Bayer Pharma Pty Limited v Farbenfabriken Bayer Aktiengesellschaft

[1965] HCA 71

HIGH COURT OF AUSTRALIA

Kitto J. Barwick C.J., Taylor, Menzies, Windeyer and Owen JJ.

BAYER PHARMA PTY. LTD. V. FARBENFABRIKEN BAYER AKTIENGESELLSCHAFT

(1965) 120 CLR 285

10 June 1960

Trade Marks—Defence and War

Trade Marks—Application for registration—Procedure—Challenge to validity of notice of opposition—Amendment of application—Order deeming name distinctive mark—Powers of Registrar of Trade Marks—Powers of Court on appeal from Registrar—Trade Marks Act 1905-1948 (Cth).

Decisions

1960, May 11.
KITTO J. delivered the following judgment:-
I have before me two appeals from decisions of the Deputy Registrar of Trade Marks. Each decision dismissed an opposition by the appellant to an application by the respondent for the registration of a trade mark. The applications were lodged on 9th November 1949 under the provisions of the trade marks legislation then in force, namely the Trade Marks Act 1905-1948 (Cth), and they sought registration of a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter "Y" is common to both, the whole being enclosed within a circle. One application, numbered 100642, was for registration in class 2, in respect of chemical substances used for agricultural, horticultural and veterinary purposes; and the other, numbered 100643, was in class 3, in respect of chemical substances prepared for use in medicine and pharmacy. (at p284)

2. By each application, as originally framed, the respondent claimed to be the proprietor of the trade mark, and sought an order of the Registrar, Law Officer or the Court (under s. 16 (1) (e) of the Act) that "the mark" be deemed a distinctive mark. This was in accordance with form B3, as required by reg. 41 of the Trade Marks Regulations 1913. However, within a few days the request for the order as to distinctiveness was withdrawn, the applicant lodging in each case an application in accordance with form B to the regulations, differing from the original application in two respects: it omitted the statement that an order under s. 16 (1) (e) was desired, and it specifically stated: "We do not claim the registration of this Trade Mark under the special provisions of Section 16 (1) (e) of the Trade Marks Act 1905-1948 in regard to names, signatures, or words." This was done at the suggestion of the supervising examiner, who expressed the view that as the mark was not "a surname per se" the provision for an order did not appear to be applicable. The new forms were accompanied by a letter from the applicant's agent requesting that they be substituted for the original forms. They were treated by the office as effecting amendments of the original applications and were substituted for them accordingly. (at p288)

3. The applications were advertised in the Official Journal on 13th December 1951, and on 12th June 1952 notices of opposition dated the previous day were lodged in the Trade Marks Office by a patent agent on behalf and in the name of the present appellant. The applications came on to be heard before the Deputy Registrar after a good deal of time had gone by, and it was not until 5th September 1958 that the decision was given. The decision was that the oppositions should be dismissed, and that the applications might proceed to registration when the applicant should have applied to have an undertaking endorsed that it would place its name so as to appear in close proximity to the mark. (at p288)

4. During the pendency of the applications in the Trade Marks Office, namely on 1st August 1958, the Trade Marks Act 1955 (Cth) commenced. This Act repealed the former legislation (s. 4), but it provides (s. 5 (4)) that subject to an immaterial exception the repealed Acts apply, notwithstanding their repeal, to and in relation to applications for the registration of trade marks made before the commencement of this Act, and to and in relation to the registration of trade marks on those applications. It was upon this provision that the Deputy Registrar depended for authority to decide the applications after the commencement of the new Act. (at p288)

5. On 25th September 1958 the opponent instituted an appeal to this Court against each of the decisions, and the appeals are the proceedings now before me. The only possible ground for holding that the Court has jurisdiction to entertain the appeals is that s. 5 (4) preserves the operation, in respect of applications pending at the commencement of the 1955 Act, of s. 45 of the 1905 Act. Section 43 of the 1905 Act provided that any party aggrieved by the decision of the Registrar on an opposed application for registration might appeal to the Law Officer, and s. 44 provided for an appeal from the Law Officer to the Court. Section 45 enabled an appeal to be taken direct from the Registrar to the Court. In one of the present appeals I stated, at the request of the parties, a case for the opinion of the Full Court on the question whether s. 5 of the Trade Marks Act 1955 validly operates to make s. 45 of the Act of 1905, notwithstanding its repeal, apply in relation to the respondent's application for registration. This question the Full Court answered "Yes". It rejected a submission, which the respondent had advanced, that ss. 44 and 45 were an attempt to confer upon the Court functions lying outside the judicial power of the Commonwealth, and that the purported continuation of those provisions by s. 5 (4) was for that reason void: Farbenfabriken Bayer Aktiengesellschaft v. Bayer Pharma Pty. Ltd. (1959) 101 CLR 652 The submission has been formally repeated before me, but of course the Full Court's decision disposes of it so far as I am concerned. The respondent now adds a new submission on s. 5 of the 1955 Act. It is, in effect, that so much of sub-s. (4) of that section as continues the operation of the 1905 Act in relation to an application for registration made before the commencement of the 1955 Act applies only to those provisions of the 1905 Act which govern the passage of the application through the office, and does not extend to s. 45. The contrary was assumed in the question which the Full Court answered; it was assumed throughout the argument before that Court; and it was assumed by all the members of the Court in giving judgment. But even unfortified by these considerations I should have no hesitation in holding that ss. 44 and 45 were provisions of the 1905 Act applying in relation to applications for the registration of trade marks, and that on the true construction of s. 5 (4) of the 1955 Act their operation is continued, notwithstanding their repeal, so as to empower the Court to entertain these appeals. (at p289)

6. I must also notice another submission of the respondent. The notices of opposition, as I have mentioned, were lodged on 12th June 1952. They were in the name of the appellant, with the addition of the words "by its agent" followed by the signature of Mr Arthur S. Cave, a patent and trade mark attorney. There was lodged later in connexion with each application a document headed "Appointment of Agent and of Address for Service", whereby the appellant purported to appoint Mr Cave its agent in its name to oppose the applications and for that purpose to sign on its behalf all necessary documents. The execution of these documents by the appellant is not disputed, but attention is drawn to their date, which is 20th June 1952. There is no evidence that the notices of opposition were authorized by the appellant before being lodged. Yet the appellant must rely upon them for the validity of its oppositions and of the present appeals, because the day after their lodgment, 13th June 1952, was the latest possible day for the valid lodging of notices of opposition, since the applications had been advertised on 13th December 1951: R. v. Registrar of Trade Marks; Ex parte J. S. Staedtler (1936) 55 CLR 271 Apart from questions arising out of the war with Germany, there would be no difficulty. The appellant's subsequent conduct, and in particular its appearance by counsel before the Deputy Registrar to support the oppositions, would clearly amount to or imply a ratification. But counsel for the respondent contended that the lodging of the notices of opposition was illegal and therefore could not be effectually ratified; and he cited Boston Deep Sea Fishing &Ice Co. Ltd. v. Farnham (Inspector of Taxes) (1957) 1 WLR 1051, at p 1058 , and the passage there quoted from Lord Porter's speech in the Sovfracht Case (Sovfracht (V/O) v. Van Udens Scheepvaart en Agentur Maatschappij (N. V. Gebr.) (1943) AC 203, at p 254 He seemed to concede that it would not be illegal for an enemy alien to lodge a notice of opposition, provided that he could manage to do so without the intervention of an agent - and indeed it might be difficult to contend that the law forbids all dealings between enemy aliens and officers of the Executive Government - but he argued that by reason of the law as to trading with the enemy the appellant could not lawfully appoint Mr Cave as its agent, and that the illegality of any purported appointment must have so tainted his lodging of the notices of opposition as to make the lodging illegal and therefore incapable of effectual ratification. I am not sure that I understand the argument, but it seems to me to lose sight of the fact that if Mr Cave's appointment as agent was void for illegality the only consequence upon the notices of opposition was that their lodgment was unauthorized. Why their lodgment should be on that account any less susceptible of ratification than any other act done in the name of a purported principal without antecedent authority, I do not see. The argument seemed to be based upon a notion that, in the case of an act done under a purported but ineffectual grant of authority, a ratification is a confirmation by the principal of the purported grant of authority, rather than an adoption by him of the unauthorized act. But the argument must be rejected for another reason also. It was based on an assumption that Australia was still at war with Germany on 12th June 1952. Investigation in the course of the hearing established, and the respondent's counsel in the end conceded, that Australia ceased to be at war with Germany on 9th July 1951. Confusion seems to have arisen because of a proclamation made by the Governor-General on 11th September 1952, reciting that by s. 3 of the Trading with the Enemy Act 1939-1947 (Cth) it was enacted that in that Act, unless the contrary intention should appear, "the present state of war" should mean the period from 9.30 p.m. on 3rd September 1939, according to standard time in the Australian Capital Territory, until the issue of a proclamation that war no longer existed, and declaring for the purposes of that Act that war no longer existed. But this cannot be relevant. The Trading with the Enemy Act made acts and transactions of certain kinds illegal, but the respondent does not and could not rely upon any of the descriptions provided by the Act except "any act or transaction which at common law constitutes trading with the enemy". This, however, can have no application here, for nothing done after 9th July 1951 could constitute trading with the enemy at common law, so far as concerns the war with Germany which began on 3rd September 1939. (at p291)

7. I turn to the appellant's main contentions. They are, first, that the mark to which the respondent's two applications relate is not a registrable trade mark, because it does not contain or consist of any of the essential particulars described in pars. (a) to (e) of s. 16 (1) of the Trade Marks Act 1905-1958 (Cth); and, secondly, that the mark is disqualified by s. 114 from registration because it would be deemed disentitled to protection in a court of justice by reason of its being likely to deceive. (at p291)

8. First as to s. 16 (1). This sub-section contains five paragraphs specifying particulars one at least of which a trade mark must contain or consist of in order to be registrable. To fall within par. (a), a trade mark must contain or consist of the name of a company, individual, or firm represented in a special or particular manner. A word which is a part but not the whole of the name of a company, individual or firm, (even though, in the case of an individual, it be his surname), is not within this paragraph: In re Benz et Cie's Trade Mark Application (1913) 30 RPC 177 ; Teofani &Co. Ltd. v. Teofani; In re Teofani &Co.'s Trade Mark (1913) 2 Ch 545, at p 567; (1913) 30 RPC 446, at p 460 ; Mangrovite Belting Ltd. v. J. C. Ludowici &Son Ltd. (1938) 61 CLR 149, at p 154 The Privy Council has suggested a possible qualification to this proposition: Staines v. La Rosa (1953) 70 RPC 62, at p 67 , but even if the qualification should be accepted it has no application in this case. "Bayer" is not, standing by itself, the name of any company, individual or firm. The paragraph therefore affords the respondent here no assistance. (at p292)

9. To fall within par. (b) a trade mark must contain or consist of the signature of the applicant for registration or some predecessor in his business. The mark in question is not of that description. (at p292)

10. To fall within par. (c) a trade mark must contain or consist of an invented word or invented words. That description does not apply in this case, for the evidence shows that "Bayer", as a word for use in connexion with the goods of the kinds in question, was not invented, but was taken from the name of Dr Friedrich Bayer who was the founder of the firm which first used it. (at p292)

11. To fall within par. (d) a trade mark must contain or consist of a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or surname. The only word in the subject mark is a surname. The evidence proves that it was the surname of Dr Friedrich Bayer, and that it is the surname of a descendant of his, Dr Richard Bayer. One may be permitted to know as a matter of general history that it was the surname of a noted astronomer of the sixteenth and seventeenth centuries. A faint endeavour was made to suggest that par. (d) means by a surname a surname in use as such in Australia. I do not accept the suggestion, but in any case the Sydney telephone directory issued in November 1949, which is in evidence, contains entries in respect of three individuals possessing the surname "Bayer", and of one company (apart from the respondent) having a name which includes "Bayer" together with other words which are familiar as surnames. Paragraph (d) therefore cannot apply. (at p292)

12. To fall within par. (e), a trade mark must contain or consist of some "other distinctive mark"; and the paragraph adds that a name, signature, or word or words, other than such as fall within the descriptions in pars. (a), (b), (c) and (d), shall not be deemed a distinctive mark except by order of the Registrar, Law Officer or Court. It is upon this paragraph that the respondent relies. In considering how the case stands in relation to it, the provisions of sub-ss. (2) and (3) of s. 16 (1) must be borne in mind. Sub-section (2) provides that for the purposes of the section "distinctive" means adapted to distinguish the goods of the proprietor of the trade mark from those of other persons; and sub-s. (3) provides that in determining whether a trade mark is so adapted, the Registrar, Law Officer or Court may, in the case of a trade mark in actual use (which is the present case), take into consideration the extent to which such user has rendered such trade mark in fact distinctive for the goods with respect to which it is registered or proposed to be registered. (at p293)

13. If, then, the desired registrations are to be granted, it must be on the ground that the cross device, possesses a capacity, either inherent or acquired, to distinguish goods as being in a relevant sense the respondent's. First, then, is the cross device inherently adapted to produce this effect? I do not think that it is. In my opinion it merely provides a fancy method of presenting the name "Bayer", and it has no greater aptitude than has the name itself for distinguishing the proprietor's goods from those of other people who happen to be known as "Bayer". It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which (to use a phrase of Lloyd Jacob J. (1955) 72 RPC, at p 195 ) "would strike the eye and fix in the recollection". The dominant impression which the device gives is not adequately described as that of a cross formed by printing; it is an impression of the name "Bayer", arranged indeed in a particular way so that it appears twice yet with compactness and definition, but predominantly the name "Bayer". The effect produced by an application of the device to particular goods is essentially that of a branding of the goods with that name, albeit in a quaint manner; for, to some extent by the delimiting effect of the circle, and much more by the arrangement of the two words so that they intersect and share the one middle letter, attention is focussed on the identity of the words, and "Bayer" is impressed sharply on the mind. Throughout this case, the device has been referred to, by witnesses and counsel alike, as a "Bayer" Cross. That is exactly what it is: not in the sense that it is a cross device belonging to a person or corporation having "Bayer" as part of its name, but in the sense that it is in essence the word "Bayer", presented in the form of a cross. The case seems to me to be as clear as the Benz Case (1913) 30 RPC 177 and the Ludowici Case (1938) 61 CLR 149 (at p293)

14. Then, had the cross, by the time the applications were made, acquired by actual use the distinctiveness which the respondent claims for it? I shall examine in some detail the evidence bearing upon this question, but I pause here to point out that if I am right in thinking that the device is nothing but the name curiously presented, the respondent encounters a difficulty in the fact that it withdrew so much of its applications as sought orders under s. 16 (1) (e), and that it expressly stated that registration was not claimed under the provision made for such orders. The appellant goes so far as to contend that no order of distinctiveness under that provision could be made in this case, because s. 32 (2) required that an application for registration of a trade mark should be in the form prescribed, reg. 41 of the Trade Mark Regulations 1913 prescribed form B3 for an application for registration of a trade mark under s. 16 (1) (e), and in this case, as a result of the amendments made at the supervising examiner's suggestion, there is no application in accordance with form B3. But however this may be, the result which has ensued from the amendment of the applications is that no application for an order under s. 16 (1) (e) has been decided by the Deputy Registrar. I think that the words of exception in s. 16 (1) (e) must be read with ss. 43, 44 and 45, and that so read they do not mean that the Law Officer and the Court are empowered to entertain applications for orders under par. (e) as tribunals of first instance. Each is empowered to make the order if the Registrar has refused it, and the Court is empowered to do so if the Law Officer has refused it on appeal from the Registrar; but in my opinion an application which has not come before the Registrar cannot be received by the Law Officer or the Court. (at p294)

15. And even if I thought that I had the power, I should not be prepared to make an order under s. 16 (1) (e) in respect of the name "Bayer" on the evidence before me. I could not do it unless I thought that it would be right to grant registration of a trade mark consisting of the name "Bayer" by itself, for to ask for an order under s. 16 (1) (e) in respect of the device is to concede for the purposes of the request that the distinctiveness which makes the device registrable resides in the name "Bayer". The reasons which I shall give for concluding that the device as a whole is not distinctive of goods as being in a relevant sense the respondent's goods apply a fortiori in respect of the word "Bayer" alone. (at p294)

16. The respondent's case on the footing that the trade mark applied for is to be considered as a device materially different from the name "Bayer", is that by the date of the applications, November 1949, the device, even if prima facie it lacked distinctiveness, had come to have a special and exclusive significance in this country in relation to goods of the relevant classes, namely that the goods were distributed by the respondent. The appellant not only denies this but contends in addition that upon the evidence of actual user and reputation it is at least a matter of substantial doubt whether the use of the device by the respondent in 1949 would not have been so likely to deceive as to be disentitled to judicial protection. The applications for registration must be refused if the respondent fails to establish the distinctiveness of the mark, and equally if it fails to establish that there is no such likelihood of deception as is mentioned in s. 114: Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592, at p 608 (at p295)

17. The material placed before the Deputy Registrar was made by consent evidence before me. It consisted of a mass of statutory declarations, statements and affidavits, together with documents and articles referred to therein. But when, at an early stage of the case, which of course is a proceeding in the original and not the appellate jurisdiction of the Court, I intimated that I considered it impossible satisfactorily to decide the disputed questions of fact on documentary evidence alone, the parties proceeded to call as witnesses many of the persons who had provided written matter for the Deputy Registrar. As a result, the material available to me is vastly different from that which was before the Deputy Registrar. To written statements, statutory declarations and affidavits by persons who have not gone into the witness-box I do not feel able to allow much weight; the parties have had ample opportunity to adduce all the oral evidence they wished to adduce. (at p295)

18. I should add here that many of the statutory declarations follow set patterns, having obviously been prepared, with blanks for names and so forth, by someone who had not previously ascertained, either by means of questionnaires or otherwise, the views of the persons who were intended to subscribe them, and simply expressed in his own language what he hoped they might be prepared to say. The objections to such a practice are obvious and serious. They were emphasized by Lord Morton in Hack's Application (1940) 58 RPC 91, at p 110 and I wish to emphasize them again. See also Broadhead's Application (1950) 67 RPC 209, at p 211 and Kerly on Trade Marks, 7th ed. (1951), p. 63. A tribunal concerned to get at the truth can hardly be expected to take such declarations at face value. Scepticism as to their reliability has proved in several instances in the present case to have been amply justified. (at p295)

19. The historical background of the case was recounted in some detail in statutory declarations and oral testimony, by Dr Martin Rottger, a witness whose evidence generally I accept. The trade mark which the respondent desires to have registered is called the Leverkusen Bayer Cross in order to distinguish it from other Bayer Crosses, particularly one called the London Bayer Cross in which the intersecting words "Bayer" are printed in italic capitals instead of roman, the cross effect is emphasized by outlining and the filling in of blank spaces, and the whole is surrounded by two concentric circles enclosing between them the words "Bayer Products Limited, London". (at p296)

20. In 1863, a firm of Friedrich Bayer and Company was founded at Elberfeld, in Germany, for the purpose of manufacturing and selling chemicals. At Elberfeld and certain other German cities, including Leverkusen which became its headquarters, the firm established research laboratories and factories. New drugs of great importance in the medical, veterinary, agricultural and horticultural spheres were evolved from time to time by its chemists, some of whom achieved great renown among scientists; and its fame by reason of discoveries and of high-quality production became world-wide. Its business interests extended as a result over many countries. On its goods and in its publications and advertisements the name "Bayer" always appeared in some form, and became in consequence internationally recognized as referring to the German organization and therefore as affording a particular assurance of quality. Goods bearing the name reached the Australian market as early as 1895 or thereabouts, and the reputation of the name in this country, similar to that which it had abroad, became firmly established. (at p296)

21. The firm became, in 1881, Farbenfabriken vorm. Friedr. Bayer &Co. From an early date, not later than 1888, the word "Bayer" was used as a trade mark on this concern's products which were sold on the British market. As early as 1904 there was devised and registered as a trade mark in Germany a device consisting of the word "Bayer" printed in italic lettering in the form of a cross and enclosed in a circle; and an almost identical mark was registered in England before 1914. A similar mark was in use in Australia as early as 1913. (at p296)

22. In 1895 the German firm established subsidiaries in the United Kingdom and the United States of America. In 1919 its United States assets, confiscated during the First World War, were sold by the United States Alien Property Custodian to an American corporation called Sterling Products Inc. This corporation continued the business of the former United States subsidiary, the latter retaining as its name The Bayer Company Incorporated of New York. From that time onwards the American business associated with the name "Bayer" has been carried on by interests unconnected with the German organization; and these American interests have sought (I do not say by wrongful means) to attract to themselves the benefit of the "Bayer" name and "Bayer" trade marks wherever they could. (at p297)

23. In the United Kingdom, the German firm's subsidiary took as its name The Bayer Company Limited. In 1910, and again in 1914, it obtained registration of a trade mark consisting of the London Bayer Cross. In the First World War the business of this company, together with its trade marks, passed as a result of a winding up which had been ordered under the Trading with the Enemy Act to the Sterling interests. But some Bayer trade marks registered in the United Kingdom had never belonged to The Bayer Company Limited. They included the mark registered in 1914 in the name of the German company; and after the Treaty of Versailles this trade mark was restored to that company. (at p297)

24. In Australia, a contest as to trade marks arose between the American corporation and the German company. Each applied to the Registrar of Trade Marks for registration of a trade mark consisting of some form of Bayer Cross, the American corporation in respect of chemical substances for use in medicine and pharmacy and the German company in respect of those substances and (separately) in respect of substances for agricultural, horticultural, veterinary and sanitary purposes. All applications were refused by the Registrar, and appeals or an appeal to this Court were or was begun but not prosecuted. (at p297)

25. The German concern and the American (Sterling) interests found themselves in conflict in regard to many countries. But in 1923 the disputes were settled by the making of agreements which have been referred to as the Weiss agreements. So far as material they may be summarized as follows:
(1) The first was dated 9th April 1923 and was made between the German company as it then existed, Farbenfabriken vorm. Friedr. Bayer &Company, and the American Corporation, The Bayer Co. Inc. By cl. 3 the German company agreed not to engage in selling its products in certain countries including the United States, the United Kingdom and Australia. The American corporation agreed to form a company in the United Kingdom (Bayer Products Limited) and to cause it to enter into an agreement with the German company. The German company agreed to enter into the agreement also.
(2) The contemplated further agreement was in fact entered into on 1st September 1923, the British company having by then been formed. The German company thereby agreed with the British company to discontinue selling or importing its products in a defined territory which included the United Kingdom and Australia, and the British company agreed not to manufacture any of the products made by the German company unless with the consent of the latter, consent not to be unreasonably withheld. It was provided that if, as a result, it should be agreed that the British company should commence manufacture, the German company would disclose to it all secrets and other processes relating to the manufacture. Provisions were made for the sharing of profits equally between the American company and the German company. It was obviously of the essence of this arrangement that Britain and Australia should be supplied with German rather than American products, the Americans nevertheless taking a share of the profits.
(3) On 15th November 1926 a further agreement was made. The German company had by then combined with others to form I. G. Farbenindustrie A.G., and the parties to the new agreement were that company and the British company. The agreement of 1st September 1923 was accepted by the parties as defining their rights and obligations as if the new German company had been a party instead of the old one. The new German company agreed to assign to the British company its trade marks in the United Kingdom and Australia (as well as other countries) together with the goodwill of the business in connexion with such trade marks. The important point to notice here is that the assignment of trade marks, including of course any which included the name "Bayer", was on the footing of the whole arrangement under which the British company was to market only goods manufactured by (or with the consent of) the German company. Reference was made to a contemplated future acquisition by the German company of shares in the British company, rendering unnecessary the sharing of profits in the manner provided by the agreement of 1st September 1923.
(4) On the same day a letter (Ex. AA) was written by the new German company to the American company setting out how it was anticipated that the two companies would co-operate in conducting the business of the British company. (at p298)

26. The British company carried on the selling business in the United Kingdom and Australia which these arrangements contemplated. It took over all the United Kingdom and Australian trade marks, and sold thereunder, in the United Kingdom and in Australia, only goods made either by the German concern or from ingredients supplied by that concern. It registered the London Bayer Cross as a trade mark in Australia, and proceeded to supply Australian distributors with medical, pharmaceutical, agricultural, horticultural and veterinary preparations bearing the London Bayer Cross, all having been manufactured either by the German company or (exceptionally) with that company's consent from ingredients supplied by it. (There was some importation of Aspirin from the United States, but this ceased in 1931 and I attribute no significance to it for present purposes.) The Australian public, I am satisfied, thus got to see in the word "Bayer" and the London Bayer Cross an indication of manufacture by an overseas, if not a German, concern. I put it in this way because there seems to have been nothing on the goods to show what role in relation to them the British company had played. (at p299)

27. So the marketing of "Bayer" goods in Australia proceeded until 1936. In that year the business of Bayer Products Limited in Australia was taken over by a newly-formed company, the present respondent. It was a company formed under an agreement (Ex. AB) between the American and German companies, each taking one-half of the capital. By the agreement, the parties consented to Bayer Products Limited assigning to the respondent the trade marks and goodwill of the business of Bayer Products Limited in Australia and New Zealand, and they agreed that the terms of the 1923 and 1926 agreements made between The Bayer Company Inc. and the German company should be deemed to apply to the respondent, so far as Australia was concerned, and to the business carried on by it, in the same way as they applied to Bayer Products Limited. Bayer Products Limited by a deed of assignment dated 20th February 1936 (Ex. 19) purported to assign to the respondent the registered trade mark of the London Bayer Cross "together with the goodwill of the business of the vendors in the Commonwealth of Australia concerned in the goods for which the said trade marks are registered". (Whether the registration of the London Bayer Cross became liable to be expunged on the principle of Lacteosote Ltd. v. Alberman (1927) 2 Ch 117 I need not here consider.) The Australian business continued to be a distributing and not a manufacturing business, the respondent performing exactly the role which Bayer Products Limited had previously performed in Australia. At first a company called Fassett &Johnson Limited held (as formerly) a distributing agency, but before long the respondent took over the whole distribution itself. (at p300)

28. In the meantime the Leverkusen Bayer Cross, the cross for which registration is sought in these proceedings, had been evolved by the German concern, I. G. Farbenindustrie A.G. It was not registered as a trade mark in the United Kingdom or in Australia ; in those countries the London Bayer Cross continued in use until 1936. But when in that year the present respondent took over from Bayer Products Limited the Australian distribution of "Bayer" goods, I.G. Farbenindustrie A.G. gave the respondent instructions to discontinue the use of the London Bayer Cross and to substitute the Leverkusen Bayer Cross on goods thenceforth distributed. This was done. In view of the agreements which have been summarized above it must have been obvious to the respondent and, through the respondent, to the Sterling interests, that the common intention with which the German company was making the Leverkusen Cross available for use by the respondent and on which the respondent was adopting it was that it would be used as a trade mark for goods manufactured by the German company or with its consent and by its processes, and not otherwise. At the German company's direction (see par. 16 of Mr Ames' declaration) the respondent immediately sought registration of the Leverkusen cross as a trade mark in Australia. The Trade Marks Office objected that it was not a registrable trade mark, that it was a conventional and non-distinctive device formed by displaying in the form of a cross what was according to its ordinary signification a surname, and that it so closely resembled certain other trade marks as to be likely to deceive. The application was not carried further, because the objection of non-distinctiveness (at least) could not be overcome. As is shown by the letters in Ex. 31, the decision to drop the application was made by I.G. Farbenindustrie A.G. at Leverkusen, who then instructed the respondent to use the Leverkusen Cross for several years so that it should acquire distinctiveness, and then to apply again. The clear tenor of the letters is that the future use referred to was to be a use in connexion with goods of the German concern. The fact that the trade mark applications had been in the respondent's name seems to me to show simply that in the Bayer organization the respondent was regarded as the appropriate repository for Australian trade marks applicable to "Bayer" goods. (at p300)

29. The respondent accordingly proceeded to supply Australian retailers with "Bayer" products bearing the Leverkusen Bayer Cross. They were in the main imported from Germany (or, in a few instances, from a Dutch subsidiary of the German organization) in packings ready for retail sale and already bearing the cross. Where not so imported (as in the case of Aspirin) they were packed, tabletted or compounded in Australia by outside manufacturers to the order of the respondent, from ingredients supplied by the Bayer organization in Germany, or else they were supplied to the respondent by Bayer Products Limited, having been manufactured in England from ingredients supplied by the Bayer organization in Germany in accordance with its processes and tested by it. The trade done was extensive, as may be seen from Exhibits J, K, L, M and N. Each package marketed by the respondent bore, in addition to the special trade mark of the product, such as "Atebrin", a representation of the Leverkusen Bayer Cross. The name of a German company, which appeared on the packages of goods made in Germany, was often though not always covered by a sticker bearing the name and address of the respondent ; but there was frequently some indication of a German origin of the goods. In the ensuing three years, the goods were widely sold in Australia, and the respondent by extensive advertisement gave much publicity to the Leverkusen Bayer Cross. Very often both the respondent's name and the cross appeared on the goods or in advertising matter, and the respondent claims that the association of its name and the Leverkusen Bayer Cross gave rise to a reputation for the cross in Australia as indicating that the respondent was the local supplier of the goods on which it appeared. But it must be pointed out that often indications of German origin also appeared on the goods or in the advertising matter ; and it seems to me much more likely that the inferred connexion would be between the cross and the "Bayer" organization generally than between the cross and the respondent company to the exclusion of other "Bayer" concerns. I refer particularly, as illustrating this point, to the pamphlets forming Ex. E, and the 1937 price list which is Ex. F. The price list is especially interesting, for it quite plainly attaches the name "Bayer" and the Leverkusen Bayer Cross to the "Bayer" organization centred on Germany, and implies that the respondent is a local manifestation of that organization, using Fassett &Johnson Limited as the Australian distributors of the organization's products. The same clearly appears from the booklet Ex. H, which proclaims its intention to serve the profession "as a concise guide to the pharmaceutical preparation issued by Bayer Pharma Limited, and prepared in the great pharmaceutical manufacturing and research laboratories of the I. G. Farbenindustrie A.G. known in Germany under the name 'Bayer'". Publicity was not lacking, in the years before the Second World War, for the Leverkusen Bayer Cross as the symbol of the German organization. In December 1938 (as Dr. R.J. Noble testified) an elaborate brochure (Ex. G), printed in Germany and distributed in Australia, celebrated the jubilee of the organization. Fifty Years of Bayer Remedies it was entitled, the word "Bayer" taking the form of the Leverkusen Cross. No one could have read the brochure with the slightest attention and retained any idea that the cross had any connexion with the respondent company as distinguished from the Bayer organization as a whole. And the same applies to the diaries (Ex. 3) which were issued by way of advertisement to the medical profession and others in Australia. In relation to agricultural preparations it will suffice to mention the evidence of Mr N. S. Lane, managing director of a firm of agricultural chemical manufacturers, who distributed advertising matter provided by the respondent company, and displayed at film evenings which were given in Sydney and country centres a large sign representing the Leverkusen Bayer Cross picked out in lights above the Bayer works at Leverkusen. (at p302)

30. The fact, then, seems clearly established that the respondent company took the place formerly occupied in regard to Australia by Bayer Products Limited ; and "Bayer", in the form of a cross or however appearing, continued up to the war to refer, as it had always referred, to an organization, mainly overseas, of which the company immediately placing "Bayer" goods on the Australian market was only a part or a local representative. The evidence shows that among a not inconsiderable number of people there was in the pre-war period a background belief or impression of long standing that a renowned German organization, vaguely identified as "Bayer", produced all "Bayer" goods, and in particular all goods branded with a Bayer Cross. It has been contended for the respondent that the indicated connexion was only the historical one consisting in the part played by the German Bayer concern in the research which led to the discovery of the several products. This may have been so with some people, but with a great many I am sure it was not. The fame of the "Bayer" researches lent lustre to the name ; but I do not believe that many people who saw products labelled with the name thought that the Bayer connexion was anything less than that of manufacture. I am satisfied that at the outbreak of war in 1939, as a result of the use of the name "Bayer" and the Leverkusen Bayer Cross on and in relation to goods distributed to retailers by the respondent - that is to say as a result of that use coming on top of all that had gone on before in connexion with the name and the London Bayer Cross - the Leverkusen Bayer Cross meant to a substantial portion of the community in Australia either primarily or exclusively a connexion by reason of manufacture with a "Bayer" organization, either German or at least not purely Australian, and only secondarily and consequentially (when it meant it at all) a connexion with the respondent as the local distributor of that organization's products. (at p303)

31. The respondent's main case, however, is that even though the Leverkusen Bayer Cross had the reputation I have mentioned up to the outbreak of the war, the ensuing ten years, at the end of which the applications the subject of these proceedings were made, saw that reputation displaced and a reputation built up which made the cross distinctive of the respondent and precluded all likelihood of deception by the respondent's use of it. This the appellant denies ; and in addition it contends that if regard be had to all the circumstances of the respondent's use of the cross the case should be considered a proper one for refusal of the applications as a matter of discretion. (at p303)

32. It is important to recognize what the respondent's case means in point of fact. First, it means that no other person, firm or corporation, not even, for example, Bayer Products Limited or the American corporation The Bayer Company Incorporated, could have marketed goods (of any of the relevant kinds) in Australia in 1948 under the Leverkusen Bayer Cross, without thereby giving users and purchasers generally to understand, and understand only, that the goods were on the market under the aegis of the respondent. Secondly, it means that if the respondent itself were to apply the Leverkusen Bayer Cross in or after 1948 to goods (of any of the relevant kinds) distributed by it, even though not manufactured either by any Bayer concern or from Bayer ingredients or in accordance with any Bayer method or formula, users and purchasers generally would understand it to indicate only that the respondent was putting them on the market as goods with which it had a trade connexion, and would not be likely to be deceived into thinking that, or wondering whether (as in Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. (1954) 91 CLR 592, at p 608 ) the cross indicated a trade connexion on the part of someone further back than the respondent in the history of the goods. The questions of distinctiveness and absence of a likelihood of deception tend to run into one another. (at p303)

33. The first relevant result of the war was that the shares in the respondent company which were held by German interests passed to the Controller of Enemy Property. They have never been restored. With the German interests thus excluded and the Sterling interests in control, the respondent continued to carry on its business as before, save that as stocks of German goods were exhausted replacements were obtained as opportunity offered from America or from England. These, as Mr Ames, the respondent's secretary has testified, were labelled in the same manner as the products sold before the war "with the exception that the country of origin shown on such labels was not Germany but the United States of America or England as the case might be". Then, in 1943, the respondent extended (beyond Aspirins and A.P.C. powders) the range of products manufactured or tabletted to its order in Australia. The goods it distributed, or packed and distributed, bore both its name and the Leverkusen Bayer Cross. (at p304)

34. All this involved a radical departure from the pre-war situation. Those who were by then in charge of the respondent's business may well have had no actual intention either of deceiving the public or of depriving the German interests of the benefit of the good will attaching to the cross. But the result of what they did in fact is clear. In relation to persons who had come to see in the cross a guarantee of manufacture by or under the German concern, the use of the cross in the new situation was necessarily deceptive ; and in relation to any persons who thereafter became accustomed through the respondent's use of the cross to associate it with goods distributed by the respondent, the necessary result was that a new goodwill was built up in favour of the respondent but in respect of a device which it had received in 1936 from its German principal under arrangement with which the new use did not conform. (at p304)

35. In 1947, hostilities being at an end and importations from Germany being again possible, the appellant's German predecessor recommenced the supply of its products to the Australian market. It appointed Henry H. York &Co. (Sydney) Pty. Limited as its sole distributing agent in Australia, and in 1949 that company marketed under the Leverkusen Bayer Cross medical and pharmaceutical chemicals which it imported from Germany. In the following year, however, upon the institution by the respondent of a suit for injunction, the appellant restricted its trade to what may be broadly termed industrial chemicals. (at p304)

36. To a member of the public who paused to think about the matter during the war years it must have occurred at once that the goods which were currently being marketed in this country under a Bayer Cross, unless they were pre-war stock, could not have come, at any rate directly, from Germany : they must have come from Britain or from some allied or neutral country. The respondent contends that such a person, seeing the Bayer Cross on goods in those years, would have realized that he could not infer from it anything as to the place of manufacture of the goods : he must have understood that the respondent had got them from whatever source of supply it could find. Consequently, the argument proceeds, he would in all probability have associated the cross exclusively with the one factor common to all the goods on which it was being used, namely that the respondent was the wholesale distributor in Australia. And the respondent's evidence has been directed largely to showing that in fact that was how things went. (at p305)

37. Now, the evidence satisfies me that in 1949 there was a widespread belief that the respondent was the Australian distributor of all "Bayer" products of the classes here in question. To persons who held that belief it logically followed that goods of those classes would not be likely, under existing arrangements, to carry the Leverkusen Bayer Cross unless they had come onto the market through the respondent. But the evidence also satisfies me that in 1949 many persons, even though they held these beliefs, thought that the significance of the Leverkusen Bayer Cross was that the manufacturer was a "Bayer" concern, and in the fact of its being a "Bayer" concern they saw their guarantee of quality. Not that this was by any means the universal belief. Some people thought, contrary to the fact, that the cross indicated manufacture by the respondent. Professor Rubbo was one of these, and others included Mr Sampson, an employee of a firm of wholesale druggists, Mr McPherson a pharmaceutical chemist who began his apprenticeship as late as 1942, Mr Sage, and Mr Collinson, pharmaceutical chemists of longer experience, Mr Dougall, departmental manager for the Wholesale Drug Co. Ltd., and Mr Greig, the chief pharmacist of the Brisbane and South Coast Hospitals Board. Then too, Dr Coffey, Mr Culpitt, Mr Burns, Dr Rollison, Mr Baird, Dr Tulloch and Dr Johnson all thought that the Bayer Cross had come to indicate that the goods were marketed by the respondent and that the appellant warranted their quality, without indicating anything as to manufacture. Perhaps I should add Mr Cossar, a pharmaceutical chemist, and Mr Tupper, departmental manager of the Commonwealth Drug Co. Pty. Ltd., who both understood the Bayer Cross to indicate that goods had been "owned" by the respondent. But a formidable array of witnesses testified convincingly to views which, though not completely uniform, were inconsistent with the respondent's case. Each of them interpreted the cross as conveying an assurance which did not depend upon the identity of the distributor. To some, the assurance was simply that the goods were manufactured by a German concern which was thought of as "Bayer". Sir Herbert Schlink was one of these. After a long and varied medical career, he saw nothing in the cross except a reference to manufacture by the Leverkusen organization and a guarantee of the good quality which he associated with its products. He knew of the respondent, but thought it was the same as "the German Bayer". Sir Stanton Hicks, formerly Professor of Human Physiology and Pharmacology in the University of Adelaide, considered the Leverkusen Bayer Cross to be, in 1949, the trade mark of "the Bayer organization at Leverkusen". The respondent, with which he had had dealings, he thought of as having formerly been "the Bayer Leverkusen people trading in this country" ; but he was told in 1948 that it had been taken over by the American interests. Without that knowledge he would have thought, if he had seen the Bayer Cross used by the respondent, that "Bayer" was operating in Australia ; with it he would have thought there was "something wrong". Mr Orr, a pharmaceutical chemist who had been in business since 1922, was a witness who impressed me very much with his fairness and his clearness of thought and expression. One or two passages in his evidence are worth quoting. He knew that the war had led to "Bayer" goods being obtained from places other than Germany, but in 1949 his first reaction on seeing the Leverkusen Bayer Cross was still that the goods came from Bayer, Germany. They might, however, "come from almost anywhere". I quote the following questions and answers from the record of his cross examination :

"MR STAFF Q.C. : So that before the war the name 'Bayer' meant to you Germany, German Bayer organization ? MR ORR : Yes. MR STAFF : By 1948 or 1949 you were aware that the cross device did not necessarily mean Bayer Germany, were you not? MR ORR : To me personally it did, but I had to read the label to see where it was really made. MR STAFF : The only thing it signified to you was that the goods were put out by Bayer Pharma? MR ORR : Under the trade name of Bayer, yes. MR STAFF : With the cross device. By 1949 the only thing that the cross device signified to you was that the goods, wherever they were manufactured, were put out in Australia by Bayer Pharma Pty. Ltd.? MR ORR : Well, yes and no. Yes, they were Bayer products because it had the Bayer Cross on them and I would first of all expect them to have come from Germany. I had to read the package to be sure where they came from. . . . . "MR STAFF : Whenever in 1949 you saw the cross device you would know that the goods were put out to the market by Bayer Pharma Pty. Ltd.? MR ORR : By Bayers. We did not know the agent - we only know it as Bayers. MR STAFF : You knew, did you not, that Bayer Pharma was putting out a preparation marked with the cross in Australia? MR ORR : We were not concerned, if I may answer that. We were only concerned with getting Bayer preparations because we ordered them as such. MR STAFF : You ordered them from the distributors? MR ORR : No, the wholesale house. MR STAFF : You ordered them direct from Bayer Pharma Pty Ltd.? MR ORR : No, I never knew Bayer Pharma.

MR STAFF : Did you order them through Fassett &Johnson?

MR ORR : No, I got them from the wholesale druggists. MR STAFF : They came to you, did they not, done up in boxes, one of which you have in front of you being typical? MR ORR : Yes, that could have been one. MR STAFF : Done up in packs with labels bearing the cross device? MR ORR : That is so. MR STAFF : And always with Bayer Pharma Pty. Ltd. name on them? MR ORR : That was increasingly the case that they had either Bayer Pharma or else the sticker across obliterating where it was from. MR STAFF : I am asking you about 1948-49. I put to you that the packs always contained the Bayer Pharma name printed on them and on the label? MR ORR : Not always printed on the label, sometimes a sticker over it. MR STAFF : In 1948-49? MR ORR : Yes. MR STAFF : And at that time, you did not see a single product that came to you with 'Made in Germany' on it, did you? MR ORR : We did, strangely enough. It was obliterated with the Bayer Pharma sticker on the label. . . . . "MR STAFF : However, may we take it that by 1949 you were aware that the Bayer Cross was used by Bayer Pharma on a large range of products made in various countries? MR ORR : Well, I don't know who used it but I know that it came on various Bayer preparations by 1949. MR STAFF : I put it to you that you always found it used nearby the name Bayer Pharma Pty. Ltd.? MR ORR : Not necessarily. Sometimes it would be at the top of the box with the Bayer Pharma sticker at the bottom. MR STAFF : But always the cross appeared on a label on which Bayer Pharma's name appeared, did it not? MR ORR : Probably so, but I would not associate the cross with Bayer Pharma because, as I say they always put a sticker on like you have there." (at p308)

38. To a similar general effect was the evidence of Mr W.F. Scammell, a director of a company in the business of manufacturing chemists and wholesale druggists. He was asked : "If you had seen the Bayer Cross on a pharmaceutical product without more in 1949, what would you have thought then?". He replied : "If I had seen the Bayer Cross then, the same as if I saw it now, I would think of German manufacturing but I would not necessarily think of it being manufactured in a specific place, because in the pharmaceutical business today manufacturing takes place in the country most suitable for the product concerned and most manufacturers would have products which could have been made or which are made in different countries ; they draw from them depending on convenience." (at p308)

39. In the same category is Dr. Noble, former Under-Secretary and Director of the Department of Agriculture in New South Wales, one of the few witnesses who gave evidence as to agricultural preparations. To him, in 1949, the Bayer Cross meant that the product was "associated with an origin in Germany, an origin with the Bayer firm in Germany ; that it had, perhaps, originated there, certainly (been) processed there, tested there ; research had provided the firm with the knowledge which meant that it placed this product on the market." Then Mr. H. M. Gordon, senior research officer of the C.S.I.R.O., spoke of veterinary products. In 1949, as previously, the cross conveyed to him a reference to "Bayer" in Germany. References on a package to another country he took to refer to their agents ; and he assumed that the respondent, whose advertisements he had seen, was, "Bayer's agents" in Australia. Dr Straede, who had experience both as a pharmaceutical chemist and as a doctor, had long known the Bayer Cross as "the normal brand of Bayer's products", and to him "Bayer's were a firm in Germany". He did not know of the respondent as a separate organization. In 1957 he received from the respondent a form of affidavit in connexion with these proceedings, and even then he thought the sender was a branch of the German firm, "a part of Bayer" as he put it at one point in his evidence. Then there were other witnesses from various parts of Australia who gave generally similar evidence : Mr Kuchel, a former chief chemist of a manufacturing company in Melbourne, Mr Gabriel, a pharmacist with wholesale experience, Dr Eddy, a general practitioner in Melbourne, Mr Jolly, a pharmacist and departmental manager of a firm of wholesale druggists in Melbourne, Mr Whitelum, purchasing officer for a firm of manufacturing chemists in Adelaide, Dr Reilly, an ear, nose and throat specialist in Adelaide, Mr Mealor, a buyer for another firm of manufacturing chemists in Adelaide, and Dr Frazer, a Sydney specialist in psychiatry and arthritis. I quote a passage from the evidence of Dr Eddy, both because his views, being those of a general practitioner in practice since 1928, are likely to be representative of a considerable and important body of persons concerned in pharmaceuticals, and because he appeared to me a particularly careful, intelligent and genuine witness :

"MR BOWEN Q.C. : I want to take your mind to the post-war period, up to say 1949. Can you tell us what that Bayer Cross on pharmaceutical products would convey to you in that period? DR EDDY : Well I took it to be still products from the Bayer firm as it was prior to the war. If I did think about where the particular tablets came from I might think that they came out of stock, or they may have been made under licence by some firm during the years of the war, but after the war I naturally thought, I took it any product after the war would then have been manufactured again by Bayer as soon as they got into production after the war. MR BOWEN : Can you indicate to us what you mean by 'Bayer' when you say that? DR EDDY : The firm as I knew it was 'Bayer', a West German firm. I had used their products prior to the war and I presumed their products were still the same. ABC MR BOWEN : Are you aware of the existence of a company Bayer Pharma Pty. Limited today? DR EDDY : I am, today. MR BOWEN : When did you first become aware of the existence of that company? DR EDDY : Last night." . . . . "MR BOWEN : Will you tell us, Doctor, what products bearing the Bayer Cross I have shown you you may have been using or prescribing up to 1949? DR EDDY : I used a lot of them. Bayer Products to me is a big firm which may have produced 100 or more products. I used possibly 20 of them for certain diseases. I used their products in preference to other companies'. Salyrgan, Atebrin and Phenacetin, I used them during the war and after the war ; Novalgin I used for rheumatic types of pain ; Campolon I used for injections for pernicious anaemia. Zepherin was an antiseptic I associated with Bayer and used . . . MR BOWEN : What was your belief as to where these products you have mentioned came from? DR EDDY : I mean, I took it they were all Bayer products. MR BOWEN : Can you just indicate what that means to you as to their source? DR EDDY : I mean, I had Bayer retailers come to my surgery and offer products for my use for respective diseases and conditions which I treated which, they said, were made by Bayer. I had from year to year Bayer books, appointment books ; in other words, advertisements for their products giving them in alphabetical order and saying how you use them, doses and everything, and those were sent to me from year to year and still . . . MR BOWEN : When you said sent to you by . . .? DR EDDY : On the cover there was the cross of Bayer in a circle which, I took it, came from the Bayer company in West Germany that made these Bayer pharmaceutical products." (at p310)

40. To some extent in contrast with this, but still strongly tending against the respondent's case, was the evidence of Mr. Rochlin, a pharmacist in business in a Melbourne suburb, a witness both shrewd and detached. His answers show a degree of uncertainty and wondering which I should think it probable that many people shared, and which, where it existed, was inconsistent with the distinctiveness claimed by the respondent. The following passages are from the record of his examination in chief and his cross-examination:-

"MR BOWEN Q.C.: In 1949, what did the Bayer Cross I showed you indicate to your mind then? MR ROCHLIN: If I was interested, I would think I would look at it, perhaps out of curiosity, to see whether the German products had come back on the market or whether it came through some other channels. I would still regard it as the original Bayer research on it having been done by Bayer in Germany, whoever was marketing. MR BOWEN: That is 1949? MR ROCHLIN: Yes: four years after the war? Yes, by then. MR BOWEN: What about up to the present time? MR ROCHLIN: Up to the present time I would regard it that the Germans would be back in business; but I don't know. I suppose I still would have a look, especially at a new line which came on; I would look at it and see - it would have the Bayer mark on it naturally but I would perhaps see what part of the world it would come from. MR BOWEN: You have heard of Bayer Pharma Pty. Limited? MR ROCHLIN: Yes, I know of them, quite well, for years. MR BOWEN: And taking the year 1949 what would your view have been as far as Bayer Pharma Pty. Limited were concerned? MR ROCHLIN: I would regard at that time - I think I would regard the Bayer Pharma as distributors or having an agency here for Bayer products, and the original agency which I think they had before the war. HIS HONOUR: Why would you be interested in looking now at a product bearing the Bayer Cross? MR ROCHLIN: New lines come out. You are interested to see whether they come from Germany - whether they have developed or whether they are marketing it through America. There are quite a lot of ramifications behind marketing of these products. There is a fair bit of trade with expropriated enemy territory that were sold, I think after the war, at prices - and some of those included trade marks and it has been a matter of interest as to how it all stands now, who is doing what . . . HIS HONOUR: Yes. ABC MR ROCHLIN: And on the other hand it is interesting to see whether they have all become good friends or cutting each other's throats or what goes on." . . . . "MR STAFF Q.C.: You knew Bayer Pharma and Aspirin? MR ROCHLIN: I regarded the name of Bayer Pharma as distributing Bayer products wherever they came from." . . . . "MR STAFF: But the cross itself does not tell you where the product is manufactured? MR ROCHLIN: No, but you would have to read elsewhere for that. You would have to determine as to whether the product was a product of the original Bayer concern or their research, a new product coming out you would say 'Here is a Bayer, I wonder what channel this has come through'. It is a new Bayer, you would see the cross and say 'That is a Bayer line'." . . . . "MR STAFF: What I asked you was have you ever seen that device on any pharmaceutical product in this country before the war? MR ROCHLIN: Not knowingly. I would not probably notice the difference, I would just take it as the Bayer trade mark and would not notice whether it had one ring, two rings, a particular ring or words round it or anything." . . . . "MR STAFF: Did you ever get any price lists of Bayer products from a company called Bayer Products Limited, London? MR ROCHLIN: I would not think so. If we got a price list from Bayer, we would take it as being sent by the local distributors and posted in Australia, I think, mostly." (at p312)

41. Other witnesses, Mr G. Scammell, a director and New South Wales manager of a wholesale druggist company, and Mr Martin, a Brisbane pharmacist, were not positive in connecting the Leverkusen Cross with a German company, but they saw it as an indication of manufacture by "one of the Bayer organizations", to use Mr Martin's expression, or manufacture "by Bayer", to use Mr Scammell's phrase which he explained by saying that he knew "Bayer" was a world-wide organization. Perhaps Mr Simpson, a pharmacist in business in a Sydney suburb, should be included in this category. Commencing by saying that the Bayer Cross indicated to him the products sold by the respondent, in cross examination he qualified this, not in any way which discredited him as a witness - in fact he was a very satisfactory witness - but in a way which shows, I think, what many people would mean by linking the cross with the respondent as distributor of the goods. These questions and answers may be quoted from his cross examination:

"MR BOWEN Q.C.: You knew Bayer Pharma Pty. Ltd. before the war? MR SIMPSON: Yes. MR BOWEN: And although you did not get your supplies from them, you regarded them as the persons representing the Bayer organization in Australia, did you? MR SIMPSON: No, I did not exactly do that. I knew they were the distributors. MR BOWEN: The distributors for the products of this great organization?

MR SIMPSON: Fassett &Johnson were one of the distributors

- that was one of their lines they were agents for. MR BOWEN: Bayer Pharma Pty. Ltd. were one of the distributors of the great Bayer organization? Is that right? MR SIMPSON: That is right, yes. MR BOWEN: But, as I say, after the war you still saw the Bayer Cross on the products? MR SIMPSON: Yes. MR BOWEN: But when you began to see different countries appearing on it, it ceased to have any significance as to the manufacture of the goods, did it, to you? MR SIMPSON: Yes. I just realized they were part of the world-wide organization, and as long as they had Bayer on it, I was satisfied with it. MR BOWEN: Because you knew it was associated with the world-wide standard of quality? MR SIMPSON: That is correct. MR BOWEN: And you were not concerned to know what the international or inter-country arrangements were? Is that the proposition? MR SIMPSON: No. I knew they were part of a cartel, but I did not worry about that. MR BOWEN: You did not worry about that. But as long as this Bayer Cross was on the product you felt whatever the connexion might be there would be some connexion that would guarantee the standard would be maintained? MR SIMPSON: I knew it was not a forgery." (at p313)

42. Too much should not be made of the differences between the different kinds of Bayer Crosses. The Leverkusen Cross, as I have mentioned, came into existence as late as 1936; but the general idea of "Bayer" printed horizontally and vertically so as to form a cross with a common "Y", the whole being enclosed in a circle, had been a feature of "Bayer" goods for many years before; and the fame which, up to the outbreak of war, surrounded such crosses, despite their points of difference, was a fame not exclusively attached to the respondent. To my mind the evidence I have discussed makes it quite impossible to conclude that by 1949 the Leverkusen Bayer Cross had become distinctive in Australia of goods distributed by the respondent. On the other hand, the evidence establishes in my opinion that a considerable number of people in this country would have been misled, or at least confused, if in 1949 the cross had been applied by the respondent to goods distributed by it but having no claim by reason of manufacture to be called "Bayer" goods. (at p314)

43. This is enough to dispose of the case, but I may add that even if I thought otherwise a consideration of the historical matters I have mentioned would lead me to exercise the discretion which the word "may" in s. 16 (3) would give me: In re Joseph Crosfield &Sons Ltd. (1910) 1 Ch 118, at p 141 , by refusing to take into consideration the extent of any distinctiveness resulting from the respondent's use of the Leverkusen Bayer Cross. By way of preface on this aspect of the case, I may observe that it seems to me sufficiently clear from Exhibits AH, AJ, AK, AL and X, read with Dr Rottger's evidence, that the appellant is the beneficial owner of the business to which attaches the reputation of the Leverkusen Bayer Cross in so far as it indicates a connexion with a German manufacturing concern. In saying this I am not forgetting that one pharmaceutical factory of the old I. G. Farbenindustrie A.G. was at Hoechst and that this did not pass to the appellant; but no part of the "Bayer" goodwill appears to have been among the assets of that factory. So far as I can see, the goodwill belonged to the business at Leverkusen, irrespective of the locality of individual factories which that business controlled; and that business, with all its goodwill, I should conclude, passed to the appellant. But however this may be, the appellant has at least an interest to complain that after Bayer Crosses had long been used exclusively in relation to the products of German "Bayer" concerns, the Leverkusen Cross, having been devised by the German Bayer concern which existed in 1936, was introduced into this country by the respondent on instructions from that concern, and on the footing, mutually accepted, that it would be used only for goods manufactured by or with the consent of that concern; and that until the war it was in fact so used here by the respondent as the distributing agent for that concern. In these circumstances, I should not think it right so to exercise a judicial discretion that the user of the cross by the respondent after the Sterling interests had taken charge on the outbreak of war - a user departing so fundamentally from the arrangements under which the Leverkusen interests had made the cross available for use by the respondent - should be treated as a ground for granting the respondent such a monopoly that even the successors (whoever they may be) of the former German concern would be precluded from applying the cross to their goods. My reason would be simply the unfairness of such a result. But I rest my decision primarily upon the two conclusions of fact: first, that the use of the Leverkusen Bayer Cross in Australia in the period from 1939 to 1949 did not render it distinctive in this country of the respondent's goods; and, secondly, that the respondent's proposed use of the cross as a trade mark in Australia after 1949 would be characterized by such a degree of likelihood of deception as would disentitle it to protection in a court of justice. (at p315)

44. For these reasons I allow the appeals. (at p315)

45. Appeals allowed. (at p315)

46. 1960, June 10.
KITTO J. delivered the following further judgment on the question of the costs of the Registrar of Trade Marks: - (at p315)

47. I reserved for consideration the question whether the respondent should be ordered to pay the costs of the Registrar of Trade Marks. Neither by the Act nor by the Rules is any power expressly given to award the Registrar his costs against a party to an appeal. Nor, for that matter, is there any express provision that the Registrar shall not be ordered to pay costs. He is given by r. 9 (1) of O. 66B a right to appear and be heard, but the rule provides that in a case like the present he shall not be deemed to be a party. This makes inapplicable in his favour, as well as against him, the provision formerly in s. 95 (d) of the Trade Marks Act 1905 (Cth) and now in s. 114 (f) of the Trade Marks Act 1955 (Cth), enabling the Court to order a party to pay costs to any other party. Yet the presence of this provision in the Acts enables the respondent to contend and it does contend, that in trade mark appeals the general discretionary power over costs under s. 26 of the Judiciary Act 1903 (Cth) is impliedly excluded. Whatever force one might have been prepared to allow this contention if the matter were res integra, as things stand I think I should reject it. It cannot be reconciled with what Williams J. said in Sym Choon &Co. Ltd. v. Gordon Choon Nuts Ltd. (1949) 80 CLR 65, at p 80 , with the order of the Full Court as to costs in Tate v. Haskins (1935) 53 CLR 594 , or, I think, with the practice of the Court in trade mark and patent cases. I may refer also to In re McKay's Application (1909) VLR 423 , where the Victorian Full Court seems not to have felt that the presence in the Patents Act 1903 (Cth) of a special provision as to ordering a party to pay costs to another party implied a denial of a discretion in the Court, under a general power, to deal with the costs of the commissioner. Accordingly I hold that I have a discretion to order the respondent to pay the Registrar's costs. (at p316)

48. I am far from believing that in every appeal of this kind the unsuccessful party should pay the Registrar's costs, but in the present case I think there are positive reasons why the respondent should pay them. The appeal presented some special difficulties, and I think it was desirable that the Registrar should be represented and be heard in the public interest. The argument put on his behalf was in fact of material assistance to me, although in the end my decision was against its general tenor. In the circumstances I think it proper to order the respondent to pay the Registrar's costs. (at p316)

49. The order already announced will include a provision to that effect, and in accordance with the consent of the parties the whole order will date as of today. (at p316)

50. Appeals allowed. Decision of the Deputy Registrar of Trade Marks set aside. In lieu thereof, order that application numbers 100642 and 100643 for registration of a trade mark be refused. Order that the respondent pay the appellant's costs of the appeals (including reserved costs). (at p316)

51. Bayer Pharma Pty. Limited appealed from the decision of Kitto J. to the Full Court. (at p316)

52. K. A. Aickin Q.C., D. A. Staff Q.C. and A. C. King, for the appellant. (at p316)

53. N. H. Bowen Q.C., R. J. A. Franki Q.C. and R. D. Conacher, for the respondent. (at p316)

54. R. J. Ellicott, for the Registrar of Trade Marks.

Cur. adv. vult. (at

1965, May 4.
The following written judgments were delivered:
BARWICK C.J. The appellant in 1949 lodged with the Registrar of Trade Marks two applications under the Trade Marks Act 1905-1948 (Cth) (The Act) and the Regulations made thereunder for registration of a trade mark consisting of the letters BAYER printed in roman capitals horizontally and vertically, intersecting so as to form a cross of equal arms with the letter "Y" as its central point, the whole being enclosed in a circle. One application sought registration of the mark in respect of chemical substances to be used for agricultural, horticultural or veterinary purposes and the other application sought registration in respect of chemical substances prepared for use in medicine and pharmacy. (at p317)

2. Notices of opposition signed on behalf of the respondent by a trade mark attorney were lodged on the last day on which in the circumstances they could possibly have been lodged. An "appointment of agent and address for service" which appointed the trade mark attorney as the respondent's agent and nominated his address as the respondent's address for service was filed with the Registrar. According to a statement made to the Court by the Registrar of Trade Marks, and forming part of the evidentiary material before it, this appointment was lodged with the notices of opposition. But the date on the document was 20th June 1952 whereas the notices of opposition were lodged on 12th June 1952. (at p317)

3. The original applications were in a form which sought an order to be made pursuant to s. 16 (1) (e) of the Act deeming the mark to be a distinctive mark. They were substituted, however, by applications which did not seek such an order, the mark thus impliedly being put forward as a distinctive mark, not being a name, signature, word, or words, in the event that it did not fall within any of the paragraphs (a) to (d) inclusive of s. 16 (1). (at p317)

4. The applications were heard as opposed applications by the Deputy Registrar of Trade Marks before the Trade Marks Act 1955 (Cth) (The 1955 Act) became operative. Decision thereon was under consideration when the 1955 Act repealed the Act. Purporting to do so by virtue of s. 5 (4) of the 1955 Act, the Deputy Registrar, after that Act came into operation, dismissed the oppositions and directed that the applications might proceed to registration subject to an undertaking by the appellant to place its name in close proximity to the mark. (at p317)

5. An appeal to this Court against these decisions followed in due course. The Court had jurisdiction to hear and determine the "appeals", notwithstanding the repeal of the Act, as this Court held in Farbenfabriken Bayer Aktiengesellschaft v. Bayer Pharma Pty. Ltd. (1959) 101 CLR 652 A further argument, not raised in that case, that the provisions of s. 5 (4) of the 1955 Act did not extend beyond permitting the formal steps being taken to carry an application pending under the Act to registration and were thus insufficient to maintain the "appellate" provisions of s. 45 of the Act in respect of applications pending at the date of its repeal is, in my opinion, without substance. (at p318)

6. The "appeals" came before a Justice of the Court as opposed applications in respect of which the issues in contest were fixed by those regulations made under the Act which are set out in Div. 3 of the Regulations, and by the notices of opposition and counter-statements lodged pursuant to those regulations. The matter, though called an appeal, in reality came before the Court as a re-hearing of those issues, in the resolution of which the Court was exercising original and not appellate jurisdiction. (at p318)

7. A point was raised before his Honour that the notices of opposition were incompetent because of the provisions of the Trading with the Enemy Act 1939-1947 (Cth). It was submitted that the notices of opposition were nugatory because the respondent was an enemy national at the time of their lodgment and thus incapable of appointing an agent at the time it purported to do so and incapable of subsequently ratifying his acts purportedly done on its behalf. The point, in my opinion, as in his Honour's, was misconceived. The proclamation of 9th July 1951 had brought the war with Germany to an end, so that the respondent was thereafter no longer an enemy national. (at p318)

8. Kitto J. who heard the "appeals" decided that he had jurisdiction to hear and determine them, that the notices of opposition were effective, and that the mark was not at the time of the applications for its registration distinctive of the appellant's goods. He allowed the appeals, set aside the decision of the Deputy Registrar of Trade Marks, and ordered that the appellant's applications for registration be refused. From that decision, the appellant now appeals to this Court (Judiciary Act 1903-1959, s. 34). (at p318)

9. The appellant raised on this appeal a further point not actually raised or discussed before his Honour. It was said that the notices of opposition were ineffective because the agent had not been appointed in writing at the time of the lodgment of the notices of opposition. This submission was based upon the date appearing on the "appointment of agent". But, apart from that circumstance, there was nothing to show that the trade mark attorney had not been authorized by some writing other than the document lodged with the Registrar and made prior to the lodgment of the notices of opposition, or that the date on the document was not itself an error. The statement of the Registrar to which I have already referred certainly pointed in this latter direction. (at p319)

10. In any case, however, in my opinion, an issue as to whether the applications were or were not opposed could not be raised before the Court. It derived its authority to hear the matter from Div. 3 of the Act. It was the decision of the Registrar on the question whether the applications should be refused or granted that provided the basis for the operation of s. 45 of the Act. If, after advertisement of the acceptance of the application, there was in law no opposition no question of considering whether or not the application should be granted could arise. Section 47 would require the registration of the mark. Whether or not an application is or is not validly opposed would, in my opinion, have to be litigated in proceedings to compel or restrain, as the case may be, action by the Registrar under s. 47. (at p319)

12. We should add that we also agree with Kitto J. that the proposed use by the appellant of the "Bayer Cross" as a trade mark in Australia in 1949 would, for the reasons already given, have had such a tendency to deceive as to make the rejection of the applications for registration inevitable. (at p335)

13. For these reasons we are of opinion that the appeals should be dismissed. (at p335)

MENZIES J. These are appeals from a judgment of Kitto J. reversing the decision of the Registrar of Trade Marks and ordering the rejection of the appellant's applications in two classes for the registration of the trade mark consisting of the word "Bayer" written vertically and horizontally with a common "Y" and encircled by a simple circle. The applications were in respect of chemical substances for agricultural, horticultural and veterinary purposes (Class 2) and for use in medicine and pharmacy (Class 3). The applications were made on 9th November 1949. The appeals raise one point of substance and a number of technical questions. I will deal with the point of substance and then, if and so far as is necessary, with the technical questions. First, however, some historical statement is necessary. (at p335)

2. There was, up to August 1914, but one "Bayer" empire, that of Farbenfabriken vorm. Friedrich Bayer &Co. of Leverkusen, Germany (which I shall call "the Bayer Company"). It began when, in 1888, Friedrich Bayer &Co. in Elberfeld added a pharmaceutical department to its manufacture of dyes. The new division prospered and, in 1895, the Bayer Company formed subsidiaries in the United States (Farbenfabriken of Elberfeld Co., later The Bayer Co. Inc.) and in Great Britain (Elberfeld Farbenfabriken Co. Ltd., later The Bayer Co. Ltd.) and its trade extended to Australia, for which a separate price list was first issued in 1913 by the Bayer Company itself. A trade mark of the Bayer enterprise from early in its history was that already described. This, without any further addition, I shall refer to as "the Leverkusen Bayer Cross". There were other similar trade marks in use from time to time, of which I shall mention two. First, two concentric circles, one larger than the other, and in the ring so formed the words "Farbenfabriken vorm. Friedr. Bayer &Co.", the smaller circle encircling the word "Bayer" written vertically and horizontally with a common "Y"; the whole set in a box supported by wings. This mark appeared on the first Australian price list of 1913. Second, the "London Cross", which consisted of two concentric circles, one larger than the other, and in the ring so formed the words "Bayer Products Ltd., London", the smaller circle encircling the word "Bayer" written vertically and horizontally with a common "Y" set within a cross of St. George touching the inside circle at eight points. The common characteristic of all these marks was the word "Bayer" written vertically and horizontally with a common "Y" and set in a circle. (at p336)

3. Upon the outbreak of the 1914-1918 war, the Bayer empire was diminished by the expropriation of The Bayer Co. Ltd. and its liquidation. This was followed by a similar expropriation of The Bayer Co. Inc. of New York when the United States of America entered the war. At the conclusion of the war a new Bayer empire arose when an American company, Sterling Products Inc., acquired the shares in The Bayer Co. Inc. of New York from the United States Alien Property Custodian and that company, in turn, acquired the trade marks of The Bayer Co. Ltd. (in liquidation). (at p336)

4. By 1923, however, the Bayer Company was seeking to re-enter the United Kingdom market and in that year an accommodation was reached between the Bayer Company and The Bayer Co. Inc. of New York which included an agreement for the formation of a new company in the United Kingdom. This agreement provided for the sharing between the parties of the profits of the company to be formed. On 26th May 1923 the new company, Bayer Products Ltd., was formed. In December 1925 the Bayer Company merged with other companies to form I. G. Farbenindustrie A.G., which forthwith adopted the Leverkusen Bayer Cross as the trade mark for all its pharmaceutical products, including those previously manufactured by the other merging companies. In 1926 an agreement was made between I. G. Farbenindustrie A.G. and The Bayer Co. Inc. which recorded that it was in contemplation that I.G. Farbenindustrie A.G. should acquire half the shares of Bayer Products Ltd., thus rendering unnecessary the profit-sharing provisions of the 1923 agreement. What was then in contemplation eventuated and Bayer Products Ltd. was then controlled for both shareholders by the Bayer division of I. G. Farbenindustrie A.G. The territory covered by the 1926 agreement included Australia and one of the provisions of that agreement was "with respect to all products manufactured by the I. G. or which I. G. has the right to market in the said territory" other than certain products "I. G. will bring the same to the Company and insofar as such products are capable of being exploited by popular advertising and are sold in individual packages or under trade marks or trade names and are adapted to be sold in drug stores and department stores, the Company shall be entitled exclusively to manufacture and/or sell the same. The Company must decide within six (6) months whether it will undertake the manufacture and/or sale of such products. If it is decided as aforestated that the Company shall not manufacture and/or sell the same, I. G. may cause the same to be marketed otherwise as it sees fit (but not using the 'Bayer Cross' mark or the word 'Bayer')". (at p337)

5. Bayer Products Ltd. appointed Fassett &Johnson Limited its agent for the sale of "pharmaceutical agricultural and veterinary products merchanted or desired to be merchanted by the Company in Australasia and New Zealand" and it was stipulated that "all products shall be sold by the Agents in or under the original cartons and labels of the Company and not otherwise". Thereafter, for some years, Bayer products were for the most part sold in Australia by Bayer Products Ltd. under the London Cross trade mark and labelled with the country of origin. In 1935, however, a change was made by agreement between I. G. Farbenindustrie A.G. and The Bayer Co. Inc. of New York, and it was in accordance with this agreement that the appellant Bayer Pharma Pty. Limited was incorporated with its shares held equally by I. G. Farbenindustrie A.G. and Sterling Products Inc. Like Bayer Products Ltd., the appellant was controlled for the shareholders by the Bayer division of I. G. Farbenindustrie A.G. It was part of the agreement relating to the incorporation of the appellant that Bayer Products Ltd. should assign the goodwill of its business and its trade marks in Australia to the appellant. This, however, was found to be impracticable and the appellant, notwithstanding the sale of some goods under the London Cross trade mark, soon carried on its business using the Leverkusen Bayer Cross trade mark. So it was that the policy adopted for Germany ten years earlier was applied in Australia. It is not necessary to go into details of the trading which followed this charge but, in general, bulk Aspirin and A.P.C. supplied by I. G. Farbenindustrie A.G. was compressed into tablets in Australia and put in packets with labels carrying the Leverkusen Bayer Cross and the appellant's name. Other products were imported and sold in packets labelled with the Leverkusen Bayer Cross and bearing the appellant's name printed either upon the packet itself or upon stickers covering the name of the overseas manufacturer printed on the packet. In this way it was hoped to make the Leverkusen Bayer Cross distinctive of the goods which the appellant distributed. (at p338)

6. Soon after its incorporation on 18th December 1935, the appellant unsucessfully sought to register in Australia the Leverkusen Bayer Cross as its trade mark. In 1938, a publication, Fifty Years of Bayer Remedies, circulated in Australia by the appellant demonstrated unquestionably the correctness of the refusal, for it showed indisputably that the Bayer Cross was not a local mark identifying the goods of the appellant but was the trade mark of all the pharmaceutical preparations of I. G. Farbenindustrie A.G. This publication contained this statement : "It is customary to regard an industrial organization as a business concern. If the activities of the pharmaceutical department of 'Bayer' depended only on the amalgamation of known drugs and remedies produced elsewhere into a combined product, which actually any doctor could have prescribed, then 'Bayer' could make no other claim than to be a business concern. The high ethical objects to which the work of the scientists in the 'Bayer' laboratories is devoted, the outstanding successes achieved and the consequent furthering of scientific knowledge, however, compel us to form an entirely different judgment. A factory is usually something impersonal, and if the word 'Bayer' has become a personal designation, it must cover special values and accomplishments. It is not the many preparations and their wide range of usage which created the standard name of 'Bayer' products, but rather the scientific basis on which they are produced, and the strict investigation which all new preparations have to undergo before they are introduced into daily practice. The minute care which is taken in manufacture has earned for all 'Bayer' products the reputation for reliability which is fitly expressed in the well-known symbol." It is clear that in 1939 the Leverkusen Bayer Cross was a manufacturer's mark and was not distinctive of goods which the appellant might sell in Australia. (at p339)

7. Upon the outbreak of war on 4th September 1939, the shares owned by the Bayer Company were seized by the Controller of Enemy Property and, in 1958, those shares were sold by the Controller to Sterling Products Inc. The appellant became, therefore, a wholly-owned subsidiary of the Sterling Company of the United States of America. The respondent, for its part, claims to be the successor of the Bayer Company through I. G. Farbenindustrie A.G. by a somewhat involved succession. At the end of the 1939-1945 war, I. G. Farbenindustrie A.G. was dismembered and dissolved by the Military Forces of the Allies in occupation of Germany. Upon that break up and dissolution, the pharmaceutical division was itself broken up and so much of it as was in Germany and had come into I. G. Farbenindustrie A.G. from the Bayer Company was carried on under the name Farbenfabriken Bayer until it was transferred to the respondent Farbenfabriken Bayer Aktiengesellschaft, a company formed in Germany for the purpose of taking such a transfer. This was effectuated by Order No. 77 dated 23rd March 1953 and by an assignment from I. G. Farbenindustrie A.G. (in liquidation) dated 24th March 1953. It is by reference to these events that the respondent's claim to be the successor to the Bayer Company somewhat insecurely rests. However that may be, the contest here is between two rival "Bayer" companies. (at p339)

8. It is now necessary to return to the outbreak of war in 1939, which, of course, revolutionized the position of the appellant. In particular, the control of I. G. Farbenindustrie A.G. disappeared ; the supply of German products ceased ; and the company developed products of its own having nothing to do with I. G. Farbenindustrie A.G. - for example, Monacrin. It is upon what happened between 1939 and 1949 that the appellant relies to show that the Leverkusen Bayer Cross had by November 1949 become distinctive of goods which it sells. The strength of its contention stems from what must have been common knowledge during the war - that is, that goods sold in Australia under the Leverkusen Bayer Cross trade mark, except for stocks on hand at the outbreak of war, could have no connexion with Germany and, in particular, no connexion with the Bayer division of I. G. Farbenindustrie A.G. Anybody who with good reason in November 1939 associated the Leverkusen Bayer Cross upon goods in Australia with the Bayer organization in Germany could not, as the years went on, have reasonably continued to do so. Furthermore, during the war years and in post-war years, the appellant continued the attempt, begun in 1936 by the use of labels and stickers as already narrated, to associate the Leverkusen Bayer Cross with itself to the exclusion of any other person. To this attempt there was, however, always one reservation, namely, the intention of the appellant to keep for its goods the benefit of the long-standing international manufacturing reputation associated with the Leverkusen Bayer Cross. Accordingly, it was characteristic of its advertising that it used the words "the Original and Genuine" in relation to products described as Bayer products and to assert that such products are "endorsed by physicians all over the world" and are "true to the Bayer Standard". Furthermore, rather than assert that the Leverkusen Bayer Cross merely indicated the goods of the appellant, it was common for the appellant to assert that the mark indicated Bayer manufacture. So, for instance, it was claimed that Aspirin sold under the Leverkusen Bayer Cross was "the Bayer manufacture of Monoaceticacidester of Salicylic acid". It seems to me that both during the war and afterwards the appellant was seeking to derive advantage from the statement or suggestion that what it sold under the Leverkusen Bayer Cross were goods backed by the long-standing international manufacturing reputation of Bayer. It was unwilling to allow the reputation of Bayer products in Australia to rest merely upon identification with itself and it desired to keep to the fore their association with German "Bayer" ("the Original and Genuine") with its international manufacturing reputation. The last sentence from the quotation I have already made from the 1938 publication conveniently enough summarizes what the appellant was still asserting, viz. "The minute care which is taken in manufacture has earned for all 'Bayer' products the reputation for reliability which is fitly expressed in the well-known symbol" - that is, the Leverkusen Bayer Cross. This was the case not only during the war but after the war when it could have been possible that some of the goods sold in Australia under the Leverkusen Bayer Cross came from Farbenfabriken Bayer or from the respondent or from some other Bayer organization. In these circumstances, it is not surprising that a number of reputable medical and pharmaceutical witnesses should depose that in November 1949 they associated the Leverkusen Bayer Cross with goods having some connexion with the German Bayer manufacturing organization. Counsel for the appellant severely criticized some of this evidence but, having examined it in the light of the appellant's own advertising, I do not think it was evidence that Kitto J. should have discarded as unreasonable. The fact that such beliefs were held in 1949 was in some measure a tribute to the success of the appellant's own endeavours to give its products the longstanding international reputation for skilful and reliable manufacture associated with the Leverkusen Bayer Cross. Kitto J., after an exhaustive review of the evidence, found as follows:

"Now, the evidence satisfies me that in 1949 there was a wide-spread belief that the respondent was the Australian distributor of all 'Bayer' products of the classes here in question. To persons who held that belief it logically followed that goods of those classes would not be likely, under existing arrangements, to carry the Leverkusen Bayer Cross unless they had come onto the market through the respondent. But the evidence also satisfied me that in 1949 many persons, even though they held these beliefs, thought that the significance of the Leverkusen Bayer Cross was that the manufacturer was a 'Bayer' concern, and in the fact of its being a 'Bayer' concern they saw their guarantee of quality" Ante, p. 305.

But to my mind the evidence showed even further that in 1949 a body of professional persons did not hold the belief that all Bayer products sold in Australia under the Leverkusen Bayer Cross came from the appellant. There were witnesses who believed in 1949 that products sold under the Leverkusen Bayer Cross were the goods of German Bayer and did not regard the cross as identifying the goods of the appellant - for example, Mr Orr, Mr Scammell, Dr Noble, Dr Straede and Dr Eddy. His Honour's final conclusion was :

"To my mind the evidence I have discussed makes it quite impossible to conclude that by 1949 the Leverkusen Bayer Cross had become distinctive in Australia of goods distributed by the respondent. On the other hand, the evidence establishes in my opinion that a considerable number of people in this country would have been misled, or at least confused, if in 1949 the cross had been applied by the respondent to goods distributed by it but having no claim by reason of manufacture to be called 'Bayer' goods" Ante, p. 314.

The appellant is, of course, a Bayer concern and it would have been sufficient for it to have shown that the Leverkusen Bayer Cross had by November 1949 become identified with its goods to the exclusion of all others, notwithstanding that those who accepted that identification may, by reason of earlier trading, have been mistaken about the precise connexion between the appellant and those goods : cf. Trade Marks Act 1955, s. 118. However, to show that the cross had become its mark in Australia differentiating its goods from those of others, including other Bayer concerns, it was, having regard to the history of the mark, necessary for the appellant to establish that the reputation of the mark in Australia was no longer that of high-quality manufacture by a long-established business operating throughout the world, but had contracted to an indication that the goods sold thereunder in Australia were the appellant's goods. It was at these points that I think the appellant failed. (at p342)

9. Accordingly, I agree with his Honour's finding that the use of the Leverkusen Bayer Cross in Australia in the period from 1939 to 1949 did not render it distinctive in this country of the respondent's goods and that that lack of distinctiveness would, in the circumstances of this case, make the mark one the use of which would be likely to deceive. (at p342)

10. The conclusion that the Leverkusen Bayer Cross was not in 1949 distinctive of the appellant's goods makes it unnecessary to consider whether the Registrar of Trade Marks was in error in deciding, as he did, that a special order under s. 16 (1) (e) of the Trade Marks Act was unnecessary and whether, if it were necessary and its absence could be relied upon in opposition proceedings, it could be made by the Court. Such a special order would not be made unless the mark was adapted to distinguish the goods of the appellant from those of other persons. (at p342)

11. It is, however, necessary to consider two objections made by the appellant to the respondent's Notices of Opposition. These notices were dated 11th June 1952 and were lodged with the Registrar on 12th June 1952, the day before the latest time prescribed by s. 38 expired. The notices were signed on behalf of the respondent "by its Agent - Arthur S. Cave". The writing appointing Mr Cave as the respondent's agent, however, was dated 20th June 1952, and it is now contended that, accordingly, the Notices of Opposition were ineffective to support the respondent's oppositions and the appellant was entitled to registration in accordance with s. 47 of the Act. It seems to me, however, that the date upon which Mr Cave was authorized in writing to sign Notices of Opposition on behalf of the respondent was a matter not really in issue before Kitto J. and the question of fact was not investigated. Furthermore, there was the statement of the Registrar in his statement to the Court which forms part of the evidence in the proceeding before the Court (High Court Rules, O. 66, r. 7) that "there was lodged with the said Notices" (that is, the Notices of Opposition) "an Appointment of Agent appointing Stanley Cave as Agent of Farbenfabriken Bayer Aktiengesellschaft". In these circumstances, if the objection was open upon opposition proceedings, it is not one to which effect should now be given. It was squarely raised for the first time upon appeal, for before Kitto J. any consideration which was given to the matter was directed to a different objection, namely, that Mr Cave's appointment was unlawful by reason of the Trading with the Enemy Act 1939-1947. As to this matter, I agree with Kitto J. that Mr Cave's appointment by the respondent in June 1952 was not unlawful. (at p343)

12. Finally, I agree with Kitto J. that the objections to the present respondent's appeals to the Court pursuant to s. 45 of the Trade Marks Act 1905-1948, based upon the supposed invalidity of that section and upon the further submission that s. 5 (4) of the 1955 Act did not preserve the appeals which the appellant would have had had the Registrar's decision been given while the earlier Act was in force, ought not to be sustained. (at p343)

13. For the foregoing reasons, I am of the opinion that these appeals should be dismissed. (at p343)

WINDEYER J. I have had the advantage of reading the judgment of my brothers Taylor and Owen. I entirely agree in it. It would therefore be superfluous for me to discuss at any length the evidence that Kitto J. had before him. Taken as a whole it leads, it seems to me irresistibly, to his Honour's conclusion that, as he expressed it, "at the outbreak of war in 1939 the Leverkusen Cross meant to a substantial portion of the community in Australia either primarily or exclusively a connexion by reason of manufacture with a 'Bayer' organization, either German or at least not purely Australian, and only secondarily and consequentially (when it meant it at all) a connexion with the respondent as the local distributor of that organization's products". No doubt the Bayer Cross and the name "Bayer" did not convey the same impression to everyone ; and no doubt too the meaning that the symbol and the name conveyed was for many people imprecise if they stopped to consider it closely. But a general impression such as Kitto J. described was widespread. And it had been largely brought about by advertising matter put out by the appellant or by its predecessor in business, Bayer Products Limited, and by statements on packages of "Bayer preparations" or "Bayer remedies", as the appellant described them. (at p343)

2. In the years 1938 and 1939 many persons in Australia were supplied through the appellant with a booklet, Fifty Years of Bayer Remedies, printed in Germany. Those who read it, and doubtless many did, would have noted in it an emphasis on the Bayer Cross as indicative of a world-wide organization, "proclaiming the word 'Bayer' as a symbol uniting the head office in Leverkusen with the branches scattered throughout the world". They would have seen too the statements that "the minute care which is taken in manufacture has earned for all 'Bayer' products the reputation for reliability which is fittingly expressed in the well-known symbol" - and "All our pharmaceutical products bear the 'Bayer' Cross as a hallmark of their purity, their exact scientific basis, their clinical probity and, in short, of their excellence and reliability". Up to the time of the war these statements, and there were others like them in other circulars, necessarily operated on the minds of many members of the public, including medical practitioners, apothecaries and pharmacists. But it was urged that all this was obliterated by the war. The appellant's contention is that the use of the Bayer Cross and the name "Bayer" on goods marketed by it after 1939 on which its name and address appeared dispelled memories and earlier associations of the word and the symbol - that the symbol and the name had by 1949 become distinctive in this country of the appellant's goods. On this basis the appellant claims that the Bayer Cross should now belong to it, that it should be granted an exclusive right to use it. I agree with what Kitto J. said as to the unfairness of permitting such a result in the circumstances. And, more importantly, I think the evidence convincingly supports his Honour's two conclusions of fact, first, that the use of the Bayer Cross by the present appellant (the respondent in the proceedings before him) from 1939 onwards did not render that mark distinctive of its goods : secondly, that its use by the appellant as its trade mark in Australia would be deceptive in the sense that word has in trade mark law. The appellant seems to have been well content to get, and not to disclaim in any way, the advantage of the reputation that before the war the word "Bayer" and the Bayer Cross gave to goods that bore them. Indeed it even did something to preserve, notwithstanding the war, the impressions associated with the name and mark. For example, during and after the war Aspirin was sold by the appellant in packets which in their general get-up resembled those in which Aspirin of German manufacture had earlier been sold. These packets were labelled as "Bayer-tablets" of Aspirin, with the word "Genuine". They had the Bayer Cross on them and also a statement that this mark "indicates Aspirin of the Bayer Manufacture". (at p345)

3. The appellant and its predecessor in business in Australia sedulously fostered in the past an impression of the significance of the word "Bayer" and of the Bayer Cross. Their success in this now stands in the way of the appellant being allowed to appropriate the Bayer Cross to itself. (at p345)

4. The appeals should therefore be dismissed. (at p345)

Orders

Appeals dismissed with costs, including costs of Registrar of Trade Marks.