Attorney-General for NSW v Brewery Employés Union of NSW

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[HIGH COURT OF AUSTRALIA.]

THE ATTORNEY-GENERAL FOR THE

STATE OF NEW SOUTH W^VLES, at

Plaintiffs ;

THE RELATION OF TooTH AND COMPANY

Limited and oth ers........................................

THE BREWERY EMPLOYES UNION OF

NEW SOUTH WALES, STEPHEN

HARTLEY WATSON, S ecretary, AND D efendants.

GEORGE TOWNSEND, Registrar of

Trade Marks for the CommonwealthJ

Commonwealth legislation, validity of—Interference with internal trade o f State— Interpretation of terms used in Constitution—Power to make laws with respect

j j . C. of A.

1908.

to trade marks—ITo?‘iens’ trade marks— Union label—Registration—Persons

'— .— ■

aggrieved —Remedy—Injunction—Parties— Trade Marks Act 1905 (No. 20 of

S ydney,

1905), Part VII. — The Constitution (6.3 <Si 64 V%ct. c. 12), sec. 51, pi. i. and March 30, 31;

xviii. April 1, 2, 3, 6, 7, 8, 9, 10,

Workers’ trade marks, as dealt with and defined in the Trade Marks Act 1905, Part VII., are not trade marks within the meaning of sec. 51,

H ;

Aug. 8.

pi. xviii. of the Constitution.

Grimth C.J., Barton,

The meaning of the terms used in tlie Constitution must be ascertained by their signification in 1900.

O’Connor, Isaacs and

Higgins JJ.

It is a necessary implication from pi. i. of sec. 51 of the Constitution that the power of Parliament does not extend to trade and commerce within a State, and consequently the power to legislate as to internal trade and commerce is reserved to the States by sec. 107 to the exclusion of the Commonwealth. When the intention to reserve any subject matter to the States, to the exclusion of the Commonwealth, clearly appears, no exception should be admitted to that reservation which is not expressed in clear words.

VOL. V I.

470 HIGH COURT

[1908.

H. C. OF A. Part VII. of the Trade Marks Act 1905 is in substance an attempt to

1908.regulate the internal trade of the States, not within or incidental to any of the express powers conferred on the Parliament to regulate that trade.

Attorn KY-

G kneral for

That Part of the Act is therefore ultra vires, and, though its provisions,

S.W.

i\if limited to trade and commerce between the States, would be within the

Hrewery competency of the Commonwealth Parliament, it is impossible to separate

E mployes that which is within from that which is without the power, and the whole

U nion of

N.S.W.

is invalid.

So held per Griffith C.J., Barton and O'Connor

. ; Isaacs and Iliejyins 3,).

dissenting.

A union of brewery employes, registered in New South Wales as a trade union and as an industrial union under the Industrial Arbitration Act of that State, registered a mark or label in the register of workers’ trade marks under Part VII. of the Commonwealth Trade 3!arks Act 1905. The Attorney- General for that State, at the relation of several joint stock companies carry ing on the business of brewing in that State, who were also joined as plain tiffs, instituted a suit in the High Court against the employes’ union and the Registrar of trade marks, for a declaration that the provisions as to workers’ trade marks were invalid and that consequently the registration was invalid, and for an order cancelling the registration and an injunction restraining the Registrar from keeping a register of workers’ trade marks.

Held (per Griffith C .J., Barton and O’Connor J J . , /snacs and Higgins 33. disseuting), (1) that the plaintiff companies were persons aggrieved by the registration, and were therefore proper plaintiffs ; (2) per Griffith C. J ., Barton, O'Connor sa\d Isaacs 33., Jhggm sJ. dissenting, that the plaintiff Attorney- General, as representing the public of his State claiming to be injured by the legislation in question, was a proper plaintiff; (3) per Griffith CJ., Barton and O'Connor J J ., Isaacs and Higgins J J . dissenting, that the suit was rightly framed, injunction and not quo warranto being the appropriate remedy under the circumstances, and that the plaintiffs were entitled to the relief prayed.

Per Isaacs 3.—1. The Court cannot be called on or with propriety assume to declare an Act of Parliament unconstitutional unless such a decision is absolutely necessary, and a party seeking such a declaration must show some legal cause of complaint.

2. Order III., r. 1 of the High Court Procedure Rules presupposes, as a basis of any declaration made under that rule, the establishment of an exist ing right, and not a right dependent for its existence on possible future events.

3. The individual plaintiffs showed no right to sue inasmuch as the claim to protect their business rested on the supposition that they might lawfully use for their own beer the mark selected by the defendants which would neces sarily lead to deception ; and their claim to a right to register a mark resembling the defendant’s mark was not special to them, but if it existed was common to the whole Australian community.

471

6 C.L.R.]

OF AUSTRALIA.

H. C. OF A.

4. The Attoniey-General for New South Wales had no right to sue for the purpose of protecting traders in New South Wales under the Trade Marks Act

1908.

if Part VII. were valid, because those rights were general Australian rights,

and not confined to traders of any particular State.

Attoknev-

G eneral

for

N.S.W.

5. But the Attorney-General for New South Wales had a status to complain of usurpation on the part of the Commonwealth Parliament by an unconstitu

Brewery

tional Statute assuming to exercise, in respect of the territory of New' South E mployes

U nion of

Wales, powers which appertain exclusively to the Parliament of that State N.S.W,

and affecting the local rights of its citizens.

6. The workers’ trade marks contain all the essential characteristics of a trade mark as understood at the time of the passing of the Constitution and therefore Part VII. of the Trade Marks Act is a valid exercise of the power to make laws with respect to trade marks conferred by sec. 51, pi. xviii. of the Constitution.

7. A trade union otherwise legal can trade if so authorized by its rules. action either in the Attorney-General for New South Wales or in the four brewery companies.

As for the Attorney-General, he has no right of action for an injury done to the four breweries—the only injury alleged.

The Attorney-General for New South Wales does not represent the public of Australia—the public affected by this Act.

There is no distinctive injury alleged, or implied, to the public of New South Wales.

The passing of an Act, ultrd vires, and the making of an entry in pursuance of the Act, is not a ground for injunction or other relief.

If New South Wales, as a State, has a cause of action, the State should sue in its own name.

As for the brewery companies, the injury alleged is future only, and neither imminent or inevitable—it cannot take place until some rival brewer applies the mark to his goods ; and therefore there is no ground at present for an injunction.

If Part VII. of the Act is valid, there is no injuria ; if Part VII. is invalid, there is no damnum, as the plaintiffs can lawfully apply the mark ; so that the essentials for a cause of action are wanting.

No action lies for placing a person in a dilemma as to his commercial interests ; and here the dilemma will arise from the use of the label—not from the registration.

II. The “ workers’ trade mark ” contains all the essential characteristics of a “ trade mark ” as understood at the time of the passing of the Constitution, although not all the essential characteristics of a trade mark then enforceable in British Courts. The expression “ trade mark ” in the Constitution is not to be treated as a mere technical term, but is to receive its full grammatical and

HIGH COURT

[1908,

H.C. OF A, ordinary sense as in 1900 ; and the Constitution allows the Federal Parliament

1908.to make laws with respect to trade marks, even if used exclusively in the internal trade of a State.

A ttorn EY-

General for

Even if the meaning of the expression “ trade marks ” in 1900 was not so

N.S.W.

V.wide as to include such a mark as the workers’ trade mark, the Constitution

Brew ery has conferred on the Federal Parliament full power to make laws on the

E mployes

whole subject of “ trade marks,” to say what marks shall be enforceable and

U nion

N.S.W.what shall no t; to say what marks shall be recognized as trade marks and what shall n o t; and Part VII. does not transgress the powers conferred on the Parliament “ to make laws . . . with respect to . . . trade marks,” The meaning of the expression in 1900 gives the centre, not the circumference, of the power.

A trade union, otherwise legal, can trade if so authorized by its rules.

Inquiry into the meaning, origin and growth of the term “ trade mark,'' and the legislative history of the subject in England and Australia.

Statement of the principles applicable to the interpretation of terms used in the Constitution.

•

Q u e s t io n .s of law referred to the Full Court.

Thi.s wa.s a suit by the Attorney-General for New South Wales, at the relation of Tooth and Company Limited and three other brewing companies, who were also joined as plaintiffs, against the Brewery Employes Union of New South Wales and the Registrar of Trade Marks for the Commonwealth. According to the particulars endorsed on the writ the plaintiffs claimed; (1) a declaration that the registration of the workers’ trade mark, registered by the defendants on or about 12th July 190G pursuant to the provisions of Part VII. of the Trade Marks Act 1905 and Regulations, was null and void inasmuch as that part of the Act, and the Regulations made under it, are beyond the powers of the Parliament of the Commonwealth, and also inasmuch as the mark so registered never was a trade mark; (2) a declaration that Part VII. of the Act and the Regulations thereunder are null and void, inasmuch as the Parliament of the Commonwealth had no power or authority to enact that Part; (3) an order removing the said mark from the Register; (4) a declaration that the defendant Registrar had no authority or power to keep a regi.ster of workers’, trade marks, and an injunction restraining him from so doing. In their statement of claim the plaintiffs alleged that the plaintiff companies were duly

473

6 C.L.R.]

OF AUSTRALIA.

incorporated and carried on busine-ss in New South Wales and H- 0. of A.

■elsewhere as brewers under the Companies Act 1899, New South

Wales, and the defendant union was a trade union registered under

attorney-

the Trade Union Act 1881, New South Wales, and an industrial

union registered under the Industri<d Arbitration Act 1901, New

B rkweby

E mployes U nion of

■South Wales, and also an association of workers or a number of

associations of workers within the meaning of the Trade Marks

N.S.W.

Act 1905, the defendant Watson being its secretary, liable to be sued on its behalf, and the defendant Townsend the Registrar of Trade Marks for the Commonwealth. The statement of ■claim continued as follows:—On or about 12th July 1906 the defendant union applied to the defendant Registrar for the registration of a certain mark or label as a workers’ trade mark under Part VII. of the Trade Marks Act 1905. The defendant Registrar purports to keep a register of workers’ trade marks under that Act. On or about 12th July the defendant Registrar- purported to register the mark as applied for, and entered it in the register referred to. Parliament has no power or authority to enact Part VII. of the Trade Marks Act 1905, and it is wholly null and void. Defendant union threaten and intend to use the mark or label as a workers’ trade mark duly registered under the Act, and the defendant Registrar will keep a register of workers’ trade marks unless restrained by the Court. The registration and user of the defendant union’s mark or label will injure and interfere with the plaintiff companies in carrying on their business, in selling their goods and in employing labour in their busine.ss. The plaintiffs claimed a declaration in accordance with the particulars endorsed on the writ. In pursuance to a request by the defendant Registrar the following further particulars were delivered :—The mark or label complained of was and is in respect of beer, porter, malt, mineral and aerated waters, cordials, hop beer, ginger beer, and cider. The registration will compel the plaintiff companies to allow the use of the mark on their goods or to lose business with the members of the defendant union or persons licensed by it to use the mark, or in sympathy with the defendant union. Many people who now buy the plaintiff companies’ goods will refuse to do so, some if the mark is used on the goods, others if the mark is not used. The registration will prevent

474

[1908.

HIGH COURT

H. C. OF A. Hie plaintiff companies from employinji, or render it ditliciilt for 190S. them to em^iloy, workmen except members of tlie defendant union

A ttorney- per.sons licensed by it to use the mark. It will jirevent the

plaintiff companies from using the same or a similar design, and

V. will render them liable to actions and prosecutions for the

Brew erv

E mployes

infringement of the mark. The defendant Registrar, by his

U niok of

N.S.W.statement of defence, denied the allegation of the statement of

claim as to the power of the Commonwealth Parliament, and as to the damage that would be caused to tlie plaintiff companies by the registration. He did not admit the allegation that the defendant union threatened to use the mark in (piestion, and that the plaintiff companies carried on business as alleged, ami objected that the facts alleged in the statement of claim, even if true, disclosed no cause of action, and did not entitle the plaintiffs to the relief or any part of the relief claimed against him.

Gri^itk C.J. to the Full Court for determination: (1) Whether the statement of claim as supplemented by the particulars disclosed any cause of action maintainable by the plaintiffs or either of tliem against the defendants or eitlier of them; and (2) Whether the relevant provisions of Part VII. of the Trade Ma7’ks Act 1905 were within the competence of the Parliament of the Commonwealth.

The plaintiffs joined issue. the pleadings were, on a summons taken out by the plaintiffs referred by

Mitchell K.C. and Glynn {Lamb with them ), for the plaintiffs. The prohibition in sec. 74 of the Trade Marks Act 1905, against the use of “ any mark substantially identical with a registered workers’ trade mark, or so nearly resembling it as likely to deceive,” is practically the same as the prohibition in sec. 25 of the same Act, which reproduces sec. 72 (2) of the English Trade Marks Act 1883, as amended by the Act of 1888: see Kerly on Trade Marks, p. 655 ; Sebastian on Trade Marks, 4th ed., p. 374. [They referred also to secs. 75, 76 and 77 of the Trade Marks Act 1905.] The plaintiffs, before the registration of the mark in question, had a right to register that mark or one resembling it.

475

6 C.L.K.]

OF AUSTRALIA.

whereas now they have not such a right. That is sufficient under H. 0. of a .

” .

1908.

the English deci.sions to render them persons aggrieved and

entitled to claim rectification of tlie register. It is not necessary

attorney-

that the plaintiffs should have previously used the mark or even

intended to do so : Powell v. Birmingham Vinegar Brewery

B rew ery

E mployes Union of

Co. (1); Sebastian on Trade Marks, 4th ed., pp. 367, 368 ; In re

Rivih'e’s Trade Mark (2); Thompson v. Montgomery, In re

N.S.W.

Joules Trade Marks (3); Kerly on Trade M a r k s ,81. Whether the plaintiffs acquire the right to use the mark by employing union labour, or do not, they must suffer some loss of custom. The plaintiffs are not bound to wait until the label is used by other persons or until they themselves incur penalties by using a similar one. [They referred to Federated Amalgamated Government Railway and Tramway Service Association v. Neto South Wales Railway Traffic Employes Association (4); In re Batt and Co.’s Trade Mark (5); Bruce v. Commonwealth Trade Marks Label Association (6); Tyler v. Judges of the Couri of Registration (7); California v. San Pablo and Tulare Railroad Co. (8).]

[Griffith C.J. referred to Shortt on Mandamus and Prohibi tion, p. 132.

I saacs J. referred to In re Wright, Crossley d Co.’s Trade

Mark (9).

H iggins J. referred to North Eastern Marine Engineering Co.

V. Leeds Forge Co. (10).]

All the parties interested being before the Court, the Court should exercise its power to make a declaratory order: Order H I, rule 1 ; High Court Procedure Act 1903, sec. 32. It is a public mischief that such an Act as this should remain un challenged : London Association of Shipowners and Brokers v. London and India Docks Joint Committee (11); Barraclough v. Brown (12). The Attorney-General for New South Wales is entitled, in the interest of the public in his State, to take appro priate legal proceedings to challenge the validity of the Act.

(1) (189.3) 2 Ch., ;i88 ; (1894) A.C., 8.(7) 179 U.S.,

405.

(2) 26 Ch. 1)., 48.(8) 149 U.S., 308.

(3) 41 Ch. U., .35.(9) 15 R.P.C., 133, 377.

(4) 4 C.L.K., 488.(10) (1906) 1 Ch., 324.

(5) (1898) 2 Ch., 432; (1899) A.C.,

(11) (1892) 3 Ch., 242.

42k

(12) (1897) A.C., 615.

(6) 4 C.L.R., 1569.

476 HIGH COURT

[1908.

H.c. OF A. The Act is in the nature of a nuisance or invasion of a public

1908.

right. The fact that the people of other States may also be

Attorney- affected by the legislation does not affect his right. [They

referred to Pollock \\ Farmers’ Loan and Trust Comj^anyil);

N.S.W.

V.	K err on Injunction, 4th ed., p. 473 ; Kansas v. Colorado (2).

Brew ery

JCmployes

[Griffith C.J. referred to Attorney-Genercd v. Manchester'

U nion

N.S.W.

Coi'poration (3).]

It is not contended that the Attorney-General of a State would be justified in suing merely because the rights of an individual subject of his State were invaded by the Commonw'ealth, but if the injury, w'hether actual or contemplated, is serious, and in the nature of a nuisance to the general public, he is entitled to sue. It is not necessary to allege injury to the public generally, it is sufficient for the Attorney-General to join in the suit. [They referred to Attorney-General v. Compton (4); DanieWs Ch. Prac., 7th ed., vol. l., ch. 2, sec. 2 ; Attorney-General v. Shrewsbury (Kingsland) Bridge Co. (5).

[Griffith C.J. referred to London County Council v. Attorney-

General (6).

I.SAAGS J. referred to Attorney-General v. London and North Western Raihvay Co. (7); Ellis v. Duke of Bedford (8).]

Assuming that the suit was properly instituted. Part VII. of the Trade Marks Act is ultra vires the Commonwealth. The power, if any, is based on pi. xviii. of sec. 51. PI. i. as to the trade and commerce will not support i t : Trade Mark Cases (9). The workers’ trade mark as defined by Part VII. is not a trade mark within the meaning of pi. xviii. of sec. 51. It is lacking in the essential characteristics of a trade mark at common law and by Statute. The term “ trade mark ” in the Constitution must be interpreted as it was understood in 1900 when the Constitution was passed: see Quick and Gar ran, Annotated Constitution, p. 598 ; Encyclopcedia of Laws of England. There may be some change in the meaning with the development of the community, but the essential characteristics cannot be altered

(1) 157 U.S., 429, at p. 604.(6) (1902) A.C., 165.

(2) 206 U.S., 46, at p. 98.(7) (19<X)) 1 Q.B., 78.

(3) (1893) 2 Ch., 87.(8) (1899) 1 Ch., 494.

(4) 1 Y. & C. C.C., 417.(9) 100 U.S., 82.

(5) 21 Ch. D., 752.

6 C.L.R.]

OF AUSTRALIA.

except by an amendment of the Constitution. Parliament cannot H-

extend the meaning, for that would be an extension of its

constitutional powers. There can be no change in the meaning

attorney-

of the terms such as would result in a conflict with the powers left to the States by the Constitution. [They referred to Hare

•’ ^ .

B rew ery

on Constitutional Law, vol. i., pp. 442, 443; Prentice on Federal

E mployes

Powers over Carriers, p. 54.] Part VII. of the Act cannot be

N.S.W.

supported by the “ trade and commerce ” powers, because it is too wide. Those powers would only justify protection of the mark while goods were in transitu between State and State, or between the Commonwealth and foreign countries.

A trade mark involved as an essential element that it should be distinctive of the goods of one person or firm from those of every other person or firm. The union label has not this dis tinctive quality. It is placed alike on goods made or sold by different manufacturers or traders provided they are made by union labour. It does not distinguish the goods made or sold by one firm from those made or sold by another. It is not even intended to serve the purpose of a trade mark, but to encourage the employment of union labour. A trade mark must be attached to a particular business; the right to apply it to goods is an incident to the carrying on of that business. The union does not carry on the business of brewing, or, indeed, any busine.ss. [They referred to Leather Cloth Co. v. American Leather Cloth Co. (1); Ln re Australian Wine Lmporters Ltd. (2); Richards v. Butcher (3).

[O’Connor J. referred to Re Sykes cfc Co.’s Trade Marks (4).]

It is not necessary that the goods should be the property of the owner of the trade mark, but they must be subject to his independent control in some way, and he must have the right to

apply the mark to the goods while they are in his control. [They

referred to Sebastian on Trade Marks, 3rd ed., p. 598 ; 4th ed., p. 610; and series of Statutes there cited dealing with the subject of Sheffield marks; Hopkins on Trade Marks, 2nd ed., pp. 3, 6, citing Manufacturing Co. v. Trainer (5); Kerly on

(1) 11 H.L.C., 523.(4) 43L.T., 626.

(2) 41 Ch. D., 278. at p. 280.(5) 101 U.S., 51.

(3) (1891) 2 Ch., 522.

478

[1908.

HIGH COURT

H. C. OF A.

Trade Marks, pp. 52, 58, 770; Report of Select Committee,

1908.vol. VIII.]

A ttorney-

[ H ig g in s J. referred to In re Carter Medicine Co.’s Trade

G en’erae

for

Mark (1).]

N.S.W.

V.	The union lias no right to apply the nniou label to the goods

Brew ery

E mploye.s

without the maker’s consent.

It never ha.s any control, in the

U nion

way of business, over the goods.

Even the indi\ idnal workmen

N.S.W.

who form the union, and work upon the goods, have no right whatever in respect of the goods, and even if they had, they have no individual interest in the mark. It is not their {property but that of the union.

[G r if f it h C.J.—Would the mark “ made in Germany” he a

trade mark ?]

Xo. That is in tlie nature of a merchandise mark. Tliere is a clear distinction between trade marks and merchandise marks, recognized in legislation both here and in England. The Common wealth Parliament recognizes the distinction by dealing with nierchandi.se marks only in relation to inter-state trade: .see Act No. IG of 1905. [They referred to K erly on Trade Marks, 2nd ed., p. 11.] The Sheffield marks on cutlery, &c., though in .some re.spects in tlie nature of trade marks, for in.stance in that each workman had a separate mark, which was his own property and which he was entitled to apply to the goods upon which he worked, was more in the nature of a hall mark.

[ H ig g in .s j .—Could not any mark used in respect of goods for

purposes of trade be included in the expression trade marks ?]

No. If that were so the Commonwealth could absolutely con trol the internal trade of the States. Any construction which w'ould lead to such a result must be avoided if possible, as incou.sistent with the obvious exclusion of the Conimonwealtli from legislation upon internal trade Vjy pi. i. of sec. 51 of the Constitution. The Commonwealth cannot, by authorizing a person to put a mark on goods wdiich are not his goods in a business sense, make that mark a trade mai'k. [They referred to Kerly on Trade Marks, 2nd ed., pp. 34, 847, 848.] Thei’e must be .some independent right in the owner of the trade mark to deal with the goods and to apply the mark to them, for the

(1) (1892) :i Ch.. 472.

479

6 C.L.R.]

OF AUSTRALIA.

purpose of indicating that the owner of the mark has so dealt H. C. of A.

with the goods, wliether by manufacture, selection or otherwise.

9̂0®-

[They referred to ThorneLoc v. H ill (1).] These characteristics

are attached to the idea of trade marks in all the legislation on G eneral for

the subject, and in all the definitions framed by the Courts in

Brew ery

England and summarized by text-book writers. [They referred

E mployes

U nion of

to 25 & 26 Viet. c. 88; The Mereluindise Marks Act 1887; Cotton

N.S.W.

V. Gillard (2); In re J. c& J. Hopkinsons Trade Marks (3); In re Wood’s Trade M ark; Wood, v. Lambert & Butler (4); Schneider v. Williams (5); Columbia Mill Co. v. Alcorn (6); Sebastian on Trade Marks, 4th ed., pp. 547-551.]

[G r if f it h C.J. referred to the International Convention for

protection of Industrial Property 1893; Sebastian on Trade

Marks, 4th ed., p. 522 ; In re Batt cb Co.’s Trade Mark (7).]

The framers of the Constitution could not have intended that the term “ trade marks” should include a mark unknown in practice in English or Australian Courts. The union label had been used in America, but in the only cases where the question was raised it was held not to be a trade mark. The right to use it was protected on principles analogous to those upon which the protection of a trade mark in equity is based, but never on the ground that it was a trade mark. [They referred to Cigar Makers’ Pi'otective Union v. Conhaim{8); Carson v. Ury (d)', United States v. Braun (10); Weener v. Brayton (11); MeVey V. Brendel (12); The State v. Bishop (13); Hetterman v. Powers

(14); Strasser v. Moonelis (15); Perkins v. Heert (16).] If the union label is a “ trade mark ” there was no necessity for Part VII. of the Trade Marks Act 1905. Adequate protection would be given by the rest of the Act. This label would not be recognized as a trade mark in any foreign country or protected as such by international law : see Sebastian on Trade Marks, 4th ed., pp. 79, 103.

(1) (1894) 1 Ch., 569.(10) 39 Fed. Rep., 775.

(2) 44 L.J. Ch., 90.(11) 152 Mass., 101.

(3) (1892) 2 Ch., 116.(12) 144 Pa. St., 235; 27 Am. S.R.,

(4) 32 Ch. D., 247, at p. 259.62.5.

(5) 44N .J. (Eq.), 391.(13) 128 Mo.. ,373 ; 4.9 Am. .S.R., 569.

(6) 150 U.S., 460.(14) 102 Ky., 133 ; 80 Am. S.R., 348.

(7) (1898) 2 Ch., 432.(15) 108 N.Y., 611.

(8) 40 Minn., 243 ; 12 Am. S.R., 726.(16) 158 N.Y., .306.

(9) 39 Fed. Rep., 777.

480 HIGH COURT

[1908.

H.C. OK A. Sub-sec. (c) of sec. 74 (1) of tlie Trade Marks Act 1905 miolit

1908.

be considered to be witliin the powers of tlie Parliaiiieiit if the

Attorney'- section as a whole dealt Yvith matters within the powers, but it is

G eneral

for

N.S.W.

merely ancillary to the rest of the .section and cannot stand by

Brewery- V.itself. The real purpose of the Part is the registration. The

E mployes

substance of the enactment is to be looked at, and if that is

U nion of

N.S.W.ultra vires, the enactment as a whole should be declared invalid,

unless it is severable, and the parts can stand alone: Federated Amalgamo.ted Government Railw ay and Tramway Service Association v. Neiv South Wales R ailw ay 'Traffic Employds Association (1).

Holman (D. R. Hall with him), for the defendant union. The plaintiffs have suffered no injury from the registration. Their rights have not been invaded. They have not sought to register or use a mark. Part VII. is a mere prohibition of fraud and cannot injure any one. It does not submit any person to compulsion against his legal rights. The Parliament had power under pi. xviii. of sec. 51 to legislate generally on the subject of trade marks. Part VII. is clearly legislation on that subject, and is within the power, unless it really deals with something that is not in any .sense or cannot be a trade mark. The mere fact that the thing dealt with was not .specifically contemplated by those who framed the Con.stitution does not exclude it from the power. The Court should construe the grant of powers in a liberal manner in accordance with the apparent intention of the authority which conferred the power. There is nothing to suggest anjr limitation on the power in thi.s case. [He referred to Amer. Encyclopcedia of Law, 1st ed., p. 673; Hinyham and Quincy Bridge and Turnpike Corporation v. County of Norfolk (2): FletcJwr v. Peek (3); Trustees of Dartmoutlt College v. Woodward (4).

The term “ trade mark ” in 1900 had not the restricted mean ing for which the plaintiffs contend. Moreover, it was not a term with a definite fixed meaning. It was in course of expansion. The first legislation on the subject was the MereJuindise Marks

(1) 4 C.L.K., 4S8.(3) 6 Cranch., 87.

(2) 6 Alien (Mass.), 357.

(4) 4 Wheat., 518.

481

6 C.L.R.]

OF AUSTRALIA.

Act 1862 (2.5 & 26 Viet. c. 88).

Then in the Merchandise Marks H. C. of A.

Act of 1887 a new definition of trade mark was given : see sec. 3.

^^_)

Tliere was notliing in the idea of a trade mark, as then under-

attorney-

stood, making it an essential element that the owner of the mark

should be the owner of the goods to which it was to be applied.

Brewery

E mployes Union of

[He referred to Re Sykes <t Co’s Trade Marks (1); Hirsch v. Jonas

(2); Christy v. Murphy (3); Cox, American Trade Mark Cases,

N.S.W.

p. 507 ; Colton v. Thomas (4j. A trade mark could be acquired by any person capable of acquiring title to personal property, who handles a product on its way to the consumer : Hopkins on Trade Marks, 2nd ed., p. 55, whether as maker, owner or selector, and the right to affix the mark might depend upon the owner’s permis.sion.

Assuming that a trade mark must be incident to a business, that business may be that of a workman as well as that of the manufacturer or producer. The cases cited for the plaintiffs to show that the mark must be distinctive and attached to a business undoubtedly arose in connection with merchandize or manufacture, but there is nothing in them to cut down the plain words of the Merchandise Marks Act 1862. The definitions in those cases should be read in the light of the circumstances under which the question arose. They should not be treated as exhaustive of the cases in which a trade mark can exist. The meaning of the term was not stereotyped in England, for in 1884 Great Britain in pursuance of sec. 103 of the Patents, Designs and Trade Marks Act 1883 acceded to the International Convention which had been made in 1883 by other States, under which anything i-egistered as a trade mark in any of the States which were parties to the arrangement was protected as a trade mark in the English Courts. So long as the mark was by its nature registrable in England, that is to say, was such a mark as could be registered there, it might be registered and protected as a trade mark. The result was that a mark which was a mere workers’ mark, if protected in its country of origin, might be a trade mark in England, provided it contained the essentials of shape, form, &c., prescribed by sec. 64

of the Act of 1883 as amended by the Act of 1888.

[He referred

(1) 43 L.T., 626 ; 29 W.R., 235.(3) 12 How. Pr. K , 77.

(2) 3 Ch. D., 584.

(4) 2 Brews. (Penn.), 308.

482 HIGH COURT

[1908.

H.C. OF A. to Sebaxtian on Trade Mavkx, ;ird ed., p. 527, 4th od., j). 532 ;

1908.

Kerly on Trade Marks, p. 807; In re Californian Fiy Syrup

Attorney- Company’s Trade Mark (1).] Before 1900 tliere had been legis

N.S.W.lative recognition of worker.s’ marks or union labels as trade

r.	marks in the United States. JIany of the States jiassed Acts

Bkew ery

Kmi' loyes

giving trade unions the right to register such marks and provid

U nion o r

ing for their protection as trade marks. This was done in Cali

N.S.W.

fornia, Minne.sota, Georgia, Indiana, Colorado and other States. [He referred to House Documents of the Congress 1903, 1904, vol. 105, p. 130 et seq. ; Bering's Codes and Statutes 1885, and Supplement 1889.

{Per B a r to n and O ’C o n n o r JJ.—It can scarcely be contended that these Statutes were present to the mind of the Imperial Parliament when passing the Commonwealth Con.stitution.]

They show that the term “trade mark” was at that date used in America in a sense wide enough to include the union label. The label was in many cases called a trade mark. In one instance. People V. Fisher (2), before any special Statute had been passed, protection was granted to a trade union label as a trade mark at common law. [He referred to State v. Bisliop (3); Cigar Makers’ Protective Union v. Conhaim (4); Mc Vey v. Brendel (5); Weener v. Brayton (6); Tracy v. Banker (7); Caswell v. Davis {8)] Cohn v. The People (9); Hetterman w Powers {\0)] Schmalz v. Woolley (11).] These Statutes and decisions are of value because in important particulars the Australian Constitution was founded upon American precedents. Where the power given to the Commonwealth coincides with that reserved to the States under the American Constitution, the construction put upon that power and the limits of its exercise in the United States should be applied to the power given to the Commonwealth. It will be assumed that the Federal Convention used the terms conferring the power in the light of the exercise of that power in America by the authority which had the

(1) 40 Ch. D., 620.(6) 152 Mass., 101.

(2) 50 Hunt. (N. Y.), 5-52.(7) 170 Muss., 266.

(.3) 49 Am. S.R., 569.(8) 58 N.Y., 223.

(4) 40 -Minn., 243; 12 Am. S.R.,

(9) 149 111., 486 ; 41 Am. S.R., .3W.

726.(10) 102 Ky., 1.33; 80 Am. S.R.,

(5) 144 Pa. .St., 235; 27 Am. S.R.,

348.

625.(11) 73 Am. S.R., 6.37.

483

6 C.L.K.]

OF AUSTRALIA.

power. And the Imperial Parliament, knowing the exifstence of

the International Convention, when it gave the Commonwealth

power to legislate on the subject of trade marks, must have con-

attorney-

templated the possibility of its legislating for the purposes of the G eneral for

N.S.W.

Convention, and making anything registrable abroad as a trade

B rew ery

mark, a trade mark in the Commonwealth.Employes

U nion of

Next, assuming that a trade mark mu.st be distinctive and

N.S.W.

incidental to a business, a trade union label has both those characteristics. The label distinguishes goods made or produced by the members of the particular union from goods made by others. The public may be just as desirous of knowing whether the goods were made by union labour or not, as of knowing whether they were made at a particular factory. And the union is engaged in business. The workmen combine together, and by the process of collective bargaining agree with an employer for the sale of their workmanship to him. This sale of work or labour should be treated in the same way as the sale of any commodity. The union is the body which carries on the business. The labour is just as essential an ingredient in the production of the article as the machinery of the employer. [He referred to Webb’s Industrial Democracy (1897) vol. I., p. 171.] The Com monwealth Parliament cannot be bound down to the denotation of the terms of the Constitution in 1900. It is not a change in the essential meaning that is contended for but a new application of it, just as the power to make laws with respect to lighthouses might be applied to some new method of warning shipping that had grown out of the older method. New subject matter, not in existence at the date of the Constitution, may arise and form material for legislation under the original powers. So the commerce clause in the United States related originally only to water borne commerce, but it now applies to railroads, and the postal power to telephones. [He referred to Prentice on Federal

Power over Carriers, p. 70.]

The term “ business” has now been

extended to include the bargaining by a union for its labour. The whole general concept of the term “ trade mark ” is within the power of Parliament, it is not limited to dealing with the specific instances of trade marks known to the law at the date of the

484 HIGH COURT

[1908.

H. C. OF A.

Constitution. [He referred to sec. 51, pi. ix., xvii., xviii,,

1908.

XX.

, xxviii.j

A ttorney-

[ H ig g in s J. referred to \Vhite v. Morley (1).]

G eneral

FOR

N.S.W.

V.	D uf y K.C. and Cullen K.C., {Bavin with tliein,) for the

Brew ery

E mployes

defendant Registrar of Trade Marks. The Court will not iiujuire

U nion of

N.S.W.into the validity of the Act unless it is necessary for the deter

mination of the case before it : Cooley on Constitutional Limitations 6th ed., p. 196. It is not iieces.sary to decide it in this case. There is no cause of action disclosed by the pleadings The plaintiffs do not show any injury entitling them to maintain the suit. The mere registration will not support an action unless it is both illegal and injurious to them. Even if the Act is invalid, the plaintiffs have not been injured. They do not allege that they desire to register a similar mark, or that the registered mark has been used to their prejudice. There is nothing in the nature of a nuisance, no encroachment upon a public right by an unlawful act. [They referred to Pollock on Torts, 7th ed., pp. 393, 394.] An interference with business is not a cause of action unless the Act is unlawful; Mogul Steam ship Co. Ltd. V. McGregor, Goto d' Co. (2); Allen v. Flood (3).

[G r if f it h C.J.—Is there not a distinction between the act of

an individual and an act done under colour of authority ? He

referred to Coke’s Entries ; Wentworth on Pleading, vol. vi.J

This is not a case which would ground a writ of quo warranto. The Registrar is not wrongfully exercising an office. It is only alleged that he has made a wrong entry. Before quo warranto will lie it mu.st appear that there is either a wrong occupant of an office, or no such office as he purports to hold, or the wrongful exercise of a franchise. If there were no .such office as Patents Office Registrar the Crown could intervene, through the Attorney- General for the Commonwealth. In no other way could the legality of the Act be attacked.

[Isaacs J. referred to Barley v. The Queen (4).]

If the Statute provided no remedy a person injured by the wrong entry could bring an action, but no person can do so,

(1) (1889) 2 Q.B., 34, at p. .39.(.3) (1898) A.C., I.

(2) 23Q.B.D., 598.

(4) 12 Cl. & F., 520.

6 C.L.K] OF AUSTRALIA.

485

.simply on the ground that there is an invalid trade mark on the H. C. o f A.

I'ogister. The procedure by motion under the Statute is simply

19^ ̂

for the purpo.se of keeping the register pure.

Attorney- G en EKAL FOR

[O ’Co nnor J. referred to Powell v. Birmingham Vinegar

N .S .W .

Brew ery V.

Bretvery Comjjany (1).]

E mployes U nion of

It is not enough to be engaged in the same trade to make a

party a person aggrieved ; In re the Trade Mark of Wright,

N.S.W.

Crossley A Co. (2); Paine & Co. v. Daniells & Sons Breweries ; In re Paine <L' Co.’s Trade Marks (3). Merely making a manu facturer state whetlier he is employing union labour or not is not an injury. It is the use of the label by other brewers that does the injury if anĵ is done. Registration does not cause the injury. It does not give the right to use the label. A union might have u.sed a label under the same conditions before the Act was passed. The plaintiffs should have asked to have a label similar to the one in question registered, and then, if they were refused, they might have had a ground for asking for a declara tory order under Order III., rule 1. The power of the Court under that Order is discretionary and should not be exercised in regard to questions arising under the Constitution: Attorney- General for Ontario v. Attorney-General for the Dominion (4). [They referred to London Association of Shipowners and Brokers v. London and India Docks Joint Committee (5); North Eastern Marine Engineering Co. v. Leeds Forge Co. (6 ) ; Offi,n V. Rochford Rural District Council (7).

Part VII. is within the power conferred by sec. 51, pi. xviii. The term “ trade mark ” originally had a wider meaning than that contended for by the plaintiffs, and that meaning had not been narrowed before 1900. Originally a trade mark was intended to identify goods with the persons who had something to do with their preparation for market in order to indicate excellence. The marks indicated sometimes the person who made the article, .sometimes the person who sold it, sometimes the method of manufacture, or the class to which the manufacturer belonged. The Courts were not invoked to protect these marks to any great

(1) (1894) A.C., 8.(5) (1892) 3 Ch., 242, at p. 249.

(2) l.i R.P.C., 377. (6) (1906) 1 Ch., 324.

(;l) (1893) 2 Ch., 567. (7) (1906) 1 Ch., ;142, at p. 357.

(4) (1896) A.C., 348.

VOL.

V I.

486 HIGH COURT

[1908.

H.C. OF A. extent until the 19th century, wlien suits were brouglit either to

1908.

protect the trade marks as the property o£ the person wlio liatl

A ttornev- been accu.stoined to use it, or to i>revent “ pa.ssino off.” 'I'he.se

proceedings were brought always by the per.sons inju?-cd, tliat i.s,

Brkwerv

the owners or sellers of the goods. Conseijuently the Courts only

KMPLOYtS

had to deal with trade marks belonging to persons .selling or

U nion of

N.S.W.making the goods on which the marks were irsed, with the result

that in general opinion owners of trade marks were restricted to that class of persons. But there were other owners of trade marks and other objects of tlieir use. Tlie expression “ trade mark ” was not used until the 19th century, but the things denoted by the name had existed in connection with trade for many years. A workman would probably have had the .same riglit to restrain other persons from using his mark as an owner of goods had. Tliere is no reason why a particularly expert man should not have had a special mark protected by the Courts, though the makers and .sellers of the goods were more likely to bring actions for injuiy to their property, as they were the chief suti'erers from the improper use of the mark by other persons. The detinitioiis given by the Judges were only directed to the particular matters in controversy, and the circumstance that the per.sons owning the marks were manufacturers or sellers of the goods in ([uestion was present though not e.ssential. The que.stions that aro.se were therefore always whether the particular mark had been used in connection with a particular business. [They referred to Sebastian on Trade Marks, 4th ed., p. 6 ; Kerly on Trade Marks, 2nd ed., p. 2 ; Southern v. Horo (1); Leather Cloth Co. v. American Leather Clotlc Co. (2); Hopkivs on Trade Marks, p. 804; Royal Baking Powder Co. v. Raymond (8); In re Australian Wine Importers Limited (4); Adams v. Heisel (5); Stroud’s Judicial Dictionary (2nd ed., tit. “ Patent”).] The result of legislation in England was not to cut down the meaning of the expre.s.sion trade mark, but to limit the cla.ss of marks that could be registered. Other marks, though not registrable and, therefore, not protected, were neverthele.ss trade marks

(1) Poph., 143 ; 3 Cro. .T., 471 ; 2

(3) 70 Fed. Rep.. .376.

Roll., 26.

(4) 41 Ch. I).. 278.

(2) 33 L.J. Ch., 199.

(5) 31 Fed. Rep., 279.

6 C.L.R.] OF AUSTRALIA.

487

H. C. or A.

in the common law acceptation of the term.

There wa.s nothing

1908.

to prevent a workman or member of any clas.s from acquiring

the right to such a mark.

[They referred to Merchandi>ie attorney

G eneral

for

Marks Act, 25 & 26 Viet. c. 88; 46 & 47 Viet. c. 57 ; 50 & 51

S.W.

Viet. c. 28; 51 & 52 Viet. c. 50.] By the Act of 1862, certain

Brewery

E mployes U.VION OF

marks, whicli were not trade marks registrable as such, were

protected owing to their age, and by the Act of 1887 this protec

N.S.W.

tion was extended to them as merchandi.se marks: see Kerly on Trade Marks, 2nd ed., p. 807. The mark in In re Carter Medicine Co.’s Trade Mark (1), would have been good if it had been one of the class of marks described as registrable by the Acts. The limitation was, not upon the persons who could register a mark, but as to the class of mark that could be registered. The test of a person capable of owning a trade mark is, not whether he has goods upon which he can put the mark, but whether he can use the trade mark for his own benefit with purcha.sers of goods. The right to put the mark on goods may be acquired by contract with the owner of the goods. It is not necessary that the owner of the mark should deal independently with the goods. The worker who owns a trade mark gets the benefit of its use by improving Ids reputation and so increasing the value of his services. The wrongful use of the mark by others on inferior goods would entitle him to claim damages at common law. In 1900 the expression trade mark was applicable to any mark used on vendible goods to indicate origin. Its meaning in the Constitution should not be narrowed unless there is a clear reason for doing so. There is no reason of expediency for re.stricting it. As the Parliament has to deal with foreign countries in all matters relating to trade marks, it will be presumed that its power over the subject is absolute ; otherwise it would not be able to reciprocate with countries which make Conventions with it on the subject. The union label contains the essentials of a trade mark. It indicates that the owner of the mark has done work upon the goods, or that a member of the body which owns the mark has done such work. No new right of pi-operty is created by this Act, it is merely a new regulation of a rivlit which existed before, providing new remedies, &c. The position

(1) (1892) 3 Ch., 472.

488 HIGH COURT

[1908.

H. C. OF A. of the worker is analogous to that of the bleacher. It is

immaterial tliat the union consists of a large number of per.son.s. A ttorney- A firm or comjiany may have a trade mark. Under the Statutes

(jenerâl FOR force in the Australian States at the date of the Constitution

V. trade marks had as wide a meaning as under the English

Hrew erv

KMPLOyE.S Statutes.

[They referred to New South Whiles Statutes, 28

U nion

N.S.W.Viet. No. 9; 50 Viet. No. 13; No. 35 of 1897; Victorian

Statutes, Trade Marks Statute 1804, No. 221; 'Trade Marks Registration Act 1870; 'Trade Marks Act 1883; 'Trade Marks Acts oi 1890, Nos. 1143 and 1180; Queensland Statutes, 'Trade Marks Act, 28 Viet. No. 5; 48 Viet. No. 13; South Australian Statutes, 'Trade Marks Act 1803; 'Tra.de Marks Act 1892, No. 551 ; W êstern Australian Statutes, Designs and 'Trade Marks Act, 48 Viet. No. 7 ; Merchandise Marks Act, 52 Viet. No. 0; 58 Viet. No. 4 ; Tasmanian Statutes, Merchandise Marks Act 1804; Patents, Designs and 'Trade Marks Act 1893. They referred also to the English Statutes dealing with workers’ marks on cutlery and metal work generally, collected in Sebastian on 'Trade Marks, 4th ed., pp. 014 to 032.] In all ca.ses of workers’ marks under the old English Statutes the mark was the property of the woiker, though the goods on whicli the mark was placed might be tlie property of his employer. They were probably tbe origin of the trade mark as recognized by modern Statutes. The original purpose was to protect the public from fraud, but from its having that effect the right to use the mark became valuable to tbe owuier.

[ I sa a cs J. referred to 59 Geo. III. c. 7.]

The Commonwealth power to legislate with respect to trade marks nece.s.sarily involves a certain amount of interference with the internal trade of the States, whatever meaning is given to the term. The only question is how far the power extends. It should be a.ssumed to extend to the whole subject unle.ss strong reason to the contrary is shown. The Commonwealth legislature was intended to have as full power to deal with the subject of trade marks as the States would have had but for the Constitu tion. The States could deal with the whole subject and make any provisions they pleased as to the kind of marks that should be treated as trade marks and as to tlie cla.ss of persons entitled

489

6 C.L.K.]

OF AUSTRALIA.

H. C. OF A.

to enjoy them, and impose any conditions they thought fit.

That

1908.

power ha.s been given to the Commonwealth by the only terms

that could possibly have been used to confer the power to its attorney

fullest extent, just as the power to make laws with respect to

bills of exchange and promis.sory notes. [They referred to In

the matter of Edtuard Klein (1); Kelson v. Garland (2); Waring

E mployes

V. Clarke {Z)i\

Any other construction will result in confusion

N.S.W.

between State and Commonwealth legislation on what are now

regarded as branches of the same subject matter.

The provisions of Part VII. are maintainable under the Trade and Commerce Clause, sec. 51, pi. i. Regi^ration may be regarded as ancillary to the exercise of the power to restrict impoi’tation of goods. The Commonwealth has power to exclude goods not marked with the union label, and may enforce that exclusion by provisions for registration of marks and prohibition against using the marks falsely. If some provi.sions of the Part go beyond that purpose, those which are limited to it are severable from the rest, and should be upheld.

Confusion has arisen owing to the term “trade mark” being used to express two totally different concepts, one the mass of coherent rights attributed by positive law to the person who has a title to a trade mark, see Holland, Jurisprudence, 10th ed., p. 203; Williams on Personal Property, 13th ed., p. 9, and the otlier the idea of the symbol capable of being imprinted or applied to each article. The definition of the former must depend upon the state of the law at the time, and if the term used in the Constitution is construed as meaning a trade mark in that sense, it is inelastic and fetters legislation for all time. On the other hand, if trade mark means the symbol or idea of the symbol, then the power given to the Commonwealth is of the fullest. A trade mark in that sense may be made subject to any conditions that maŷ commend themselves to Parliament, either as to the persons who may hold or the manner in which they may use the, trade mark. The term in the Constitution should be construed in that sense. In the authorities cited, cases and text books, the object was definition of the rights embodied in the

(1) 1 How., 277 (n) ; 42 U.S., 275 (fi).

(2) 1 How., 265.

(3) 5 How., 441.

490 HIGH COURT

[1908.

H. C. OF A. other concept of trade mark, a summing; up of the law on the

subject with reference to tlie particular case. It was not a Atto rn et- question of construing a Constitution. The law on a particular

subject at a particular time is a very difi’erent thing from the '>• thinof which is the subject of the law. When power to legislate

"Rrew’ery

E mployes with respect to a particular subject matter is given, that power

should not be hampered by the state of the law on the subject at ----- the time when the power was given. Construed in this way the Constitution amply justifies the legislation now in (]uestion. [They referred to In re Apollinaris Co/s Trade Marks (1); Leather Cloth Co. v. American Leather Cloth Co. (2); Kerly on Trade Marks, 2nd ed., pp. 393, 461; Sebastian on Trade Marks 4th ed., p 201 ; Thayer, p. 1985.] And there is no danger of conflict between State and Commonwealth powers, no difliculty in fixing a boundary between the power of the former and that of the latter, and no division of power over what is in effect the same subject matter and should be under one legislative authority.

Mitchell K.C., in reply, referred to Ruckmaboye v. Lu.lloobhoy Mottichund (3); In re Palmer’s Trade Mark (4); Richards v. Butcher (5); Pinto \ . Badman (6) \ In re Royer’s Trade Mark (7); United States \\ Ju Toy (8); Harris v. Ogg{9)‘, National Starch Manufacturing Co. v. Munn’s Patent Maizena and Starch Co. (10); In re Rivieres Trade Mark (11); Shortt on Man damus and Prohibition, 4th ed., p. 5 ; Aslatt v. Corporation of Southampton (12); Rutter v. Cltapman (13); English Parlia mentary Paper on Industrial Property, No. 28 of 1884 c. 4043; Millington v. Fox (14).

[ I sa a cs J. referred to Reg. v. Justices of Durham ; Ex parte

the Justices of Sunderland (15).

H ig g in s J. referred to Wheeler v. Johnston (16).]

Cur. adv. vult.

(1) (1891) 2 Ch., 186, at p. 234.

(9) 5 N..S.W. I..R. (Eq.). 114.

(2) 4 D.J. & S., 1.37, a t p. 144 ; 11

(10) 13 N.S.W. L.R. (Eq ), 101.

H.L.C., 523, at p. 534.

(11) 20 Ch. D., 48.

(3) 8 Moo. P.C.C., 4.(12) 16 Ch. ])., 14.3, at p. 148.

(4) 24 Ch. D., 504, at p. 514.(13) 8 M. & \V., 1,

(.5) (1891) 2 Ch., 522, at p. 532.(14) 3 My. A C., 3.38.

(6) 8 R.P.C., 181.(15) 2 L.T.N.S., 372.

(7) 12 R.P.C., 149.(16) 3 L.R. Ir., 284.

(8) 198 U.S., 253.

6 C.L.K.] OF AUSTRALIA.

491

The following judgments were read ;—

G r if f it h C.J.

Tliis i.s an action brought by tlie Attorney-

General for the State of New South Wales at the relation of four

a tto r n ey -

joint stock companies carrying on the business of brewers in that

State, tlie companies being joined as plaintiffs. The defendants

B r e w e k y

E mpi.oyes U nion of

are the Brewery Employes’ Union, (which is a trade union regis

tered as such ill New South Wales), and is also an industrial

N.S.W.

union registered as such under the Industrial Arbitration Act

Griffith C.J.

1901 (N.S.W.), their secretary, and the Commonwealth Registrar of Trade Marks. The plaintiffs claim (1) a declaration that Part VII. of the Trade Marks Act 190.5 (relating to workers’ trade marks) and the regulations thereunder are null and void and that the defendant Registrar has no authority to keep a register of workers’ trade marks under i t ; (2) a declaration that the regi.stration of a mark or label which has in fact been registered in the register of workers’ trade marks is without lawful power or authority ; (3) a declaration that this mark or label is not a trade mark ; (4) an order to cancel the registration; and (5) an injunction to restrain the defendant Registrar from keeping a register of workers’ trade marks. The action is ba.sed upon the contention that Part VII. of the Trade Marks Act 1905 is not within the competency of the Commonwealth Parliament.

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

The first condition of any litigation in a Court of Justice is that there should be a competent plaintiff, i.e., a person who has a direct material interest in the determination of the question .sought to be decided. The Court will not decide abstract ques tions, nor will it decide any question except when raised by some person entitled by reason of his interest to claim a decision. This doctrine should certainly not be relaxed for the purpose of bringing in question the validity of Statutes passed either by the Commonwealth Parliament or by a State legislature. It is, therefore, material to consider and deal with this point before

492 HIGH COURT

[1908.

H.C. OF A. considering tlie substantial point of the validity of hart VII. of

1908. j£ plaintiffs are not entitled to ask for a

Attorney- decision, any opinion of the Court given at their instance would

G enkral for

be extra-judicial.

N.S.W.

V.	For the purpose of dealing with this objection it must he

Brew ery

E mployes

assumed that Part VII. of the Act is invalid, and that the keep

U nion of

N.S.W.

ing of the register of workers’ trade marks under it is an

Griffith C.J.

assertion of authority unauthorized by law.

Parts III., IV., V. and VI. (secs. 15 to 78) of the Trade Marke Act follow in the main the lines of the English Trade Marks Act

1905. The definition of a trade mark uses the word “ distinctive,”

but there is no formal definition of the word itself, as in sec. 9 of the Engli.s)i Act. Provision is made, as in tlie English Act, for rectification of the register on the application of any person aggrieved (sec. 71), but this provision does not apply to the mark in question. Part VII. (secs. 74 to 77) is headed “ Workers’ Trade IMarks.”

Sec. 74 is as follows :

“ 74 (1). No person shall—

(а) falsely apply to any goods for the purpose of trade or

sale; or

(б) knowingl}' ̂ sell or expose for sale, or have in his pos.ses- sion for .sale or for any purpose of trade or manufacture, any goods to which there is falsely applied ; or

(c) knowingly import into Au.stralia any goods not produced

in Australia to which there is applied

a mark which is a distinctive device, design, symbol, or label registered by any individual Australian worker or a.ssociation of Australian workers corporate or unincorporate for the purpose of indicating that articles to which it is applied are the exclusive production of the worker or of members of the a.ssociation (and which mark is hereby declared to be a workers’ trade mark), or any mark substantially identical with a registered w'orkers’ trade mark, or so nearly resembling it as to be likely to deceive. (2) The workers’ trade mark is falsely applied unless in truth— (a) the goods to which it is applied are exclusively the pro duction of the worker or of members of the a.ssocia tion ; or

493

6 C.L.K.]

OF AUSTRALIA.

{h) The goods to wliich it is applied are in part but not

exclusively the production of the worker or of members

of the association, and the mark is applied in such a

Atto bsey-

manner as clearly to indicate that its application does

not refer to, describe, or designate the parts of the goods

Brewery

E mployes U nion of

not being the production of the worker or of members

of the association ; and

N.S.W.

Griffith C.J.

in Australia) by the employer for whom they are pro duced, or, with the authority of the employer by the worker or a member of the association registering the mark.

(3.) In this section—

‘ Association ’ includes any number of as.sociations acting

together, and in such case the member's of the ‘ association ’ shall

be the members of the associations which are acting together ;

‘ Production ’ means productioir, manufacture, workmanship,

preparation or product of labour;

‘ Produced ’ has a meaning corresponding with ‘ production.’

Penalty : Fifty pounds, iir addition to an}̂ liability to forfeiture

provided by law.”

Sec. 75 provides that:

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

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

(3) A workers’ trade mark shall not be capable of assign ment either by act of the parties or by operation of law. (4) Parts III., IV., V. and VI. of this Act shall not apply in

relation to workers’ trade marks.

494 HIGH COURT

[1908.

H.C. OK A.(5) A workers’ trade mark shall not be registered if it is

1908.substantially identical witii any registered trade mark

A ttorn EY- within the meaning of this Act or .so nearl} ̂ resembles

G en era l

for

it as to be likely to deceive.”

S.W.

Brew ery The respondent union, taking advantage of this provision,

Kmployks

have obtained the registration of a mark or label as a workers’

U nion of

N.S.W.trade mark, as to which it is sufficient to say that in lorm it is

Griffith C.J.such that, but for its registration, a mark very like it might be

registered under the Act as the trade mark of the plaintiH’ companies collectively, or by any of them .separately. When 1 sa}’̂ “ very like,” I mean so like that, if the defendants’ mark is valid, a mark so u.sed by the plaintiff's would be likely to deceive. The plaintiffs, other than the Attorney-General, contend that under the circumstances they are aggrieved by the unauthorized regi.stration of such a mark. They support this contention on two grounds. They .say, first, that if provision had been made in this part of the Act for a summary application for rectification of the register by the removal of an unauthorized mark at the instance of “ persons aggrieved,” they would come within that expression as interpreted in the case of Pou'dl v. Binningham Vinegar Brcxrery Co. (I); s.c. nuh nomive In re PoivelVs Trade Marie (2), and that they are equally aggrieved, and eciually entitled to invoke the aid of the Court to redress their grievance, whether provision is or is not made in the Act for a .sjiecial and summary remedy. In the second place they allege in their statement of claim—which is admitted for the pmr{)o.se of this case—that the registration and user of the defendant Union’s mark will injure and interfere with them in carrying on their business and in selling their goods and in employing labour. This statement of damage is amplified in the particulars delivered by the plaintiff's as follows :—

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

(b) Many people who now buy the plaintiffs’ (other than the

(1) (1894) A.C., 8.

(2) (1893)2 Ch., .388.

495

6 C.L.R.]

OF AUSTRALIA.

Attorney-General’.s) goods will refuse so to do if the said mark

̂ ®

1908

were used on the said goods : others if the mark were not used.

General) from or render it difficult for the plaintiffs (other than

the Attorney-General) to employ workmen unless members of

Br ew er s

E mployes U nion of

the .said union or persons licensed by it to u.se the said mark.

(d) It will prevent the plaintiffs (other than the Attorney-

N.S.W.

General) using the same or a similar design.

Griffith C.J.

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

I will deal with these contentions separately. In Potvell’s Case (1), in which the cjuestion was whether the appellant was aggrieved by the registration as a trade mark of the words “ Yorkshire Relish,” Lord Herschell L.C. said:—

“ My Lords, the ftr.st question rai.sed is whether the respondents were ‘ persons aggrieved ’ within the meaning of the 90tli section of the Trade Marks Act of 1883. That section provides that: ‘ The Court may on the application of any person aggrieved . . . by any entry made without sufficient cause in any such register’ (that is, a ‘register kept under this A ct’) ‘ make such order for expunging or varying the entry as the Court thinks tit.’ The respondents are in the same trade as the appellant; like the appellant, they deal amongst other things in sauces. The Courts below have held tliat the respondents are ‘ persons aggrieved.’ My Lords, I should be very unwilling unduly to limit the construction to be placed upon these words, because, although they were no doubt inserted to prevent officious inter ference by those who had no intere.st at all in the register being correct and to exclude a mere common informer, it is undoubtedly of public interest that they .should not be unduly limited, inasmuch as it is a public mischief that there should remain û jon the register a mark which ought not to be there, and by which nianjr persons may be affected who nevertheless would not be willing to enter upon the risks and expense of litigation. Whenever it can be shown, as here, that the applicant is in the same trade as tiie person who has registered the trade mark, and

(1) (1894) A.C., 8, at p. 10.

496 HIGH COURT

[1906,

H.C. OF A.whenever tlie trade mark if remaining on the register would or

1908.might limit the legal rights of the apjilicant so tliat by reason of

Attorney- the existence of the entry upon the register he could not lawfully

G eneral for i

xV.S.W.

that which but for the appearance of the mark upon the

Brew ery V.register he could lawfully do, it appears to mo that he has a

E mployes

locus standi to be heard as a ‘ person aggrieved.’ ”

U nion of

N.S.W.In the .same ca,se Lord Watson said (1):—“ In disposing of the

Griffith C.J.appellant’s contention that the respondents were not ‘ aggrieved

persons,’ it appeal's to me that the Courts below proceeded on the right construction of sec. 90 of the Act of 1888, In niy opinion, any trader is, in the sense of the Statute, ‘ aggrieved ’ whenever the registration of a particular trade mark operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must entail a corres ponding disadvantage upon a trader who might po.ssibly have had occasion to use the mark in the course of his business. It is implied, of course, that the per.son aggrieved must manufacture or deal in the same class of goods to which the registered mark applies, and that there shall be a reasonable probability of his finding occa.sion to u.se it. But the fact that the trader deals in the same class of goods and could use it, is prin id facie sufficient evidence of his being aggrieved, which can only be displaced by the person who regi.stered the mark, upon whom the onus lies, showing that there is no reasonable probability that the objector would have used it, although he were free to do so. That reading of the Statute appears to me to be in .substantial conformity with the con.struction adopted i>y the Court of Appeal in In re Riviere's Trade-ma.rk (2), and also in In re Ajtollinaris Ccmipany’s Trade-marks (3).”

In the Court of Appeal Bowen L.J. had .said (4):—“ Persons who are aggrieved are persons who in some way or other are .substan tially interested in having the mark removed from the regi.ster, or persons who would be sub.stantially damaged if tlie mark remained. It is very difficult to frame a nearer definition than

that.

In the Apollinaris Cose (3), it was pointed out, not as a

(1) (1894) A.C., 8, at p, 12.(.3) (1891) 2C h., 186.

(2) -26 Uh. D., 48.

(4) (1898) 2 Ch., .388, at p. 406.

C C.L.R.] OF AUSTRALIA.

497

complete or exhaustive definition, that people would be aggrieved H- C- o*'

if they are in the same trade and dealt in the same article.

my mind, it is equally true that persons would be aggrieved if attokney- they are in the same trade, and might reasonably be expected Gê ekâ fob to deal in the same article, though not prepared to prove at the

^ ̂ ̂ _

Brewery

E mployes U nion of

moment that they had formed a clear determination to do so.

Supposing that this mark ought not to be on the register, it N.S.W.

hampers those who are in the trade and who might wish to con

Griffith C.J.

sider 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 par ticular 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 wlio, to my mind, is sufficiently aggrieved to come within the section.”

These are, in my opinion, authoritative and binding com mentaries upon the meaning of the term “ person aggrieved ” as used in the English Trade Marks A d. But the word “ aggrieved ” was not treated as having a special meaning in that Statute. Whether a person is aggrieved or not by the act of another depends upon the nature of the act complained of and the manner in which it will affect the complainant. The form of procedure to be adopted to obtain any relief to which he may be entitled is quite irrelevant to the question whether he is entitled to any relief. In my opinion, therefore, the plaintiffs in the present case are persons aggrieved by the registration com plained of, just as in Powell’s Case (1), in the sense that it hampers them in carrying on their business with the freedom which they are entitled to enjoy in the absence of any valid legislation restraining it. This is of itself sufficient to give them a lomts standi to appeal to a Court of Justice for redress of the grievance and for prevention of the continuance of the wrongful act which works the grievance ; and, if no other appropriate remedy is provided, the remedy is by action.

(1) (1894) A.C., 8.

498 HIGH COURT

[1908.

H. C. OF A. Witli regard to the second ground of the plaintiffs’ contention

it appears to me tliat they are free by the law of the land to

Attorney- carry on their business and offer their goods for sale without

publishing to the world any statement as to the pei’sons whom

V. they have employed in the production, and that any interference

B kjswkkv

E mployks

with this freedom Yvhich maj’ operate to their prejudice is

U nion ok

N.S.W.

unlawful unless justitied by Statute.

It is said that the registration of the mark in (juestion and its

Griffith C.J.

use by other rival traders would not have any such prejudicial effect, since the plaintiffs themselves might acquire the right to use it. But, since they could only do so by the exclusive employ ment of members of the defendant Union, it is plain that they are interfered with to this extent—that thej" are no longer free to compete with rival traders on the same terms as before. They must either use or abstain from using the mark. The u.ser or non-user are of equal significance. They are, therefore, obliged to inform their customers that they do or do not exclu- sivel}' employ persons who are members of the defendant Union, and this information may be of great importance in the opinion of a large cla.ss of persons to whom they look for custom. It was suggested that such an interference is so trivial that the Court should disregard it, whicli seems a singulai’ argument to use in a case in which the right to the mark has been so long and so strenuously contested. In my opinion, this interference with freedom is substantial, and is, unless authorized by some positive law, unlawful and actionable. To use the w'ords of Holt C.J. in Ashby v. WIdte (1):—“ A damage is not merely pecuniaiy, but an injury imports a damage, when a man is thereby hindered of his right ” ; of which he gives many illustrations. I think, further, that the injury is a particular injury to every person who.se free dom is so interfered with, and that every such person may maintain an action for an injunction to restrain the interference. A.ssuming, howev^er, that the individual plaintiffs are not entitled to maintain the action, I will proceed to con.sider whether the Attorney-General for the State is entitled to main tain it as against the defendant Registrar.

It was not contested in argument that if the Commonwealth

(1) Ray ID . (Ld.), 9S8, at p. 955.

6 C.L.R.] OF AUSTRALIA,

499

liavin^ no autliority at all to deal with the subject matter of H- C. of a .

trade marks, had nevertheless purported to set up a register of

trade marks, the office of the Registrar is such that a quo a t to r sey -

warranto would lie against him.

But it was said that in such a

case the quo warranto could only be brought by the Attorney-

>'■

Brf.weky

General of the Commonwealth.

Quo wavixmto is not the Employes

appropriate remedy in the present case, because the appointment

of a Registrar of Trade Marks is admittedly authorized by the

Griffith C.J.

Constitution, and the objection is not to the unwarranted assump tion of the office, but to the assumption of functions which do not lawfully appertain to it. In Mr. Shortt’s book on Informations

■

it is said that in such a case the appropriate remedy is injunction

or prohibition (page 132). It is clear that in such a case there must be some way of preventing, and not merely of punishing, the illegal assumption of authority. It would appear from Cokes Entries that in ancient times the process of quo warranto was applied in cases of the assumption by a lawful corporation of functions not within the terms of its franchise. There is no modern instance of the use of the writ for this purpose, but it is now settled that, in any case when a public corporation claims to exceed its powers in respect of a subject matter of such a nature that the excess tends to the injury of tlie public, the Attorney-General can maintain an action to restrain the excess: London County Council v. Attorney-General (1); Attorney- General V . Shretvshury (Kingsland) Bridge Co. (2); Attorney- General v. London and North Western Raihcay Co. (3). In my judgment this doctrine applies to any person holding a public office wdio claims to exercise functions which are not authorized by law and are in their nature injurious to the public or to members of the public. As to the contention that the proper Attorney-General to sue is the Attorney-General of the State by whose law the corporation or officer claims to be authorized, I think it is founded on a misconception. The ground of the Attorney-General’s right to interfere is a common injury to the public, and it appears to me that, if a person cluims to be authorized by law to exercise some public function which is in fact not authorized by law and is injurious to the public of a

(1) (1902) A.C., 165. (2) 21 Ch. D., 752.

(3) (1900) 1 Q.B , 78.

500 HIGH COURT

[1908.

H. C. OF A. State, the Attorney-General for tlie State may sue to protect the

rights of the public of the State.

Attorney-

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

W.''"‘ instituted.

V. 1 proceed to consider the much more ditticult ([uestion whether

B kew'erv

E mployes

Part VII. of the Trade Marks Act is within the competency of

U niok ok

N.S.W.

the Parliament.

Griffith C.J.It should not be necessary to point out that the (|uestion for

our determination is neither whether it is exjiedient that an obligation should be laid upon employers to inform their cus tomers that they do or do not employ any but union labour, nor whether it is expedient that the Federal Parliament should have power to lay such an obligation upon them. Tlie sole (piestion is whether under the Constitution the power to lay sucli an obliga tion has been conferred upon tlie Commonwealth or is retained by the States exclusively. This Court has no concern with the expediency either of granting such a power to the Commonwealth or of its exercise. Its duty is limited to an examination of the Constitution and a declaration of its meaning. It would indeed be a lamentable tiling if this Court should allow itself to be guided in the interpretation of the Constitution by its own notions of what it is expedient that the Constitution should con tain or the Parliament should enact. Sec. 51 of the Constitution authorizes the Parliament “ to make laws for the peace, order, and good government of the Commonwealth with respect to (i.) d'rade and commerce with other countries, and among the States; . . . . (xviii.) Copyrights, patents of inventions and designs, and trade marks.” The Act now in ([uestion purports to be an exercise of the last mentioned power.

The plaintids contend that the “ workers’ trade mark ” authorized by Part VII. to lie registered by an as.sociation of workers is not a trade mark at all in the sen.se in which that word is used in the Constitution. The defendants answer that the mark in question is a mark ; that it is to be used in connection with trade, which includes manufacture and production; and that this is sufficient to bring the Act within the power. Now, while there is no doubt that within the ambit of its 'powers the Parliament is supreme, it has no authority

501

6 C.L.R.]

OF AUSTRALIA.

whatever beyond that ambit,

It is necessary, therefore, to con- R- C- of A.

1908

sider the nature of the authority conferred by sec. 51 (xviii.). Whatever that autliority may be, it is for the Parliament, and

A tto rsey -

T> j- n General for

not for the Court, to prescribe tlie mode of its exercise, R ut It

N.S.W.

is for this Court to determine, when its interpo,sition is sought,

Brew ery

Kmploves U nion of

whether an asserted authority is or is not conferred by the Con

stitution. The meaning of the terms used in that instrument must be

N.S.W.

Griffith C.J.

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

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

(II wdiether anj' marks may be so used at a ll;

(2) what marks may be so used ;

(3) wdiether certain marks mu.st be so used;

(4) by w’hom any marks may be so used;

VOL. v r .

502 HIGH COURT

[1908.

H. C. OF A.

( 5 ) b y whom any marks must be so used ;

1908. signification to be given to any particular mark ;

A ttorney-

(7) the conditions of the particular trade upon which the

right or obligation to use the mark shall depend.

V. Such authority would undoubtedly involve a very large power

B rew ery

E mployes

of interference with the conditions of domestic trade, but that is

U nion

N.S.W.

no objection if the authority is given.

Griffith C.J.If, on the other hand, the term “ trade mark” is interpreted

strictly according to the definitions which had been given in English Courts before the year 1900, tlie result would be that, although new kinds of marks and new purposes to which marks of the old kind may be applied may be, and indeed have been, devised since that time, the authority of Parliament is limited to dealing with the particular kind of trade mark then known, and to the use of trade marks for the particular purposes then recognized, with the result that all new developments of the subject matter would fall within the domain of State legislation. Each of these views appears to lead to consecjuences which priind facie could not have been intended. Our duty is to find, if we can, some construction which is in harmony with the general scheme of the Constitution.

I proceed to examine the language of the Constitution with

this object.

The power to legislate with respect to “ trade and commerce ” conferred by sec. 51 (i.) is not unlimited. In the case of United States V. De Witt (1) Chase C.J., delivering the judgment of the Supreme Court, said:—“ That Congress has power to regulate commerce with foreign nations and among the several States, and with the Indian tribes, the Constitution expressljf declares. But this express power to regulate commerce among the States has always been understood as limited by its terms, and as a virtual denial of any power to interfere with the internal trade and business of the separate States ; except, indeed, as a neces sary and proper means for carrying into execution some other power expressly granted or vested.”

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

(1) 9 WaU., 41, at p. 43.

503

6 C.L.R.] The .same doctrine follows from the literal words of sec. 51 (i.)

OF AUSTRALIA,

H. C. OF A.

1908.

of the Australian Constitution, which confers the grant of power,

not in general terms, but only as to “ trade and commerce with

a t t o r n e y G E N E R A I i

F O R

other countries, and among the States.” This is, emphatically,

N.S.W.

an instance in which the rule expressio unius exclusio alterius

B r e w e r y

E m p l o y e s U n i o n o f

must be applied.

It follows that the power does not extend to trade and commerce

N.S.W.

within a State, and consequently that the power to legislate

Griffith C.J.

as to internal trade and commerce is reserved to the State by the operation of sec. 107, to the exclusion of the Commonwealth, and this as fully and effectively as if sec. 51 (i.) had contained negative words prohibiting the exercise of such powers by the Common wealth Parliament, except only, in the words of Chase C.J., “ as a necessary and proper means for carrying into execution some other power expressly granted.” It follows that, in order to warrant such an interference with the trade and commerce of a State as would be authorized by the extended meaning claimed for the words in question, it must be shown that such a power of interference is a necessary and proper means of carrying into execution the power to legislate as to trade marks. If such an invasion of the exclusive powers of the States was intended, it is strange that the power should have been conferred in language which seems at first sight so inadequate for the purpose.

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

I turn now to sub-sec. (xviii.), as to which the first observation that occurs is that trade marks are grouped with copyrights and patents of inventions and designs, the whole forming a class of property of a special kind, in the nature of monopoly, and as to which before 1900 an International Convention had been made between Great Britian and other countries, to which Convention three of the Australian Colonies had become parties. So far as

608 HIGH COURT

[1908.

H. C. OF A. one particular concern only. Then it is urged (c) that the mark

must identify a trading business of .some sort carried on by the A ttorney- owner of the mark, and be inseparable from that business. This

is met by the case of “ Sheffield Marks.” The Britisli Act of ̂ 1883 (sec. 81) provided for a new register of trade vmrJcs at E mployes Sheffield. Every mark registered in the Sheffield register was to

be registered in the general register of “trade marks.” Every

HigirinB J.apprentice who had served for seven years was entitled to get a

mark and to be made a freeman of the company of cutlers. The mark might be devised by will (subject to an alienable life eshite in the widow) and in default of a will was to pass as personalty (21 Jac. 1 c. 131). If granted to a non-freeman of the Cutlers’ Company the “trade mark” was clearly assignable in gross: Bury V. Bedford (1). It is clear, then, that the words “trade mark” were applied before 1900 to marks belonging to journey men workers, to marks which did not identify any separate trading business, and which were assignable in gross. In short, the only attributes that I can find to be common to these words in all their varying uses, the only essential differentia from other marks is this—the marks must be used to identify tlie com modities with some person or body of persons and for the purjiose of attracting trade ; and these attributes are all found in tliis “workers’ trade mark.”

A consideration of the history of the words in the United States confirms this view. There, the Courts of Chancery were subject to the same limitations as in England; and they neces sarily confined their relief to such trade marks as would be enforced in England. About 1889, in California, the cigar- maker.s’ union sought to check sweating and its resulting evils by adopting a union label, and putting it on cigars made by unionists under whole.some conditions. The example of Cali fornia was followed in several other States. But some manufacturers, who did not use union labour, sought to get the advantage of the label by putting it, falsely, on their goods. The unions took proceedings for infringement of their labels; but in most of the Courts appealed to it was held (and, as I think, rightly held) that the union label was not enforceable, as it did

(1) 33 L.J. Ch., 465.

6 C.L.R.] OF AUSTRALIA.

609

not identify any particular maker, or vendor, or any particular R- C- of A.

business.

Then the legislatures of the States took the matter in

hand (for there is no power in Congress, such as there is in our

attorney-

Federal Parliament, to legislate as to trade marks, except as to

B rewery V.

those used in inter-state or foreign commerce); and Acts were

passed by most of the States prescribing registration of the union

E mployes U nion of

label as a trade mark, calling it a trade mark, and providing for

N.S.W.

its enforcement as a trade mark. All this took place before 1900;

Hiffgins J .

so that, when our Constitution was passed, union labels, of the same nature as tliese “ workers’ trade marks,” were actually called in jmblic Statutes “trade marks.” I suppose it will not be contended that we are not to take into consideration the English language as used in America—the country where most of those who use the English language live. Probably, as our Constitution is contained in a British Act, if the British meaning were in conflict with the American meaning, that meaning should be adopted which the language would bear as coming from a British legislature in prefei-ence to the meaning which it would bear as coming from an American legislature. But this is not a case of conflict; and we are entitled, I think, to take into account the use of the English language wherever that language is heard—even if the sound have the timbre of a gramophone. INIoreover, the Privy Council has recognized as legitfmate an argument as to the meaning (in the Canadian Constitution) of the word “licences,” based on the use of the word in the United States as well as on the use in Britain and Canada : Attorney- General for Quebec v. Queen Insurance Go. (1); and it is not a violent assumption to suppose that the framers of our Constitution and the British Parliament know something of the long controversy as to the union label in the Courts and in the legislatures of the United States, and meant to give the Aus tralian Parliament full power, under the head of “trade marks,” to deal with the whole subject as it saw fit—power as full as each State of the Union had, as each Australian Colony had, as the British Parliament had, and as the British Parliament has since to a great extent exercised (Act of 1905, sec. 62).

On this part of the subject I have only to add that any defini-

(1) 3 App. Cas., 1090, at p. 1099.

610 HIGH COURT

[1908.

H. C. OF A. tions ill tlie British Acts of 18G2, 1875,1883, anti 1887 are merely

definitions for the purposes of the A cts; and the International A ttorney- Convention of 1883 is similarly limited. These definitions and

Convention do not settle the moaning in onr language of

Brewkry

“ trade marks.”

E mployes

I pass now to the main question—what are the limits of the

U nion of

power “ to make laws with respect to trade marks ” ?

Power to

N.S.W.

Iligjrins J.“ make laws with respect to trade marks ” is not the same tiling

as power to enforce trade marks, or even po\ver to regulate trade marks. Under the power to make laws with respect to “ marri age” I should say that the Parliament could prescribe what unions are to be regarded as marriages. Under the power to make laws witli respect to “ parental rights,” I should say that it could define what those rights are to be. Under the power to make laws with respect to “ promissory notes,” I should say that it could inci’ease the class of documents which in 1900 were known as promissory notes. Under the power to make laws with respect to trade marks, I cannot see why Parliament cannot, at the least, bring into the class of trade marks pi’inted trade names and the “ get up ” of goods—riglits in tlie nature of trade marks, things which were treated on the same principles as trade marks, but not hitherto called “ marks ” in current language.

What is committed to the Federal Parliament is not the class of things called trade marks, but the whole subject of trade marks. Xo doubt, we are to ascertain the meaning of “ trade marks ” as in 1900. But having ascertained that meaning, we have then to find the extent of the power to deal witli the sub ject of trade marks—or, what is the same thing, to find the meaning of the “ power to make law's with respect to trade marks.” The usage in 1900 gives us the central type; it does not give us the circumference of the pow'er. To find the circum ference of the power, w'e take as a centre the thing named— trade marks—with the meaning as in 1900 ; but it is a mistake to treat the centre as the radius. As an instance of my view', if the “ Hammer Mark ” did not come w'ithin the meaning of “ trade mark ” in 1900, I think that the Federal Parliament would have pow'er to deal w'ith it as a trade mark, and to say that it shall be called a trade mark. Under the Act 59 Geo. HI.

6 C.L.R.] OF AUSTRALIA.

611

c. 7, the “ Hammer Mark ” was not to be put on cutlery unless H. C. of a .

wrought or forged.

There is no doubt that such a mark aided

the trade of such cutlers as wrought or forged.

In my opinion, attorney-

the Federal Parliament could prohibit, by a penalty, the false use

of the mark, and could give to these cutlers a proprietary right

Brew ery

E mployes U r ION OF

to the mark, enforceable by injunction.

As already stated, the

text-writers on the subject of trade marks always find it necesN.S.W.

sary to deal with rights resembling trade mark rights as well as

Higgins J.

with trade marks proper.

There is no doubt as to their view of

the ambit of the subject of trade marks. The name of the sub ject is taken from an example possessing pre-eminently the characteristics of the things comprised within the subject. As Dr. Whewell said of classification, “ the class is determined, not by a boundary line without, but by a central point within.”

The plaintiffs in their argument treat the power of the Federal Parliament to make laws with respect to trade marks as if it were a power to make laws with respect to cattle. In such a case, if a beast does not come under the term “ cattle,” as under stood in 1900, there is no power, it is said, to make any laws about it. But I am clearly of opinion that this narrow doctrine pro pounded by the plaintiffs is, in construing a constitutional power to make laws, unwarrantable and absolutely wrong. In the first place, there is a vital distinction arising from the nature of the subject. Cattle are concrete, physical objects, and the boundaries of the class are fixed by external nature ; whereas “ trade marks” are artificial products of society, and dependent upon the will of society. The class “ cattle ” cannot well be extended by man ; the class “ trade marks ” can be extended. Power to make laws as to any class of rights involves a power to alter those rights, to define those rights, to limit those rights, to extend those rights, and to extend the class of those who may enjoy those I'ights. In the same clause of sec. 5 1 , power is given to make laws with respect to “ copyi’ights ” (rights of multiplying copies of books, &c.); with respect to “ patents ” (rights to make or sell inven tions) ; and with respect to “ trade marks ” (rights to use marks for the purposes of trade). The power to make laws “ with respect to ” these rights, involves a power to declare what shall be the subject of such rights. In the second place, although we

612 HIGH COURT

[1908.

H. c. OF A. a r e to interpi’et the words of the Constitution on tlie same prin

ciples of interpretation as we applj ̂ to any ordinary law, these

A ttok.nev- very principles of interpretation compel us to take into account G enekai, fou nature and scope of the Act that we are interpreting—

S.W.

i '.

B rew ery to remember that it is a Const if at ion, a mechanism under

E mployes

uiiich laws are to he made, and not a mere Act which

U nion of

N.S.W.declares what the law is to be. Story ])ointed this out Higgins J.well {Commentaries, 2nd ed., sec. 455):—“ While, then, we

may well resort to the meaning of single words to assi.st our inquiries, we should never forget, that it is an instrument of government that we are to construe.” In the United States Marshall C.J. in his famous judgment in M ’Cidloch v. Marijland (1) recognized the same truth :—“ In considering this question, then, we must never forget, that it is a Constitution we are exjiounding.” The case of Re Klein (2) is a good instance of the application of this principle. At the making of the United States Constitution, the word “ bankruptcy ” had the original Engli.sh meaning of an adverse proceeding by a creditor against a fraudulent debtor. This was the meaning from the beginning (34 & 35 Hen. VIII. c. 4), and at the time of the American Consti tution. Yet it was held that Congress, under its power “ to establish uniform laws on the subject of bankruptcies throughout the United States,” had power to make a law for the voluntary sequestration of their estates by debtors—power to allow a voluntary bankruptcy at the instance and for the benefit of the debtor. it was also held that the Act was valid, althou<£h the word “ bankruptcy ” was properly applicable only to traders: Kunzler v. Kohaus (3); and see per Marshall C.J. in Sturrjes v. Crowninshield (4). In short. Congress had tlie same power to widen the scope of bankruptcy law as tlie Englisli Parliament pos sessed, and as it in fact exerci.sed after the American revolution. In Canada, the Coui't of Appeal of Ontario followed su it: R. v. Fraw- ley (5). Under the British North America Act 1867 the provincial legislatures had power to make laws with respect to “ the imjxisi- tion of punishment by fine penalty or imprisonment for enforcing any law of the province made in relation to any matter coming

()) + Wheat., .3)6, at p. 407.(4) 4 W h e a t., 122, a t p. 194.

(2) 1 How., 277 (n.)(5) 7 Out. App. R., 246, at p. 265.

(3) 5 Hill N.Y., 317.

6 C.L.R.] OF AUSTRALIA.

613

within any of the classes of subjects coming within the section ”

C- o f A.

(sec. 92).

The question arose, was a sentence of imprisonment

tvith hard labour valid (in a case of selling liquors without a

A t t o r n e y -

licence).

Spragge C.J. pointed out that, if a mere Act of Parlia

ment prescribed “ imj^risonment,” hard labour could not be

B r e w e r y

E m p l o y e s U n i o n o f

added; but that they had to deal with a constitutional power.

“ Imprisonment was one of the subjects with respect to which

N.S.W.

power of legislation had been conferred.”

The learned Judge

H ig g in s J .

quotes Vattel {qu. Story) and Marshall C.J. in M’Culloch v. Maryland (1), in support of his decision that the sentence was valid. The Judicial Committee of the Privy Council also held that the sentence with hard labour was valid: Hodge v. The Queen (2). The same principle was recognized obiter in Re Lake Winnipeg Transportation Lumber and Trading Co. (3), where an argument was overruled that the power of the Dominion Parliament to legislate as to “ insolvencies ” was contined to insolvencies as recognized at the l^aasing of the British North America Act 1867. So, too, I pre sume, if a Parliament had powers conferred on it to make laws with respect to “ police,” that power would not be confined to making laws with respect to police as understood and defined at the creation of the power. There might be two kinds of police provided (as in France) with different functions and status. So, too, if the Parliament were granted power to make laws with respect to wills, I take it that a law could be made defining what documents are to be treated as wills, and would not be cramped for ever within the limits of the present meaning of the word— documents which are signed by the testator at the end and attested by the signatures of two witnesses in the presence of the testator.

It is not necessary for the purpose of the decision of this case to decide precisely what is the outer limit, the ring fence, of this power. But at present I am strongly inclined to the view that the grant of such a power, made by the British Parliament to the Federal Parliament, confers on the Federal Parliament as wide a power, with regard to Australia, as the British Parliament could

(1) 4 Wheat., 316, at p. 407.

(2) 9 App. Cas., 117, at p. 133.

(3) 7 Manitoba R., 255.

VOL. VI.

614 HIGH COURT

[1908.

H. C. OF A. itself have exercised, provided that the laws made would come

fairly under the description of “trade mark laws,” in ordinary

A ttorney- parlance, if made by the British Parliament. It will also

be found, I believe, ultimately, that the phrase under

B r e w e r ywhich powers are granted to the Federal Parliament gives

E m p i ,o y e s

to that Parliament even wider scope for its action than is

U.NION OF

N.S.W. given to the United States Congress by the corresponding

Ili^'’gLns J.grants of power in the United States Constitution. “Power

to lay and collect taxes” is not as sweeping as our “ power to make laws with respect to taxation,” Power “to regulate commerce” may not be so wide as our power “to make laws witli respect to trade and commerce.” Power to “fix the standard of weights and measures” is more limited than our power “to make laws . . . with respect to weights and measures.” Moreover, the fact that in one case—the pow'er with regard to j îracies &c.—there is express power in the United State.s Constitution to define piracies &c. as well as punish them, may tend to show that the power of definition was excluded in the case of other powmrs. Yet I know of no instance in which the power to increase the area of a subject by clefinition—genuine, not colourable—has been denied ; and, as I have ah’eady shown, the power has been actually recognized.

It is urged, of course, against this broader view of the powers, that, if it is right, the powers of the Federal Parliament would be practically unlimited—that the Federal Parliament would only have to call a spade a “ trade mark,” and then legislate as to spades. This is a mistake. I gave an instance during the argument. Suppose that the Federal Parliament desire to arrogate to itself the control of wills—a subject which is clearly not entrusted to the Federal Parliament. Suppose that it define “trade mark” as including a will, and enact that no will shall be valid unle.ss registered as a trade mark. In such a case we should have no hesitation in treating such a law as invalid. It would be a .sham. I t would not he a law with respect to trade marks at all. I t would he a law as to wills, under cover of a law as to trade marks. In such a case the Courts would have no difficulty in pronouncing that the Parliament had transgimsed the boundary, had not applied itself to the exercise of its power

6 C.L.R.] OF AUSTRALIA.

615

at all.

This is what the Privy Council decided in Attorney- H. C. o f A.

General for Quebec v. Queen Insurance Co. (1). A provincial

legislature in Canada had power to raise revenue by business

a t t o r n e y -

licences, but no power to impose stamp taxes. It imposed a

G e n e r a l

f o r

S.W.

stamp tax, and called it a licence tax, and the Privy Council,

B r k w e r y

E m p l o y e s U n i o n o f

looking at the substance of the Act, and not accepting as con

clusive the name which the legislature chose to give it, said that

N.S.W.

the Act was void. It was not an Act “in relation to (insurance

H ig g in s J .

business) licences” at all. In some cases the task of the Court would be much more difficult, but it would have to be performed' with such light as the circumstances in each case afford. We have some guidance on the matter from English cases, in which the limited powers of municipalities have come up for discussion. I apprehend that it is our duty to construe the powers of the Federal Parliament as liberally at least as the powers of munici palities to make by-laws. If there is power for a municipality to make by-laws as to nuisances, the municipality is not confined to the nuisances recognized by the law at the date of the grant of the power. In the case of White v. Morley (2) the municipal council had power to make by-laws for the prevention and .suppression of nuisances not already punishable by virtue of any Act in force throughout the borough. A by-law was passed to the effect that any person who used the street for betting should be liable to a penalty. Such user was not in itself a common law nuisance, apart from the by-law; but the Court held the by-law to be valid under the power to prevent and supjDress nuisances. “ Where a thing is of such a character as that it can be a nuisance, it is to rest with the local authority to say whether it shall be considered to be a nuisance in the particular locality for which they have power to make by-laws. The Court can say whether it is reasonably possible for the prohibited act or thing to be a nuisance.” In Kruse v. Johnson (3) also. Lord Russell of Killowen C.J. said (as to a by-law against playing or singing in the streets) that it was not necessary that the by-law should be confined to cases where the playing or'singing amounted to a

(1) .3 App. Cas., 1090.

(2) (1899)2 Q.B.,34, a tp . 39.

(3) (1898) 2 Q.B., 91.

«16 HIGH COURT

[1908.

H.C. OF A. nuisance, or caused annoyance in fact. In those cases the power

1908.

merely to prevent or suppress nuisances; yet, if the

A t t o r n e y - plaintiffs in this case are right, the act should first be proved to

come within the word “ nuisance,” as defined by the common law,

N.S.W.

V.	before the by-law could be applied to it. But the Court declined

B r e w e r y

E m p l o y e s

to adopt any such narrow view of the powers conferred.

U n i o n o f

N.S.W.I am, therefore, of opinion that, even if the characteristics of

H ig g in s J .the “workers’ trade mark” did not bring it strictly witliin the

class “trade marks” as understood in 1900, there is nothing in Part YII. of the Act which transgresses the jiower conferred on the Federal Parliament “to make laws with respect to trade marks.” This opinion may not be cjuite necessary for the purpose of my judgment, inasmuch as I hold the view that the workers' trade mark does contain all the essential characteristics of a trade mark; but it is mj' duty not to let the narrow view of the nature of the federal powers pass without protest and by silence into unquestioned law.

I am also of opinion that there is nothing whatever in the law of New South Wales with regard to trade unions which render them incapable of owning or registering or using a trade mark. They can carry on a newspaper busine.ss : Linaker v. Pilcher (1); they can rai.se funds for parliamentary representation: Steele v. South Wales Miners Federation (2); and the true view seems to be that, if an association has the objects referred to in sec. 31 of the Trade Union Act 1881 (New South Wales) it has (subject to its own rules) unlimited freedom of action for the benefit of its members. The Trades Union Acts are Acts remov ing, not ci’eating, disabilities. The defendant union is not even an artificial person created by the Federal Parliament for the purpose of holding this mark. It existed before the federal Act, and can carry on any business allowed by its rules, and hold any trade mark, if not prohibited by the law.

For the.se reasons I am of opinion that the second question

should be answered in favour of the defendants.

Lamb, for the plaintiffs, asked for an order dismissing the action, as the decision of the point of law substantially disposed

(1) 84 L.T., 421.

(2) (1907) 1 K.B., 361.

6 C.L.R.] OF AUSTRALIA.

617

of the whole action : Order XIV., rule 27. The allegations in the

C. o f A.

statement of claim cannot be disputed, and there is no nece.ssity

for the consent of the defendants. A t t o r n k y -

[G r if f it h C.J. This Court has before decided that there is

no CIe ^ e r a l̂ f o r

N.S.W.

need for consent.]

B r e w e r y

E m p l o y e s U n i o n o f

Costs should be given against both defendants.

The Registrar

really represents the Commonwealth, so that it is a question

N.S.W.

between State and Commonwealth, and the plaintiffs were com

H ig g in s J .

pelled to come to Court by the action of the other defendants in

seeking to register their mark.

Bavin, for the Registrar of Trade Marks.

Holman, for the Brewery Employes Union. The Union were justified in applying for registration under the law as it then

stood.

There should be no order for costs against them.

Lamb referred to Peterswald v. Bartley (1).

Declaration (1) that the defendant Registrar has no authority to keep a register of ivorlcers’ trade marks; (2) that the defendant union’s mark is not a trade mark within the meaning of the Con stitution. Order that the defendant Registrar cancel the registration of defendant union’s mark. Order re straining defendant Registrar from continuing to keep a register of zuorkers’ trade marks. Defendant Registrar to pay the p la in tifs’ costs.

Solicitors, for the plaintiffs, Derkam c& Derham.

Solicitor, for the defendant Registrar, Crown Solicitor for the

Commonwealth.

Solicitors, for the other defendants. Brown & Beeby.

C. A. W.

(1) 1 C.L.R,,497.

[1908] HCA 94

8 August 1908