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

6 CLR 469
1908 - 0808A - HCA

---

(Judgment by: BARTON J)

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

Court:

Judges: Griffith CJ

Barton JO'Connor J
Isaacs J
Higgins J

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

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

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

Sydney

---

Judgment by:
BARTON J

The defendants contend that the question of the validity of Part VII. of the Trade Marks Act 1905 cannot be dealt with by proceedings such as these, inasmuch as the plaintiff companies have no such interest as to justify them in claiming the removal of the disputed mark from the register. They further say that an Attorney-General is not here a competent plaintiff; that this is not a case in which an Attorney-General can lawfully be set in motion; and that, even if that were so, the Attorney-General for New South Wales is not a competent plaintiff, and only the Attorney-General for the Commonwealth can institute proceedings. In effect, they argue that this action is brought for the purpose of obtaining a pronouncement which the Court has no right to give, since it would not be a decision between the conflicting interests of the parties, but a mere opinion as to the powers of Parliament. It is needless to say that this Court will not entertain a question brought before it merely to satisfy those whose political views prompt them to struggle to remove an enactment that offends them. Nor will it lend itself to an endeavour to protect business interests when there is not in law a grievance to be redressed.

But when a plaintiff says to a defendant, "You are injuring my trade by registering this label as to the very article in which I trade. Its continuance on the register hampers and embarrasses me in my business and must be injurious to it," it seems to me that, if he can establish the truth of these propositions, he has a right to the assistance of the Court, and therefore is a competent plaintiff to be allowed to endeavour to establish it. If that is so as to wrongful registrations in general, why is it not to be so where it is claimed that the registration is wrongful, not merely because of some defect in the mark itself or the procedure, but on the ground that there was no right to registration because the assumed authority of the Statute under which it was claimed or granted is not a real or lawful statutory authority?

Now, these brewing companies are embarrassed in their trade by the registration impeached. It is not describing the position quite accurately to say that all that will happen will be that, by choosing to use or not to use the mark, they will have to choose one class of customers or the other-those to whom it will or those to whom it will not be a recommendation. Have they not to say which class they prefer to lose? Presumably their present customers are such of the public as approve of their beer. If they adopt the mark they are likely to lose many customers to whom the mark will be a repellent. If they do not adopt it, they are likely to lose many customers who will not deal except with those who use it. There is no certainty, in either event, of any corresponding gain of trade. Thus they are in a dilemma, and it is out of the question to say that they are not embarrassed in their trade by the situation so created.

Bowen L.J., in In re Powell's Trade Mark ((1893) 2 Ch., 388, at pp. 406-7) said:-

"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." And again, "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."

We are not dealing with that particular section here, but the reason of the thing is the same.

In In re The Apollinaris Co 's Trade Marks ((1891) 2 Ch., 186, at p. 225), Fry L.J. in delivering the judgment of the Court of Appeal, said:-

"We are of opinion that whenever one trader, by means of his wrongly registered trade mark, narrows the area of business open to his rivals, and thereby either immediately excludes, or with reasonable probability will in the future exclude, a rival from a portion of that trade into which he desires to enter, that rival is an `aggrieved person.'"

Here again I think that, though the circumstances are not identical, the reason of the thing is the same.

I therefore think that the four plaintiff companies are entitled to bring this matter into suit.

As to the position of the Attorney-General for New South Wales in the matter, the point seems to me a doubtful one, but on the whole I am of opinion that, as the relators are public companies belonging to the State, and the complaint is of a federal Statute which, if the relators are right, is an invasion of the purely State field of legislation, such as are the fields of industrial matters and of domestic trade, the Attorney-General for the State may rightly sue.

The main question really turns upon the meanings of the term "trade marks" as used in sec. 51 (xviii.), of the Constitution-that is to say, the extent and limits of the "power to make laws for the peace, order, and good government of the Commonwealth with respect to ... trade marks." Are marks or labels such as that in question included in the expression "trade marks," so that the framers of the Constitution meant to empower the Parliament to make laws with respect to them? If the ordinary or technical sense of the term in 1900 included them, or if it was used as a term which had acquired such an inclusive meaning in any legislation which we must take to have been in the minds of the makers of the Constitution at its making, then, but only then, the answer must be in the affirmative. In either case it is to the meaning in 1900 that we must look, for the plain reason that the Constitution previously framed in Australia became law in that year, and the framers cannot, of course, have had in their minds meanings which had not then come into existence. I do not say that any new meanings have been shown, but even if that be so, they are not within the purview of the sub-section. "The Act must be construed as if one were interpreting it the day after it was passed": per Lord Esher M.R. in The Longford (14 P.D., 34, at p. 36). And see his judgments in Gaslight and Coke Co v Hardy (17 Q.B.D., 619, at p. 621), and Sharpe v Wakefield (22 Q.B.D., 239, at p. 242). Of course no subsequent Statute of the Commonwealth, assuming to enlarge the meaning of the term in question as here used, could effect such a purpose unless it were an amendment of the Constitution passed by the method prescribed by sec. 128 of that instrument. For the Federal Parliament is not, like that which sits at St. Stephens, a sovereign Parliament. Legislative powers given by a written Constitution may be exercised to the full, but only as they stand. To attempt to give them a larger meaning is to attempt to alter the Constitution, which cannot be done validly by a Parliament to which it gives life and which is not itself empowered to amend it. On the other hand, if the language of a Statute includes a whole genus, a species of that genus, unknown when the Act was passed and only afterwards coming into existence, is still within the language. But in the case of the Constitution that rule of construction cannot be extended so as to bring what is not in essence a species within the language of the legislative powers, for in doing this the Parliament would be including fresh subjects amongst its powers, and that would amount to an attempt to amend the Constitution by a process not sanctioned by the Charter. If the thing is not of itself within the meaning, an Act of Parliament cannot make it so. The powers remain the same though their application may extend as the subjects within the power increase. Is then the label or mark described in this case a trade mark in the ordinary or in any technical sense of the term as used in 1900, or is it a trade mark in any sense given to the term by Statutes before then, that is to say, such Statutes as we must take the framers of the Constitution to have kept in view in defining the power?

First as to the ordinary meaning of the term. It does not seem to have been in general use in the early years of the 19th century, for it cannot be found in such dictionaries as Johnson's of 1831 and Webster's of 1837, although in 1838, in the case of Millington v Fox (3 My. & C., 338), which was clearly about trade marks, the term is used in the side note but not once in the report. In the report of Motley v Downman (3 My. & C., 1), decided in the previous year, we find the marks there in question described as "brand marks," "peculiar marks," "distinguishing marks," "tradesmen's marks" and "traders' marks." And the term "trade marks" is used once to denote the same thing, the question being of the marks branded by rival manufacturers upon tin plates made and sold by them. In the earlier case of Sykes v Sykes (3 B. & C., 541) decided in 1824, the subject of dispute was the use of the words "Sykes Patent" as a mark on goods (a patent to protect them having been held to be invalid). The mark, we are told, was placed on the articles by the makers "in order ... to distinguish them from articles of the same description manufactured by other persons." The mark is not designated as a trade mark anywhere in the report, nor have I been able to trace the use of the term to an earlier date than 1837. But it is clear that the thing now known by that name had come into existence, and that certain legal rights had attached to it before that time. The concept of a trade mark was, of course, in existence before the name itself was applied to connote it. If the case of Southern v How (Poph., 143) is correctly reported, traders' marks were known and used, and damages would be given for their fraudulent use, in the time of James I., though the name trade mark was not yet given them. These marks were evidently used by traders, those who manufactured for sale as well as those who merely sold, to denote that the goods on which they were placed were made or sold by that trader who affixed them. And before any legislation took place on the subject, the common law protected the use of such marks by granting a right of action, first for the fraudulent use or imitation of them, and afterwards for their use or imitation in such manner as probably to deceive an unwary customer, even in the absence of fraud (compare Southern v How (Poph., 143) and Sykes v Sykes (3 B. & C., 541) with Millington v Fox (3 My. & C., 338). It did so on the principle that the marks were used to distinguish the goods of the maker or seller from those of other makers or sellers, and that those others had no right to represent their goods as made or sold by those who had by user of their own marks established that very distinctiveness. The effect, whether intended or not, was to disturb him in the exercise of a right. And so, when we hear that it is in law essential that the trade mark should be distinctive, we must remember that the law says this, not as itself assigning that quality to a trader's mark, but because the thing cannot be or become a trader's mark at all without that quality of distinctiveness. To distinguish the trader's goods from those of others it must first be affixed in some way to the goods. And, apart from Statute law, it is essential to the same purpose of its becoming distinctive that it should be used in the trade-that is, in the market. For thus only are the others who are interested in that commerce-that is, the buyers-enabled to discriminate between the goods of one trader, be he manufacturer or merchant, and those of another, who might otherwise pass off the goods made or sold by himself as those of a trader who has nothing to do with them. The mark to become distinctive must be the subject of an exclusive right of user, otherwise it would be used to confuse and not to distinguish. Thus we arrive at property in the mark itself: Leather Cloth Co v American Leather Cloth Co (11 H.L.C., 523, at pp. 533-4), where Lord Cranworth says:-

"The right which a manufacturer has in his trade mark is the exclusive right to use it for the purpose of indicating where, or by whom, or at what manufactory, the article to which it is affixed was manufactured. If the word `property' is aptly used with reference to copyright, I see no reason for doubting that it may with equal propriety be applied to trade marks."

And the property in the mark must be coupled with property, absolute or at least special, in the thing made or sold, in the sense of independent dominion or control of it. The freedom of the owner of the trade mark to affix it to particular goods must obviously involve a negation of the right of any other person to prevent his affixing it. I must be pardoned for saying things that seem to go without saying, for most, if not all, of these propositions seem to be denied or ignored in the present case. The right of a person not the actual owner of the goods to affix his mark-that is, the limited or special property that I have mentioned-may be gained contractually from the absolute owner by some person who is to be entitled to deal with them commercially. I see nothing to prevent that, it seems to be involved in the case of Re Sykes & Co's. Trade Marks (43 L.T., 626), where a firm of bleachers were allowed to register a trade mark. But, in the absence of some such contractual right, the right is that of a man to use his own mark on his own goods to show that they are his make or his stock, and not another's. All the characters which seem to me to be of the essence of a trade mark, leaving out purely legal attributes, are tersely summed up by Kay J. in the case of In re Australian Wine Importers Ltd (41 Ch. D., 278, at p. 280) in these words:-

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

Now, it seems to me that the ordinary concept of a trade mark as above expressed and the legal meaning-that is the common law meaning, as it is sometimes called-have only this difference between them, that the legal meaning by way of expansion connotes the rights which of necessity are implied in or flow from the ordinary concept. The "mark under which a particular individual trades" indicates user of the mark. That it "indicates the goods to be his goods" implies that he is using it by reason of an actual or special property in the goods on which he puts his mark. That it designates "goods which have been, in some way or other, dealt with by A.B., the person who owns the trade mark" implies that it is distinctive of the man's absolute or special property in or dominion over the goods-without which he must not mark them-as coupled with a proprietary right in the mark. It seems to me, therefore, that there is nothing in the use of the term "trade mark" at common law that carries with it more than is meant by the term in its ordinary use, whether that be called commercial or colloquial. Without the essential attributes which are called legal, neither distinctiveness nor absolute or special property in the thing, nor the right to the mark and its trade use, could begin or continue. And I come to the conclusion that a trade mark, as spoken of apart from Statute law by Judges and other legal authorities, is nothing but the thing connoted by the same term in ordinary or commercial intendment.

What I take a trade mark to be then, using my own words, is this: A mark which is placed on goods (1) to distinguish them as the goods of the person who uses the mark; (2) exercising dominion over the goods, whether he has absolute ownership or only a contractual right to the possession; (3) in the course of his trade; and (4) exercising a right to the exclusive use of the mark.

Now, it is not seriously contended that, if this or anything like it is the meaning of the term in the Constitution, the provisions of sec. 74 of the Trade Marks Act 1905 are within the power conveyed by the use of the term.

The owner of a trade mark needs no authority from his workmen or anyone else to apply his mark. Nor does the owner of a trade mark need the authority of his employer to apply his mark to the goods to which it "belongs" (to use the word of the Act of 1875). He applies his own trade mark in virtue of his own right to it as coupled with the dominion he is entitled to exercise over the goods. Here the owner of the goods is necessarily not the owner of the so-called trade mark, and the owners of the so-called trade mark have no right to a particle of the goods. The person who uses the mark has no right to its exclusive use. A hundred rivals of his in trade may be equally entitled to use it. It is not distinctive in the true sense, the sense of "distinguishing a particular person's goods from somebody else's goods": Lord Halsbury L.C., Perry Davis & Son v Harbord (15 App. Cas., 316, at p. 320). Distinctiveness in this sense was not only essential before any enactment on the subject; it is so apart from Statute, and is exacted as an essential even by the Registration Acts. But it is a waste of words to heap up reasons why the thing described in Part VII. is not and cannot be a trade mark as a trade mark has been known from the first concept of it till it acquired that name, and from then till now.

I am of opinion, then, that the term "trade mark" is not employed in the Constitution in any sense which, apart from Statute, can include the workers' trade mark, and therefore that there is no power to turn that mark from what it is into a trade mark.

I come now to the second branch of the question as to the validity of Part VII., namely, whether the term "trade mark" as used in sec. 51 (xviii.) of the Constitution had in 1900, in any legislation which we must take to have been then in the minds of the framers of the Constitution, acquired a meaning which included a mark or label such as that which is here attacked.

I pass over for the present the question whether the legislation to be considered in this connection is that of the Parliament of the United Kingdom or that of the several Australian States, or both. I will deal with both, and will afterwards consider whether any other legislation can be held to have been in contemplation. The first Imperial Statute is the Merchandise Marks Act 1862, which made no provision for registration. In sec. 1 it gives a definition of a trade mark which does not vary materially from the definition of Kay J. already quoted (41 Ch. D., 278, at p. 280). The definition is to be used "in the construction of" the Act, which is for the prevention of the fraudulent use of merchandize marks. The definition enumerates a large number of things as "marks," and the term "trade mark" is to include them all as "lawfully used by any person to denote any chattel or (in Scotland) any article of trade, manufacture, or merchandize, to be an article or thing of the manufacture, workmanship, production, or merchandize of such person, or to be an article or thing of any peculiar or particular descriptions made or sold by such person." The term was also to include any indicium which under the Statutes as to registered designs is to be put on any article during the existence of any copyright, etc The whole definition is limited by the words "in the construction of this Act," with which it begins. This Statute was repealed by the Merchandise Marks Act 1887. Passing over some minor amendments, the other material Statutes passed before 1890 were the Trade Marks Registration Act 1875, the Patents, Designs, and Trade Marks Act 1883, the Merchandise Marks Act 1887, and the Patents, Designs and Trade Marks Act 1888. The Patents, Designs and Trade Marks Act 1883 repealed the Trade Marks Registration Act 1875, and made fresh provision for registration and otherwise. (The 103rd section will receive attention presently). It prescribed certain essential particulars that a trade mark must at least contain for the purposes of the Act. The Merchandise Marks Act 1887, besides repealing that of 1862 and making substituted provision, has in sec. 3 a fresh definition, restricted so as to mean only trade marks entered in the register kept under the Patents, Designs and Trade Marks Act 1883. The term is to include any trade mark which, with or without registration, is protected by law in any British possession or foreign State to which sec. 103 of the last mentioned Act is under Order in Council for the time being applicable. (See sec. 104 of the same Act). The provisions of sec. 103 have not, so far as we are told, been so made applicable to the Commonwealth, and I may say at this stage that, in my opinion, any meaning which a trade mark has, or has acquired in foreign States, has not, by virtue of any International Convention followed by Statutes applying it, become a statutory meaning which we can take to have been in the contemplation of the framers of the Australian Constitution. The remaining British Statute is the Patents, Designs, and Trade Marks Act 1888, amending the Act of 1883. It substitutes a new clause 64 for that so numbered in the Act of 1883, stating certain "essential particulars" one at least of which a trade mark must contain "for the purpose of this Act," that is, in order to be registrable. These are: "(a) A name of an individual or firm printed, impressed, or woven in some particular and distinctive manner; or (b) a written signature or copy of a written signature of the individual or firm applying for registration thereof as a trade mark; or (c) a distinctive device, mark, brand, heading, label, or ticket; or (d) an invented word in invented words; or (e) a word or words having no reference to the character or quality of the goods, and not being a geographical name." (a), (b) and (c) are in the definition section of the Act of 1883; (d) and (e) are new. Sub-sec. (2) provides that "There may be added to any one or more of the essential particulars mentioned in this section any letters, words, or figures ... but the applicant for registration of any such additional matter must state in his application the essential particulars of the trade mark, and must disclaim in his application any right to the exclusive use of the added matter," etc I omit the proviso.

Now, the effect of the statements in the Registration Acts of the requirements for registration is not in any way to define a trade mark, though they do, as Kerly on Trade Marks, 2nd ed., p. 24, puts it, "contain enumerations of the classes of symbols which are capable of registration under them as trade marks." And it has been held that trade marks, whether capable of registration or not, may be acquired apart from registration: Sen Sen Co v Britten ((1899) 1 Ch., 692), although registration may be a prior condition to an action for infringement in the cases falling within the section. It is only the registered owners of the trade mark or their assignees who can sue for an infringement of it; but there is nothing to prevent a trader from bringing a passing off action. I venture to think it clear that there is nothing in all this English legislation to give a trade mark, except for the purpose of any Statute providing for registration, a meaning other than that which it had before these Statutes. See per Baggallay L.J., in In re J. B. Palmer's Trade Mark (24 Ch. D., 504, at p. 514).

It remains to consider the Acts of the various Colonies, for such they were when legislation took place.

Of these it is enough to say (1) that the Merchandise Marks Act of 1862 was adopted more or less completely in five of them at different times up to 1865, in three instances with the addition of registration provisions, in two without them. In one of the States the Acts of 1875, 1883 and 1887 have since been, in effect, adopted; in another only those of 1883 and 1887; in a third, that of 1883; in a fourth, that of 1883 in respect of registration, and that of 1887 in respect of protection; in a fifth, that of 1887; in the sixth, virtually nothing more: While as to international matters, two Colonies have provided means for the adoption, if desired, of any Convention into which the United Kingdom may enter with any foreign Government.

In none of these Statutes has any new general meaning or extension been given to the term "trade mark" apart from the mere purpose of registration, nor is there reason to suppose that the term has in Australia ceased to carry any of its original meaning, while it is impossible to select any of the meanings which separate Statutes had given it for limited purposes only, and to say of that one meaning, "this is the sense in which the constitution-makers used the term: this is the meaning that in 1900 the term `trade mark' had for all Australia."

Statutes of many States of the American Union were cited to us to show that in those States the legislatures had passed laws in which workers' labels of the kind now in question were termed trade marks. Many decisions of American Courts were also cited, on the other hand, in most of which such labels were held not to be in fact trade marks, whatever mere name might be assigned to them. The Statutes in question, though of no importance for present purposes, are interesting because legislation as to trade marks is a power reserved to the several States which have retained their general legislative powers save so far as the federal Constitution has assigned them to Congress. That body has not been armed by the Constitution with power to legislate as to trade marks. So that, whatever legislation can do to turn into a trade mark a thing that is not one in essence, the States can do. But the American cases are not of much assistance in this instance, because they are to be considered only on the question of the meaning of the State legislation, and that legislation, in my opinion, cannot, even apart from its many variances, be supposed to have been known to and to have been in the minds of the framers of the Australian Constitution. Where a part of the Constitution of the United States has been judicially interpreted and an identical or manifestly equivalent form of expression has been adopted in the Australian Constitution, the words of the former and the meaning judicially given them are of much importance, at any rate in weighing the reasons for the interpretations cited. But this is a different matter. The United States Constitution contains no provision similar to that of our sec. 51 (xviii.) Besides, if the framers of the Constitution knew of the Statutes, they knew of the decisions, and knew that the great bulk of American authority was to the effect that trade marks do not include union labels.

For the reasons given I am of opinion that the Constitution uses the expression "trade mark" in the sense it bore both in the United Kingdom and here, apart from Statute, in 1900, and that the power of legislation is co-extensive with that meaning, which does not cover the "workers' trade mark." It is plain that the sections comprised in Part VII. of the Act are not severable from each other or in themselves, and I add nothing to what the Chief Justice has said on that score. On the whole case then I am of opinion that the plaintiffs are entitled in substance to the relief they seek.