now been raised cannot arise. It is impossible, therefore, that there can be any decision either in England or in any of the Australian Colonies before Federation exactly in point. But it seems to me that in the working out of the federal system established by the Australian Constitution an extension of the principle is essential. The Constitution recognizes that in respect of the exercise of State powers each State is under the Crown an independent and autonomous community. Similarly the States must recognize that in respect of the exercise of Commonwealth powers all State boundaries disappear and there is but one community, the people of the Commonwealth. The proper representative in Court of each of these communities is its Attorney-General. That principle is in substance recognized by secs. 61 and 62 of the Judiciary Act 1903, enacted by virtue of sec. 78 of the Constitution, which provides that suits on behalf of the Commonwealth may be brought in the name of the Attorney-General of the Commonwealth, and suits on behalf of the State may be brought in the name of the Attorney-General of the State. Where, therefore, the complaint is, not that the State or the Commonwealth as legal entities, but that the people generally of either State or Commonwealth have been injuriously affected by some illegal exercise of State or Commonwealth power, as the case may be, it would seem to follow that the Commonwealth Court must recognize the State Attorney-General as being entitled to represent the State in any claim for relief against an illegal act so affecting the people of the State. That being so, there can be no question that the establishment of a registry purporting to be by public authority of the Commonwealth, but really in excess of its powers, which may hamper the freedom of citizens of the State in the carrying on of their businesses-for this Act may apply to any business-is an Act injuriously affecting the people of the State. For these reasons I am of opinion that the Attorney-General for New South Wales is entitled to be heard in this Court as representing the public of New South Wales in such a case as this, where the illegal act is of such a nature as to affect not only the relator but the whole trading community of the State, and that in such a case it is not necessary that any actual injury to the public should be proved. Both grounds of objection to the plaintiffs' right to proceed therefore fail, and I hold that they have established a good cause of action. It follows that on both questions of law submitted the answers of the Court should be in the plaintiffs' favour, and they are entitled to the declarations and orders and the injunction asked for in their statement of claim.