New South Wales Dairy Corporation v Murray Goulburn Co-operative Company Limited

[1990] HCATrans 88

,~

IN THE :HIGH COURT OF AUSTRALIA

Office of the Registry

Sydney No S42 of 1990

B e t w e e n -

THE NEW SOUTH WALES DAIRY

CORPORATION

Appellant

and

MURRAY GOULBURN CO-OPERATIVE

COMl'ANY LIMITED

Respondent

MASON CJ
BRENNAN J
DEANE J

DAWSON J

TOOHEY J

GAUDRON J

Dairy(2)

McHUGH J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON THURSDAY, 3 MAY 1990, AT 10. 01 PM

(Continued from 2/5/90)

Copyright in the High Court of Australia

ClT2/l/SH 57 3/5/90

MASON CJ: Yes, Sir Maurice.

SIR MAURICE:  Your Honours, in an endeavour to expedite the

matter which, I gather, is Your Honour's wish, we

have written out in rather fuller form that usual

what would be our reply and our argument on

section 82. Could I hand those to Your Honours?

They also deal with the questions asked of us by

Justice Dawson and Justice Gaudron.

We have put in, in addition, the reference to

BOLTON AND BEANE in the Commonweal th Law Reports and

the reference to the judgments of Your Honour

the Chief Justice, Mr Justice Wilson,

Mr Justice Dawson, Mr Justice Dean~ and

Justice Gaudron dealing with the topic that I

' cited the case for.

MASON CJ:	Sir Maurice, whilst you seem to be somewhat
prescient in ~nowing the state of my mind, I would
not wish it to be thought that we, in any way, wish
to truncate the oral argument that you might wish to present.

SIR MAURICE:  No, Your Honour. I did not think Your Honour

wished to truncate it. All that we thought, perhaps,

seeing that there is already a written argument, that

it would be quicker and perhaps more convenient to

Your Honours at the expense of some perhaps length

if we were to hand this up to Your Honours.

MASON CJ:	Yes.
SIR MAURICE:	The first page, then, deals with - in paragraph 1

there is just the reference to BOLTON's case;

paragraph 2 deals with the history that I have
referred to but I think, perhaps, it may not have
been with sufficient clarity but we iust mention

the history of the amendments and then in

paragraph 2, where we have the Knowles committee

which reproduced section 114 in clause 12 and then

you have the change in the Dean committee and
we have referred to that at paragraph 3.	Then,

we have endeavoured to deal with the question,

first, of Justice Gaudron about section 28(a). I

think this is transcript 38 and I think it is also

mentioned on page 40.

(Continued on page 59)

ClT2/2/SH	58	SIR M. BYERS, QC	3/5/90
Dairy(2)

SIR MAURICE: (continuing):  Your Honour was saying to us is

not user by two people of similar marks also special

circumstances, or rather more precisely, why is it

not, and what we have started off by saying,

is that why the mark was deceptive was because the

use of the mark MOO would call to mind MOOVE and

thus would steal the reputation of the appellant.

That ·is what we have endeavoured to state in the

first one~ Section 28(a) prohibits the registration

of a mark, the use of which would be likely to

deceive or cause confusion. Between 1978 and 1988

the MOOVE mark had been used and promoted by the

appellant in connection with flavoured milk. This

resulted in a significant reputation and goodwill

in the name MOOVE in connection with flavoured

milk.

When the respondent commenced in 1988 to use

the mark MOO in connection with flavoured milk,
the aural similarity of the two words meant that
use of the respondent's mark suggested the

appellant's mark and hence the appellant's product.

It was in this sense - - -

DEANE J:  Sir Maurice, if that be right, why is it not that

your client's mark should never have been registered

in respect· of the goods to which the MOOVE mark

related in that, if what you say is right, your mark

used in relation to the goods in respect of which

a registered mark had been registered would cause

confusion if that registered mark was used in

relation to the goods in respect of which it had

been registered?

SIR MAURICE:  Your Honour, it was registered - in fact MOOVE

was registered and there is no real explanation for

it. The MOO mark had gone out of use in 1974.

DEANE J:	I follow that, but is not the implication of your
argument that your client's mark should never have been registered in respect of milk?

(Continued on p~ge 60)

ClT3/l/HS	59	SIR M. BYERS, QC	3/5/90
Dairy(2)

SIR MAURICE:  No, Your Honour. We say there could be no

deception in relation to the use of the word

MOOVE, because there was no business or reputation in relation to MOO.

DEANE J:  But let us assume that the MOO mark had been

registered yesterday with the intention to start

up a business with no business and today the

question arises should MOOVE be registered in

respect of milk? Surely the answer would be no,

if what you say is correct.

SIR MAURICE:  That is so, Your Honour, but what we say - I

am sorry, I beg Your Honours pardon.

DEANE J: Well then was not that the position when MOOVE was

registered? If you wanted to you could have had

it expunged from the register if it was not being

used.in respect of that product, but while it was

on the register how could you be entitled to have

your mark registered if what you say is correct?

SIR MAURICE:  Because, Your Honour, in view of the extraordinary

circumstances, and they are extraordinary circumstances,

in the sense that the MOO mark, and I do not want to

go on repeating this but,Your Honour, the MOO mark

had ceased to be in use, hence there was no

reputation or anything of that sort. But then the

only relevant reputation was in relation to MOOVE,

so that when one applies the test in section 28 to

the use of the MOO mark, the answer is that the

MOO mark is deceiving because of the reputation of

the MOOVE mark. I know that does not answer

Your Honour's technological - - -

TOOHEY J: But do you not have to say, Sir Maurice, that at the time

of registration of the MOOVE mark, none of the

prohibititions:.in section 28 was applicable?

SIR MAURICE:  But they were not. No use - - -

TOOHEY J:	I am not suggesting one way or another, but that
must be the sort of answer that is given to
Justice Deane's question.

SIR MAURICE: Yes, but what I am endeavouring to say is

the use of MOOVE could not be deceptive, because

there was no use of MOO, in relation to milk or

in relation to anything. It had ceased to be used

in 1974.

CIT4/l/CM	60	SIR M. BYERS, QC 3/5/90
Dairy(2)

TOOHEY J: Well, that is simply to say that paragraph (a)

of section 28 did not stand in the way of
registration of your client's mark. Presumably

one goes through that exercise in respect of

paragraphs (b), (c) and (d). If your argument is
correct none of those paragraphs constituted a

barrier to registration.

SIR MAURICE:  Yes, Your Honour.

DEANE J: Well the implication of that is that you could have had

the same name registered in relation to the same

goods which is quite contrary to my vague recollections

of the trade mark law.

. ' SIR MAURICE: Your Honour's recollection does not seem to me to

be at all vague, if I may say so, with respect.

When Your Honour means we could seize MOO, as it

were, capture MOO, now Your Honour - - -

DEANE J:  i.Jithout getting the mark expunged.

SIR MAURICE:  Yes, Your Honour. Of course, an attempt was made

to expunge for non-use as Your Honour knows and the

only thing that prevented the MOO mark from being

expunged for non-use was because of certain advertising things we would say we were gearing up about and that was said to be a sufficient use of it. But, Your Honours,

so far as use of the mark causing confusion, we say

there was nothing, as Your Honour Mr Justice Toohey

said to me, nothing in section 28 that stood in the

way of the registration of MOOVE?

McHUGH J:  You would have to rely on section 34, would you not,

for the registration of yc,ur mark?

SIR MAURICE:  No, I do not think so. There is no concurrent user.

McHUGH J: . No, but it also talks about being subst:antially identical,

does it not?

SIR MAURICE:	It talks about honest concurrent user or other special circumstances - 34.
DEANE J:	It may have been special circumstances.

SIR MAURICE: Well, I suppose that is one way of looking at it,

Your Honour, when you say, "Well that mark has gone

out of use".

McHUGH J: Section 58 gives the registered proprietor exclusive

use of the mark subject to the Act?

SIR MAURICE: Yes, subject.

McHUGH J:  So section 34 would be your only gateway, would it not?

You are the later registra~t, are you not~

ClTS/1/LW	61	SIR M. BYERS, QC	3/5/90
Dairy(2)

SIR MAURICE:  Yes, that is true, Your Honour. We would say that

section 28 did not stand in our way.

GAUDRON J:: But is the implication of that not that section 28

only looks to the instant time of registration

which seems to be inconsistent with your argument

that section 28 has a future operation?

(Continued on page 63)

ClTS/2/LW	62	SIR M. BYERS, QC	3/5/90
Dairy(2)

SIR MAURICE: This Court has said it has a future operation.

GAUDRON J: If it has got a future operation, why do you

not say, "Is it likely to deceive or confuse in

the future?"?

SIR MAURICE:	Because there is no use of the MOO mark.
GAUDRON J:	But that assumes there never will be.

SIR MAURICE: It assumes there is not at the time. There

is no use - the point, as I think Your Honour

Mr Justice Dawson pointed out yesterday to me,

what 28 says is:

the use of which would be likely to deceive

or cause confusion -

so that it is talking about the use of the mark

and you have got two of these, you have to spread

it over the whole, as it were, gambit of the area

in respect of which it is registered but there

was no use of the MOO mark.

Your Honour, I am not saying that - let me

put it this way, Your Honour: it would be, in

our submission, strange to say that where you had

no honest concurrent user that the fact that the

mark was a dead mark which could deceive would

be, in itself, a special circumstance. It may

be that that is the only way that one resolves

the provision of section 34 but, really,

section 34 seems to be looking to user and it is

saying, "Well, if you have honest concurrent use

or special circumstances then you can get two marks

which are similar on the register''. That is what

it seems to be looking at.

(Continued on page 64)

ClT6/l/ND	63	SIR M. BYERS, QC 3/5/90
Dairy(2)

SIR MAURICE (continuing):  Your Honour, if there was

honest user,to pick up the question asked me

by Justice Dawson,then that situation is already

catered for by the expression "honest user". If

there is user but it is not honest then section 34,

in our respectful submission, cannot extend to it

and the reason is because it would be deceptive in

relation to the same or similar goods.

That is the risk.

DEANE J: Does not Justice Gaudron's question really point the finger at the problem if one looks back to the time

of registration and that is that on this scenario

of confusion on which you rely, the only basis upon

which the registrar could have registered your mark was if he assumed that a registered mark in respect of which no application for expungment was made

was not going to be used in the future in respect of

the goods to which it applied. I am not asking you

to agree,! am just wondering if there is an answer

to that?

SIR MAURICE: Well, I do not think there is an answer other

than that seems to be the case, Your Honour.

GAUDRON J: Well, does that mean you base your registration on 34?

SIR MAURICE: 

No, no, because there is no honest concurrent

user and I base my registration, I suppose, Your Honour,
upon the fact that it is on the register and there

has·been no attempt to expunge it.

GAUDRON J: 

Is it not the case though if the validity of your

registration depends on section 34 then58 would

really give you no right to even bring these

proceedings.

(Continued on page 65)

ClT7/l/JL	64	SIR M. BYERS, QC	3/5/90
Dairy(2)

SIR MAURICE:  Well, Your Honour, the validity of my

registration, in a sense, depends on section 61

which says after a certain period it is valid

and section 59, of course, which says:

In legal proceedings relating to a .....

the original registration ..... shall be

deemed to be valid unless the contrary is

shown -

that is section 59, as Your Honour will remember.

And then, Your Honour will remember section 60
which is an unusual sort of section but anyway,

and then section 61 which this Court was concerned

with in the BALI V BERLEI case.

So, in a sense, I can stand on registration.

I do realize what Your Honour is putting to me

but I think what I say is that I rely on section 59,

we are·there-- - -

:McHUGH J:  But, cannot you put your case this way: that as

at the time when you sought registration, you sought

in respect of MOOVE, there was MOO on the register,
but as at that time, they were not deceptively

similar?

SIR MAURICE:  Yes, well I have endeavoured to say that once,

I think, Your Honour.

McHUGH J:  Yes and as at that $~e,_ because you did not start

your adverti ;ing campaign in the way you did until
the following year, there was just nothing in

respect of the two marks which made them:

likely to deceive or cause confusion.

SIR MAURICE:  Yes, Your Honour. That is a more direct wav

of putting it.	Then, I think, unless Your .Ha'.1,Y..:i-s wish
to ask me further	questions about that, I would
proceed to go on.

We then deal with., in paragr;:i.ph 6 and

paragraph 7,) what we had thought,- rightly' or

wrongly, was at the back of Your Honour Justice Ca'..ld-;:-ori's

mind. I think, at page 40 of the transcript,

Your Honour did specifically ask me a question raising the question of special circumstances and I think I

have endeavoured to deal with that by saying that

the mere user is either honest or not.

ClT8/l/JH	65	SIR M. BYERS, QC 3/5/90
Dairy( 2)

SIR MAURICE (continuing):  And if it is honest it is

already catered for. If it is not honest, in the

sense that it causes deception, then you would

not - and I am thinking about marks that have been
used - think that section 34 would extend to a

mark which caused·deception. We would submit not

because that would be against the public interest
because.of, amongst other things, section 28(a).

It was page 41 that Your Honour Justice Gaudron

asked me.

Then, we endeavoured to deal with the question

Your Honour Justice Dawson asked me about concurrent
use. And we have assumed - I think Your Honours
really said it - that you had the two marks in
use and in relation to similar goods so they would
be deceptive. We ~ould submit, Your Honours, that

that would mean that each mark was vulnerable under

section 28, whether 28(a) or 28(d). So that either

owner of the mark or any interested person could

bring proceedings for expungment under section 22
because of confusion or the absence of equitable
protection deriving from confusion because the

Court would restrain the use of a mark which was

likely to deceive.

So then one would go to section 22 and the

answer is that perhaps section 22 confers a

discretion because it says:

a prescribed court may, on the application -

under (l)(b). And then the discretion, we woul i

respectfully submit to Your Honours, would be~

discretion that had to be exercised by reference

to, perhaps, the sort of considerations that

section 34 reverts to. So that if there is an

honest concurrent user then you would limit the

use of the mark. If there is not an honest

c~ncurrent user then one would have to go ands 1v.

"Well, are there special circumstances", and it

there are then you would then say, "Well, this

is a unique circumstance, therefore I will either

leave it on or take it off. If I do leave it on

what will make my decision critical - the factor

is public interest because section 28 is all about

public interest". And that is what we would s.:.1y,

with respect, in answer to what Your Honour has put

to me.

(Continued on page 67)

ClT9/1/ND	66	SIR M. BYERS, QC 3/5/90
Dairy(2)

SIR MAURICE (continuing): Now, that is all, I think, we would

wish to say in answer to the questions that the two

learned Justices put to us.

Can we, then, go to the question of invalidity

of the assignment and can I just read that out to

Your Honours, if Your Honours have not read it and then remind Your Honours of section 82 and

section 20.

We say that a common law trade mark was no more

than a right to succeed in an action for passing off.

The right derived from goodwill generated by the use

of the mark. Hence at common law a mark could only

be "assigned" by a sale of the business with which

the mark was associated and we have

given authority for that.

Now, the common law rule against assignment of

trade marks without goodwill was first adopted in the

Act of 1905 in section 58. So, they said, "You

could not assign it without goodwill". For the first

time in 1948 the rule was altered when a new

section 58 was introduced into the 1905 Act
permitting the assignment of trade marks with

goodwill or without goodwill in certain cases.

Finally, in 1955 the legislature included

section 82 which further widened the cases in which

it was permissible to assign a mark without the

goodwill of the business concerned.

Under section 82, the owner of a registered mark

has a choice; he may either assign the mark with the

goodwill of his business in which case it would be

effective to pass title to the mark and the business.

Alternatively, he may assign the mark without the

goodwill of his business in which case certain

consequences may follow as to the validity of the

mark according to whether the conditions described

in section 82(2) - which I will take Your Honours

to in a moment - exist.

But the effectiveness of the assignment depends

upon the intention of the parties. Their intention

is to be inferred from the instrument which records

the assignment. The instrument records and proves

the title of the assignee, and in order to transfer

the mark, the instrument must be lodged with the

registrar under section 20 who registers the

assignment and thus alters the particulars of the

public register of marks.

In this case - that is, the instant case - was expressed to be made together with the goodwill

of the Healthway business. In fact, as the trial

ClTl0/1/SH	67	SIR M. BYERS, QC	3/5/90
Dairy (2)

judge found, there was no such goodwill at the date

of assignment.

The Full Court held, nevertheless, the

assignment should be given effect, stating that the

intention of the parties to the assignment was to

transfer all the title of Healthway in the MOO mark

to the respondent - and we have given Your Honours

the reference to that.

Now, in the appellant's submission, the terms

of the deed of 29 September 1987 show the very opposite.

By that instrument the parties were attempting to

achieve a ~tatutory result; namely, the assignment

of the mark together with the goodwill associated with

'	the mark. Then, we refer to what Sir John Latham and
Sir George Rich said in FORD's case:

"A registered trade mark, the existence and

transferability of which depend entirely

upon statute can be assigned only if the

statutory requirement is satisfied."

In this case, the relevant statutory requirement was the requirement that the parties express themselves

in accordance with their true intention. Here the

expressed and true intention was to assign the mark
together with goodwill, and not without it. It
follows that the absence of the underlying goodwill
vitiated the assignment and we say the consequence
of this conclusion is that the assignment was invalid
because it did nnt comply with the statute and its

entry in the register should have been expunged.

The further consequence is that the activities

of the respondent in preparing to launch its

flavoured milk product before August 1988 which

were held sufficient to constitute some use of the

MOO mark were not so since such use was not that of

the registered proprietor and hence the mark should

have been expunged for non-use. (Continued on page 69)

ClTl0/2/SH	68	SIR M. BYERS, QC	3/5/90
Dairy(2)

SIR MAURICE (continuing):  Now, Your Honour, that depends really

on section 82 and section 20 and if Your Honours go

to section 82 - if Your Honours have the pamphlet it

is at page 34. Subsection (1) says:

Subject to this section, a registered

trade mark may be assigned and transmitted

with or without the goodwill of the business

concerned in the goods or services in

respect of which the trade mark is registered

or of some of those goods or services.

(2) Subject to the next 3 succeeding

sub-sections, an assignment of a registered trade mark without goodwill, whether before

or after the commencement of this Act,

is invalid if -

(a) the trade mark was not at any time in

use in good faith in Australia by the

assignor or his predecessor in title; or

(b) a substantially identical or deceptively

similar trade mark continues to be used by the

assignor, after the assignment, in relation

to other goods or services, where there

exists a connexion in the course of trade

between those goods or services and the

assignor and where those goods or services

are of the same description as those in respect

of which the trade mark has been assigned, or
of such a description that the public is likely

to be deceived by the use of the trade mark

by the assignor and assignee upon their

respective goods or services.

Now, the point, we say, of that,i$ that where there is

a bare assignment of a trade mark the legislation says

you cannot assign it so that the public will be deceived
and, therefore, the instrument that assigns it, which

has to be registered under section 20, under which the

applicant must prove his title to the satisfaction of

the register, he proves that only by the document.

TOOHEY:J:  Sir Maurice, if there is no disqualification arising

from section 82(2), then does it matter whether the

assignment is with or without goodwill?

SIR MAURICE:	Well, we, of course, say yes, it does.
TOOHEY J:	But in terms of the statute?
SIR MAURICE:	In terms of the statute. That is the whole point of

the argument. If it does not in terms of the statute,

then the argument fails. But what I am endeavouring

to submit to Your Honours is the statute says you can do both but it also says if you do one, then there are

certain consequences. Therefore, the statute envisages

ClTll/1/HS	69	SIR M. BYERS, QC 3/5/90
Dairy(2)

that you would do either one; that is assign with

goodwill or you assign without goodwill. It does not

envisage that you will assign with goodwill when, in

fact, you have no goodwill.

DEANE J: What if you said "with goodwill (if any)", and it is

not within subsection - - -

SIR MAURICE:  Well, Your Honour, in our submission, one has to

make the choice but they assign the whole lot, if I
may use that expression, when they say "goodwill,

trade marks", and so on.

TOOHEY J:  I am sorry, I do not understand that. I understand

an argument that where a disqualification in terms of

subsection (2) exists, then it is important to identify

whether the assignment is with or without goodwill but

if no such disqualification exists, does it matter

whether the assignment is expressed to be or in fact

is with or without goodwill?

SIR MAURICE: 

Well, we submit it does because of section 82(1)

but if Your Honour goes to section 82(1) which transforms
the previous rule, it says you can assign with goodwill
or or can assign without goodwill.

McHUGH J: 

But the assignment of goodwill is not registered.

It is only the trade mark.

SIR MAURICE:  Your Honour, I am just looking at the statute.

That is what it says.

McHUGH J:  That is all I am doing, you see.

SIR MAURICE:  Your Honour, that is what we say; it presents you

two alternatives and if you fall midway you have not

fallen anywhere. In other words, you have not

attracted the statute.·

(Continued on page 71)

ClT 11/2/HS	70	SIR M. BYERS, QC	3/5/90
Dairy(2)

TOOHEY J:	But how can you fall midway in terms of the
description in section 82(1)?
SIR MAURICE:	By saying, "I am assigning with goodwill",

when you are not.

TOOHEY J:  But it is not concerned with your intent. It is

concerned with the effect:did you assign with

goodwill or without? If you did not have any

goodwill you did not assign it, even though you

may have intended to.

SIR MAURICE: Well, Your Honour, the point, I suppose, if one

treats the subsection(l)ln that way then the

argument ~ails, but if you treat the subsection as

giving people a choice so that the instrument which

. '

proves their title under section 20, that has got

to state what is true, then there is a choice.

TOOHEY J:	There would be much force in that argument if
section 20 dealt with registration of goodwill,
but it does not say anything about goodwill.

SIR MAURICE: No,it says registrations of the assignment of

a trade mark.

TOOHEY J:	Then I am not clear, Sir Maurice, whether we-are to be
concerned with any of the disqualifications in
section 82(2).

SIR MAURICE:  No, we do not suggest they were met. I only use

those for the purpose of saying that there is a

choice posed by subsection(l). That is the only

point, and it is either one or the other. That

is what we say, and the reason why is that the

legislature has drawn the distinction. Now if
that is the - well, let me take the reverse case.

Suppose you assign just the .trade mark and in fact you wanted to assign goodwill as well, now what would you say you were doing? Would you be complying with section 82 or not? And we say

you would not be doing it, because section 82 gives - - -

McHUGH J:	Well why could you not just assign the trade mark
today and next month you decide to assign the

goodwill, maybe to somebody else?	Why could you
not do that?

SIR MAURICE: Well, I do not suppose there is any reason

why you could not do that.

McHUGH J:	They would both be valid, would they not?
SIR MAURICE:	Yes, well, :if the goodwill is associated with

a mark, then it would be difficult to assign the

goodwill separately from the mark.

CIT12/l/CM 71 SIR M. BYERS, QC 3/5/90

Dairy(2)

If - in other wordsyou have got to the stage where you are carrying on a business with a trade mark

and there is attached to that business and the

trade mark goodwill, and the Act having originally said, "Well you cannot assign the trade mark unless you assign goodwill", it is then said, "Well you

can separate the t;rade mark from the business - the

goodwill, in other words, provided subsections (2) and (3

applied here, but that they indicate that the

in cases where they are applicable, can be satisfied".

legislature meant to be serious when it in

subsection (1) says you can assign with or without

and that is the argument, Your Honour.

BRENNAN J:  If there was an instrument that assigned the

• trade mark with such goodwill, if any, as the assignor possesses, would the instrument be valid?

SIR MAURICE: Yes.

BRENNAN J: As what?

SIR MAURICE: 

Well, it would be valid as an assignment of

the trade mark. :Cn the event that there was goodwill,
it would be operative. to assign the goodwill as well,

so the assignment would be with the goodwill. In

the event that there was no goodwill then there

would be just the assigment of the trade mark because

that is what you set out to do, but thac is not

this case. At any rate, Your Honour, that is what

we say. Those are all the arguments we would wish

to put in-chief, if Your Honour pleases.

MASON CJ: Thank you, Mr Maurice.

(Continued on page 73)

CIT12/2/CM	72	SIR M. BYERS, QC 3/5/90
Dairy(2)

MASON CJ Yes, Mr Einfeld. Now, before you

proceed to your argument I should say,that the

Court is of opinion that the grant of special leave should be rescinded in so far as it relates to the proposed challenge to the validity of the

assignment and the Court takes that view on the

footing that the decision of the Full Court of the
Federal Court is not attended with sufficient doubt
to justify the grant of leave. Therefore, in

that respect, the grant of leave is rescinded.

MR EINFELD:  May it please the Court. Your Honours, we would

wish to commence by indicating the four broad

propositions that we suggest are appropriate for
the argument and just before doing that may I

just address, very briefly, one matter that arose

during the course of discussion a few minutes ago,

towards the end of Sir Maurice's argument with
respect to section 28, in connection with the question

of the proper registrability of my learned friend's

mark,the MOOVE mark, Mr Justice McHugh suggested that

one answer to the question of how MOOVE was able to be

properly registered may bethat when the appellant's

mark was registered there was nothing about the two
marks which was at that point of time confusing.

The problem for that proposition is that the very basis upon which the trial judge held in this case that the

two marks were confusing, and the use of our mark was

confusing with the other, was theaural similarity of

sound between the two marks.

McHUGH J:	That was because of the way they had packaged the mark.
MR EINFELD:	No, no, with respect, not. His Honour enumerated

the differences in packaging and said notwithstanding those differences because they were very marked - - -

McHUGH J: No, I am sorry, I used the word "packaging" loosely,

I meant market, the way they marketed the word

MOOVE and it was the way that it was pronounced that

made all the difference. Even then the trial judge

found it was a weak case of deception.

MR EINFELD:	Yes, but what he said was that the feature of all of the various characteristics of the two marks which
would be likely to cause the substantial number of
people to wonder was the aural similarity between the
two sounds which would have existed as at registration
as ·much as it did later. That is the - - -

McHUGH J: Well, not necessarily, it had that potential,no doubt.

MR EINFELD:	Well, the likelihood, we would say.
McHUGH J:	But it has to be the use of which would be likely to
deceive;until the mark was marketed, advertised in

ClT13/l/JL	73	3/5/90
Dairy(2)

the way it was, because·:,the view was open that it

did not occur to anybody at that stage.	Supposing
that they had accented it on	movement.

MR EINFELD:  Well, that is what happened in this case.

His Honour accepted that in one case the accent on

advertising,presentation,get up and the like of the

appellant's product was movement and that of our

product was a cow and its representation for children
and the like.and he said that notwithstanding those
differences the one thing that was likely to lead
to confusion was the aural similarity.

In any event, Your Honour, I only wanted to point

out that that was the ground and that ground, the aural
similarity between the two sounds was as much present

back in 1978 as it was now, although I appreciate what

Your Honour says about the othei matters.

Your Honours, the four broad propositions we wish

to put are as follows. We submit that when section 28

is read in its statutory context whether or not

paragraphs (a) and (d) are interconnected or

interdependent, confusion simpliciter will not be

enough to warrant removal of a registered mark where

the confusion between it and another registered mark

arises after registration~because the Act plainly

recognizes that there may be situations where two

registered·trade marks, one confusing with the other,

will remain on the register although both were, let

me assume, properly registered originally.

(Continued on page 75)

C1Tl3/2/JL	74	3/5/90
Dairy(2)

MR EINFELD (continuing):  Now, Your Honours will appreciate

that there are two important distinctions here.

The first is a distinction between questions of

confusion and distinctiveness, non-use or use,

at the time of registration, on the one hand, and
afterwards, on the other hand. At the time of

registration, the registrar can prevent two marks

which have a likelihood of confusion becoming

registered and there are various sections of the Act,

to some of which the Court has been referred, which

deal with that proposition whereas afterwards there are,

we say, quite seP._arate provisicns that .deal .with. removal for

non-use, distinctiveness and the like, after registration.

The second distinction, we say, ought be drawn

is between the BERLEI V BALI situation where, although

it was said that there was confusion after registration

none the less the significant point of the BERLEI
case was that the likelihood of confusion existed as
at the time of registration. That situation is to be

distinguished, we say, £ran the position where both

.marks were properly registered so that the likelihood

of confusion did not then exist and the situation where

that likelihood of confusion is said, as the

trial judge said here, to have arisen subsequently.

McHUGH J:  But, why? Why do you get that because it is

section 61(1) (b), is it not, that really requires

you to read section 28, notwithstanding its

language, to apply to the continuing use of the mark?

r1R EINFELD:	On one view, that is so.
r-1cHUGH J:	I mean, (b) talks about:

the trade mark offends against the

provisions of section 28 -

which is to be contrasted with (1) (a) which talks il:)<)Ut:

the original registration was obtained.

MR EINFELD:  Your Honour, let me accept that. The proposi:i.-.,n

that we will come to develop shortly is, that where
that provision applies so that there is a continuing

offending, as it were, one has two different
consequences where within that broad category the
confusion can be said to have arisen, or said to hJ.ve
been present, as at registration as in the BERLEI cJ.se

and, on the other hand, where the registration was

correct at the time but the confusion arose subsequently

which, let me assume for the purposes of argument,
was the case here putting aside whether or not MOOVE

was or was not properly registered.

Where we say the trade mark under attack was

properly registered, not in the BERLEI case because

it was said the registration of the BALI mark at time

of registration was in circumstances where even then the

C1Tl4/l/JH	75	3/5/90
Dairy( 2)

use of the mark was likely to cause confusion even

though it was a section 28(a) case and even though it

fell within section 61(1)(b) as continuing to offend

where the trade mark under attack was properly '

registered, as in the GE case, Lord Diplock's categories

come into play. The second of them - I will take

Your Honours in detail to them in a little while~-.

was that if the mark was likely to confuse or deceive

as at registration, even when you look at it at the

later point in time, it falls within that part of the

legislation where one can move for expungment, say

under the equivalent of our section 22(1)(b), because

the. entry was wrongly made in the register.

Where, on the other hand, one looks to the likelihood of confusion occurring after registration,

Lord Diplock says that it would only be wrongly

remaining on the register - and he means by that

within what is now section 28(d), .be disentitled from

protection in a court of justice - if the confusion arose from some wrongful conduct on the part of the

registered proprietor. I have taken a bit long to say

what is our first broad category of argument but that is

the matter we wish first to address.

The second matter, broadly speaking which forms

the base of our submissions, is that we say that our

mark ought not be removed absent blameworthy conduct or

some other disentitlement if it exists under (d), t~at

is in a court of justice based upon Lord Diplock's

third category formulation in the GE case, because ·.;.:::_

say the analysis under the English Act continues :o

apply with respect to the Australian Act~ that is,

that the section·· the 'predecessor in Australi3

of section 28, namely· section 114 of the

1955 Australian Act which reflected section 11 of ,_·:,.:::

English Act, continues in another guise in section ~3

and that the introduction of section 28 into the :,c:

Act did not effect any relevant alteration of the

meaning of the section. (Continued on page 77)

ClT14/2/JH	76	3/5/90
Dairy( 2)

MR EINFELD (continuing): The third broad proposition is that

we submit that the neither loss of distinctiveness

nor non-use is a factor which ca'l,ls for consideration

upon a determination of whether a mark has come

after registration to offend section 28. Loss of

distinctiveness we say has no place for

two broad reasons: firstly, because in the end,

on analysis, all that loss of distinctiveness will do is establish a likelihood of confusion and that takes

you straight back to 28(a) with all the problems that
it has in terms of it being read subject to 28(d) as

we say should still happen; and, secondly, in any

event, because we say removal for loss of distinctiveness
after the event is dealt with exhaustively by section 56
of the Act, as this Court has said in the BARRIER CREAM
case, the FAULDING case, and also because of the
distinction in section 61(1) between, on the one hand,

the validity of a mark after seven years unless it is

capable of being removed under 28, and, on the other

hand, in (c), unless at the time of the proceedings

it had lost its distinctiveness. So section 61

itself distinguishes between 28 on the one hand and

loss of distinctiveness on the other, and you go

back to section 56, which Mr Justice Taylor in the

FAULDING case said is the only basis for removal for non-distinctiveness after registration and we do not fall within that category.

Non-use, we say, is irrelevant, Your Honours,

for two reasons again: one, because it will merely take

you back to giving rise to a likelihood of confusion

and you are back within 28(a) and the question is whether

28(a) is subject to (d) or not; and, secondly, and

similarly we say, that non-use is also dealt with
separately than in section 28 by section 23 of the Act

which provides for removal for non-use expressly and

we say exhau~tively.

In the same context, Your Honours, because reference

has been made to it from time to time in the argument

thus far, we do submit to the Court that loss of

reputation as such is also not a relevant factor under this

Act and will not avail the appellant's cause, and

the reason for that is the introduction into the

legislation of section 82 which had a predecessor a

few years earlier by an amendment in 1948.

Section 82 for the first time - and it is important

to appreciate this,we.say, with respect to the whole

argument - wrought a very significant change upon the

preceding law as to trade marks in Australia. It

introduced for the first time the concept that one

could, whereas one could not previously, assign a mark

without goodwill. Much of the old common law in this

area, founded upon and indeed the previous legislation

provided, that one could not assign a mark without

goodwill. Where one can now assign a mark goodwill

C1Tl5/l/LW	77	3/5/90
Dairy(2)

the likelihood is that the reputation will remain

with the assignor, the use will be with the assignee,

so that there is a distinct likelihood of confusion

in the market-place which the Act, in fact, tolerates

and recognizes arising from that circumstance.

Because of that factor that one can now assign

a mark leaving the reputation with the owner who may

continue to manufacture goods, still armed with the

same reputation, but the new user or the new

registered proprietor can commence the day after

the assignment to use the mark, notwithstanding

the reputation is elsewhere, that one has to bear that

in mind when one looks at the overall context of the

Act to which we will come shortly, as a recognition

0£ the Act in that section as well as others that

after registration there can remain on the register

two confusing marks or two marks which may become

confusing. And our final submission on the point .is

that even if one looks at (a) on its own, totally

unrelated to (d), quite severed from it, quite

independent of it, none the less one has to find

something more than a mere likelihood of confusion

or deception under 28(a) before one can remove a

registered mark which was properly registered at the time.
Again, for the reasons wewill develop shortly1 because of

a number of sections, 58(3), 40(1), 82,which

recognize that there can be on the register confusing

marks.

(Continued on page 79)

ClT15/2/LW	78	3/5/90
Dairy(2)

MR EINFELD (continuing): If that is so, it stands directly in

the face of the proposition that merely because the

use of a mark is likely to become confusing, it

ought be removed under 28(a) after registration.

They, Your Honours, are the broad matters we

wish to put. May I come to the first of them
which, to some extent, overlaps the last and that is

that confusion alone will not be enough when one looks

at the statutory context to warrant removal under 28(a).

Section 28, of course, is the focus of attention

in this appeal but we submit it has been given, by

virtue of its significance in this case, a somewhat

misplaced emphasis in the overall context. We will

come back to the point, Your Honours; I propose to

revertto it but for present purposes I would wish to point out that, as it were, the immediate context of

section 28 in the Act itself points to its prime
function>if I can put it that way or its principal

function, as being a registration provision. That

is not the total answer to the submissions against

us but it is an important point.

If Your Honours remember the format of the Act

to which Sir Maurice referred earlier but, perhaps,

if I can take Your Honours back to it, Part III of

the Act which commences at section 14 is headed

"The Register of Trade Marks', and it provides in

sections 14 to 17 and 18 and 19 for various aspects

of registration. Relevantly, if one has a look at
sections 14 to 23, one sees these relate to particulars

of the register. If one goes to Part IV, which is

headed "Registrable Trade Marks", one sees that

sections 24, 25, 26 and, to some extent, 27 deal
principally with the matters which qualify or

disqualify a mark for registration in terms of

distinctiveness; 24, distinctiveness in terms of

Part A; 25; 26, the requirements for distinctivess;

27 even in so far as it talks of colour, it is for

the purpose of determining distinctiveness; 28 then

appears again in this context of what qualifies a

mark for being registrable; 29, 30 and so on of the

same Part all address questions, we say, of matters

the principal focus of which is at the time of
registration and, as we say, they deal with matters
with which the registrar in the normal course of

events would come to consider either with or without

opposition proceedings, at a time of opposition

proceedings or otherwise.

We submit that on a reading of that part of

the Act and, indeed, of the Act as a whole, the
section does not loom as is suggested in our learned

friend's written submissions, as "the" predominant,

"the" overriding, "the" principal section of the Act.

C1Tl6/l/SH	79	3/5/90
Dairy(2)

~suggestion that because it has a public interest

focus it, therefore, as it were, overrides all of the

other, as we would put it, competing statutory

provisions, does not emerge on a full and proper

reading of the Act. Particularly do we say does

it not have such a pivotal or central focus in its

application to matters of confusion between properly

registered marks where confusion arises afterwards

and, as we say, that is the fact that marks-this

case out from others.

We make the point that in such circumstances

it is inappropriate to give section 28 a meaning

which would have the consequence that every confusing

mark or every mark which could be said to be confusing

after registration is liable to removal because that

must be the consequence of our friend's submission;

where the use of any registered mark after registration

is confusing, it is susceptible to expungment under

section 28,as it is put against us.

Your Honours, there is nothing inherently

improbable at ali we say,in the notion that the mere

existence of confusion will not result in expungment.

The Act itself tolerates it in the same way that not

every case of confusion will lead to relief under

section 52 of the TRADE PRACTICES ACT or, more

particularly relevant for present purposes, lead

to an adverse finding in a passing off suit.

The tolerance of confusing marks was endemic

and inherent in the common law in the first
United Kingdom Act in 1875, in the subsequent Acts

and in this Act. Your Honours, we have given in our

written submissions a number of references to various

sections of the Act which we say demonstrate that

point.

(Continued on page 81)

ClT16/2/SH	80	3/5/90
Dairy(2)

MR EINFELD (continuing):  At page 6 we have listed them,

section 34 has been referred to; section 58(3), reference has been made already to 58(3) which,

clearly, we say, demonstrates the acceptability

of the notion that there will remain on the

register, or be on the register, two marks which

are deceptively similar and may we just remind

Your Honours that "deceptively similar" is defined

in section 6(3) of the Act to include the

circumstance where the use of a mark will be likely

to be deceptive or confusing.

Particularly, section 68, for example which

provides that in a passing off suit a registered
proprietor of a trade mark which is deceptively similar, that is

likely to caµse confusion, shall not have awarded against him damages

in certain circumstances; so that there will be

• •

circumstances in which he is liable to damages

for passing off but there will be others in which

he is not, recognizing again that the Act accepts

that there will be circumstances such as honest

concurrent user - in 34 - whereby confusion may

emerge from continuation on the register of two

confusing marks or one mark confusing with the
other.

And section 82 is one to which I have already

adverted in so far as it necessarily carries with
it, we submit, not only the possibility but the
very likelihood that where a mark is assigned without

goodwill confusion will be one consequence.

May I just make one comment in passing about

section 58(3). Sir Maurice suggested that the

purpose of section 58(3) was to "flesh out" - I

think his expression was - section 34, the honest

concurrent user provision. We submit,that is not

so. Your Honours will appreciate from a reading

of the provisions that 58(3) is not limited only

to such circumstances as honest concurrent user

but clearly recognizes that two registered

proprietors, whether falling within the requirements

of honest concurrent user for section 34 or

otherwise, none the less may have the protection

and continued title which 58(3) affords a

registered proprietor.

In this context, Your Honours, it may be

useful to point out that in so far as the appellants -

again, written submissions suggest that section 28

has merely a public interest focus or that the

Act, indeed, has merely a public interest focus,

we submit that the remarks of Mr Justice Dixon

in the SOUTHERN CROSS case ought to be borne and

considered in context. Your Honours will remember

the reference yesterday to ENO V DUNN suggesting

that what is important is not the interests of

ClT17/l/ND	81	3/5/90
Dairy(2)

Mr Eno against Mr Dunn but Mr Eno and the public,

in reliance of Lord Macnaghten's pronouncement

on that point.

What ought be borne in mind about ENO V DUNN,

firstly, is that they were opposition proceedings

at the time of registration and we say that after

registration where the registrar has considered

matters as to public interest and the like upon

registration but where there are two competing

marks both duly registered on the register then

there is a stronger case for consideration of the

interests of the competing proprietors. I do not

suggest for a moment it overrides the public

interest b4t none the less it is there.

•

I will hand Your Honours shortly incontext

of reference to the Dean Committee Report, the
second reading speech in relation to the introduction
of the 1955 Act, but, for what it be worth, in
the course of introducing the Act the minister

made reference to the fact that in the context of the introduction of the 1955 Act the law of trade marks had to be considered as having practical

importance not just for the public but also for

traders - I think he put it round the other way,

not just for traders but also for the public.

So there is, for what it be worth, some indication

in the Act itself and elsewhere that the competing interests

of traders do fall for consideration where they

are both properly registered.

MASON CJ:  It would be astonishing if those interests did

not fall for consideration.

MR EINFELD.~ Yes.

(Continued on page 83)

ClT17/2/ND	82	3/5/90
Dairy(2)

MASON CJ:  You hardly need a second reading speech to establish

that, do you?

MR EINFELD:  No. I accept what Your Honour says. May I turn

to the submission that subsection (a) and (d) ought

still be read as conjoined and not a disjunctive, and

I do so again in the context that whether with

conjunction between the paragraphs or without it

ought be borne in mind both at the prior common

law and since that mere confusion will not be

enough, something more is needed. In paragraph 10

of our written submissions, Your Honours, we have

made reference to what might now be regarded as a

prin~iple perhaps competing with that to which my
learned friends have referred in the BOLTON AND BEANE

case as a general proposition of construction.

We submit that a construction of section 28

must take place in its context, May I do no more

than remind Your Honours that Mr Justice Dixon in the AGALIANOS case was mindful of the proposition

that the purpose and policy of a provision is a

surer guide to the meaning of a provision than the

logic with which it was constructed, I think was

His Honour's phrase. One accepts that there are

problems even now with reading section 28(a) to (d).

There are obvious problems in its construction and,

indeed, even in its syntax, but when one seeks to

construe it we say that it ought be done bearing

in mind firstly the context and secondly the purpose

of the provision.

We submit that it is, even on the reading of the

literal terms of section 28, plain as Your Honour the

present Chief Justice said in the BERLEI case that

the construction of paragraph (a) must be influenced

by the constructin of paragraph (d). What I would

wish to do,.Your Honours, is to take Your Honours to

the section, and its paragraphs seriatim, and to make

reference to the equivalent provisions as they ,vere

before the change into the present language.

If one goes back to section 11 of the English

Act - perhaps the first step in the argument is this,

Your Honours, to compare the language of section 11

of the United Kingdom Act with section 114 of the
predecessor of the present Act. Section 11 of the

United Kingdom Act, of which I think Your Honours h~ve been given a copy, provides, if I may remind Your Honours, that:

It shall not be lawful to register a mark

..... which -

firstly -

would, by reason -

C lTl 8/1 /HS	83	3/5/90
Dairy(2)

may I interpolate - either -

of its being likely to deceive or cause
confusion or otherwise, be disentitled to

protection in a court of justice -

secondly, it shall not be lawful to register a mark

which -

would be contrary to law or morality -

thirdly, it shall not be lawful to register

any scandalous design.

If one then goes to section 114 of the 1955 Australian

Act the meaning is plainly the same, the language is

virtually the same, the order is slightly different.

It starts out with a scandalous design - I am not

sure that one ought to attribute any particular

significance to the fact it is put first rather than

last - it starts off with scandalous design and then

goes on to say - that is one. Secondly:

no mark the use of which would by reason

of its being likely to deceive or otherwise

be deemed disentitled -

et cetera. That is the second category. The third

category is:

the use of which would be contrary to law

or morality.

So they are more or less on a par. One comes then

to look at section 28(d) and my purpose in doing so is

to see if one can discern what the draftsman was

seeking to achieve by the form in which he put the language of the new section. We would accept the

proposition which fell from Your Honour Justice Dawson

yesterday that really the content of subsections (a),

(b) and (c) are species of the genus subsection (d).

The appellant contends for a contrary view and says

they ought be read completely severally. The key to the construction, we suggest, of section 28(a) is the location of the word "otherwise". For the

appellant's contention to be correct, looking at the

section on a literal level, perhaps a more mundane

level, the word "otherwise", if it were to appear at

all, to mean simply an alternative, that subsection (d)

was merely an alternative to subsections (a), (b) and

(c), would have to come before the letter (d).

(Continued on page 85)

ClT18/2/HS	84	3/5/90
Dairy(2)

MR EINFELD (continuing): So that one would read it:

the use of which would be likely to

deceive or cause confusion;

or otherwise,

(b) the use of which would be contrary to law;

or

(c) which comprises or contains scandalous

matter; or

otherwise or else

(d) which would otherwise be not entitled to

protection in a court of justice;

The "otherwise", we respectfully submit, plainly

is intended to pick up the same kind of concept

that was inherent in its predecessor, that the

if it arose in the circumstance stelilllling from confusion and deception, or otherwise some other reason.

disentitlement to justice had two there in the

DAWSON J: And on that argument it does not matter whether you

have got "or" or "and" there. The result is the same.

MR EINFELD: That is right. Well "and" would not quite do the

job. One would have to restructure it slightl:1

more than "and". It would really need to be (a).

or (b) or (c), whichever one of which, coupled

with (d).

DAWSON J:  "And" would not do the job because of (b) and (1..2).

MR EINFELD: Yes, that is a problem, I accept that.

Justice Lockhart said, "(a), (b) and (c) are .:.111

governed by (d)".	The problem for that is that
when goes back to the English section or the

section 114 of the Australi.ari Act, "scandalous"

and "lawful" were actually severed out from the

disentitlement to protection in the court of justice.

They were treated as separate requirements, but

in broad terms, yes, what Your Honour puts to me

is, we say with respect, is correct.

DAWSON J:	You are content with the word "or"? Your argument -
MR. EINFELD:	We can accept the word 11or11 as long as "otherwise"

is understood, as we say it ought be, to indicate

that (a), (b) and (c) are species of the genus (d). That

that is clear, we say,emerges from the provisions of

CIT19/1/CM	85
Dairy(2)

the Dean CoIImlittee Report and I want to take

Your Honour to those in a little bit more detail.

It may only be a very minor point, Your Honours,

but it did occur to me, in looking at the matter
again over night after hearing the argument
yesterday, that one possible explanation for the,
perhaps, not totally successful attempt to

resolve. what was described in the Full Court as the

. syntactical problems arising in the previous Act,

might emerge is one looks at the format of

section 24 again, not to the subject-matter of

the content, but merely the format. Where 24

provides that:

A trade mark is registrable in Part A

of the Register if it contains or consists of -

(a), (b), (c), (d) or -

(e) any other distinctive mark.

Plainly, (a), (b), (c) and (d) are varieties or

sub-categories of distinctive mark. It just may be

that in attempting to achieve a similar format to

that, the formula adopted in 28(a) was applied.

Your Honours have been referred, I think, to

one of the paragraphs of the Dean Conunittee Report,

which was paragraph 63, which dealt with section 28,

and its reference, I think, in the Full Court

judgment or perhaps the judgment in the RIV-OL\'.:D

case, to which Sir Maurice took the Court yest,:r,L:ly,

but may we hand Your Honours copies of some fuc:::	... er
extracts from the Dean CoIImlittee Report, becaus~

they highlight the importance of the statement i.~
clause 63 that there was intended to be no cr .. 1c1~e

of substance in the section. Your Honours, in :he

course of the Dean Conunittee Report, part IV, :: ::e

first page we have extracted, page 16, deals ' . .;i_::::

registrable trade marks, and may we just firstly

draw Your Honours' attention to paragraph 56 ,..;h i.c·:,

indicates that:

Part IV of the Bill deals with registrable

trade marks and differs considerably from the corresponding Part of the present Act.

'

57.      Clause 24 specifies the particulars ..... and

corresponds substantially with the provisions

in the present Act.

That is, suggesting no change of substance. 58 makes

the point that there is a new provision which is
to be contained in section 25. That is Part B of

the register.

CIT19/2/CM	86
Dairy(2)

61 says, again:

Clause 26 is new; it declares -

et cetera, so again highlighting the changes that

have taken place from the last previous registration.

63 is the subject clause, which says that:

in substance -

it has -

the same effect as section 114 of the -

previous -

Act.

Again, 64 says:

Clause 29 reproduces in substance the

provisions -

and highlights the fact that there will be -

certain additions -

and so it goes on.

(Continued on page 88)

CIT19/3/CM	87
Dairy(2)

MR EINFELD (continuing): And if one goes over the page -

we have given Your Honours a copy of the

balance of the committee report that deals with

that part of the Act and if Your Honours go

then to page 25, again just for the purpose of
highlighting the contrast of clause 63. Part X

deals with assignment of trade marks and in

particular section,as it became 82, 116:

provides for the continuance

of the old section 58 which was the prov1s1on
introduced in the 1948 Act by amendment to pick up
the equivalent section in the United Kingdom Act

which allowed for, for the first time, the

• assignment without goodwill. And 117 at the top of page 26:

When the provisions of section 58 were

introduced, it was recognized that they

departed radically -

et cetera. So we say that when one reads the

provisions of the report -as I say we do have the

second reading speech which incorporates the

report by reference, but we will not need to

trouble Your Honours with that, it is available -

it is plain that what was intended upon the

introduction of section 28 of the Act was not

some radical new construction of the principles

to be applied on expungment of marks under 28 as
that for which my learned friends contend and

as the Court of Appeal in England in the HI-BRED

case said that it did. We suggest that the HI-BRED

case does not represent the law in Australia and

the result, we respectfully submit, that if the

substance of section 11 in the United Kingdom Act

and section 114 of this Act continues, as we submit

it does, Lord Diplock's principles will apply so that,

as I will come to in a moment, post-registration a

registered proprietor, particularly a first registered

proprietor, registered proprietor registered first in

time and that is an important factor, will not be

expunged unless there is something that would
disentitle him in a court of justice; mere confusion

will not do, there will need to be wrongful conduct or some .of the other instances that can be found in the cases if a mark is libellous or otherwise in

some way disentitled to protection.

For the same reason, Your Honours, we say

that the decision in the RIV-OLAND case was correct

on this point and we ask Your Honours to bear in

mind two factors in that context. If it were

otherwise, that is if (a) were to be read

disjunctively from (d) in a sense of quite

ClT20/l/JL	88	3/5/90
Dairy(2)

unconnected with it, Mr Justice Bowen's reference

to the assiduous infringer which he gleaned

apparently from Mr Justice Windeyer in the earlier

BERLEI case and its adoption by the Full Court in this case are all correct, because the position otherwise would be that the Act would encourage the

intended infringer, or the infringer with intent to

take advantage of, for example, non-use of the

mark to quickly become registered, or even long

established use of the mark, as has happened in some

of the cases, quickly to become registered on the

register with impunity if something more than

blameworthy conduct or something alike were not

required.

Your Honours, in our written submissions we have

made the point - again it is only a small point and judgment of · Mr Justice Northrop in the RIV-OLAND

case, whilst His Honour does adopt the New Zealand

HI-BRED approach to section 28, none the less does

appear to be very much influenced by a consideration

of the proposition that on the findings below in

that case the use of the subject trade mark would have

been likely to confuse	as at the time of
registration.	So that in the RIV-OLAND case, which

was different, of course, on its facts from this

case - it was an application for registration - it is

important to bear in mind the three references

and we have given them in our written submissions

to the fact that Mr Justice Northrop seemed to be

much influenced by the fact that Lord Diplock's third
category just was inapplicable on its facts and that

may explain, perhaps more readily, the dissent.

Your Honours, that being so we ask, what

disentitling conduct within Lord Diplock's formula

was it of which the respondent in this appeal was

guilty. His Honour held that my client was not

guilty of any blameworthy conduct; that its use of

the name MOO was quite independent of the reference

to MOOVE - there is a lot of evidence as to the

circumstance in which that choice of name came about.

Indeed the proprietors of MOOVE, the appellant here,

had rejected it at one stage according to the evidence

as a name suitable for its product.

(Continued on page 90)

ClTZ0/2/JL	89	3/5/90
Dairy(2)

MR EINFELD (continuing):  If it matters, Your Honours~

Sir Maurice, I think, was asked the question earlier

but what, in fact, happened apparently, that when

the appellant applied for registration of MOOVE

somehow - unexolained, we do not know on the evidence -

the -existence on. the_ register of our. mark .was..	:
missed. That does not have particularly, perhaps,
~ny significance as a matter of law but, at least,
it explains what emerged in the discussion with
Your Honour.

GAUDRON J:  Mr Einfeld, you have lost me, I am sorry, to

this extent. I take it you say the question of

disentitling conduct arises by reading (a) and (d)

conjunctively.and I understand that it might but

that presupposes that the law says you can get relief

for disentitling conduct and you cannot get it ·

otherwise than for disentitling conduct or that the

common law said that or equity said that at some stage.

MR EINFELD:  Well, on our construction of the section, 28

says that. Section 28 says you will not lose your

mark for a likelihood of deception unless that use

would disentitle you:

to protection in a court of justice.

GAUDRON J:  Yes, well, what is the relevant principle of

law or equity which says confusion alone is not

sufficient to entitle you ,to relief?

MR EINFELD:  Well, in a passing off suit, for example, mere

confusion will not be enough. The most recent instance of that.· of which I can think is the TELMAK. case - - - ·

GAUDRON J:  Yes, I understand that, but you are reading (d)

then to be relief to which you are entitled other than

by reason of y~ur ownership of the trade mark?

MR EINFELD:  Yes, because disentitlement in a court of justice

is - well, I can deal with that in two ways·

disentitlement in a court of justice, we would say,

means not by reason of some other provision of this

Act in a court of justice. The section originally

said "in a court of equity". The change came about as

a result of the introduction of the "JUDICATURE .ACT when in the 1875 .Act or, I t.i.11:L."')k., .. thefollowing Act, the 1905 Act

in England, the word "equity" became "justice"

because of the changes brought by the .JUDICATURE ACT .

It adverts to general law principles and, as

a matter of general law and there are number of cases

that have dealt with this and we have given some of the

references, when one looks to determine the kinds of

characteristics which will disentitle one to

protection of one's trade mark at common law without

registration but since registered, on equitable

principles the courts, I have to say, have struggled to

ClT21/l/JH	90	3/5/90
Dairy(2)

find circumstances other than blameworthy conduct.

Your Honour might remember that one of the problems that

arose in this case in the Full Court.was that

His Honour Mr Justice Lockhart was, as it were,

accused of having said in the RIV-OLAND case that

the only circumstance where one could find that a

.properly registered proprietor would be disqualified

from using his mark in a court of justice would be if

he were guilty of some wrongful conduct and the

Full Court was at pains to say in this case that

His Honour did not mean that blameworthy conduct was

the only example. There may be others. The

Full Court in this case gave reference - I think it

is at page 199 of the appeal book - to some of the

cases which have dealt with the question.

• •

MASON CJ:  I think it is probably page 189.

MR EINFELD:  Yes, page 189. A representation as to the

nature of the goods, for example, the IMPERIAL TOBACCO case,

to which we have given Your Honours a reference in our

submissions, suggested that a mark which was libellous

was one which would not be entitled to protection in

a court of justice. In the GE case, itself, in

argument, and again we have given the passages in our

submissions - in the report in the Reports of ?atent Cases, the argument does not appear in the Weekly Law

Report but we have given the reference elsewhere, there

:ire some other examples cited. And then, at page 189

line 16 and following, the Full Court gives the
example in the WHEATCROFT case, for example, where:

the mark would impose a clog upon the means
of identifying the subject matter of

dealings between traders which operates

in restraint of trade.

That was a case where what was sought was registration

of a series of names which represented the names of

varieties of a rose, the flower,and it was said that

if the marks were registered it would prevent dealers i..~ flowers,

florists,1 using the varietal names of the flowers for	the purpose of their identification and trade and it
was said that might be the kind of inherent defect in
the name - if I can use that term - proposed to be
registered as the mark which would prevent or:

impose a clog -

to use the Full Court's expression -

upon the means of identifying the

subject matter of dealings between traders -

because if they could not use the varietal names of the

flowers because they have been registered by somebody

else they would not be able to carry on their trade.

51I~}{~~JH 91 3/5/90

MR EINFELD (continuing):  Those are the sorts of examples which

are given - I am sorry, Your Honour, one of the examples
in the GE case was, for example, if there were an

enforceable agreement between traders that one would

not register a particular name, that might not be

entitled to protection in a court of justice.

GAUDRON. J: But the question really is: is there something

somewhere that says mere confusion alone is not

sufficient? Now, if you turn - - -

MR EINFELD: Well, yes, Your Honour.

GAUDRON J: Apart from this case?

• MR EINFELD: Not in terms of mere confusion alone would

disentitle et cetera within the words of this

section but - - -

GAUDRON J: What I am really thinking of is there used to be

a tort, I dare say there still is, called slander of

title.

MR EINFELD:  Yes, and I think that is what Lord Warrington had

in mind when he used the expression "libellous" in -

GAUDRON J:  And one would have thought that that tort might be

committed by anything which tended to suggest that

the name of somebody else was really associated with

the other person and that that would be just mere

confusion.

MR EINFELD: No, Your Honour. Slander of title does not depend

upon mere confusion; it depends upon, as does

defamation, something more than merely suggesting

that -

GAUDRON J: That they do not own the title.

MR EINFELD:  Something more than the fact that there is some -

yes, something more than they do not own the title.

The distinction is drawn, for example, in the

section 52 context. In the BRIDGE case for one,
to which reference was made in the Full Court's

judgment below, that mere confusion will not be enough for breach of section 52 even though the

section says it may be likely to mislead or deceive.

You need something in the nature, as one does in a passing off suit as a matter of general law, than

the mere fact of confusion. I mean, the BRIDGE OIL

case is authority for that in the section 52 context.

The TELMAK case to which I will give Your Honours

the reference - we have not put it on our list but

it is TELMAK TELE PRODUCTS (AUSTRALIA) PTY LTD V

COLES MYER LIMITED, (1988) 12 Intellectual Property

Reports at 297 in which Mr Justice Gummow reviews

the cases suggesting that what is required for

ClT22/l/SH	92	3/5/90
Dairy(2)

passing off, at page 308 -

McHUGH J: Was that not overruled by the Full Court, that

decision?

MR EINFELD: Not on this point, Your Honour. It was - the

proposition that passing off requires something more

than mere confusion was long established.

McHUGH J:  Yes.

MR EINFELD: It has been in this Court in the TURNER V

GENERAL MOTORS case, 42 CLR; that one needs something

more in the nature of probable deception than mere confusion and His Honour, of course, in this case,

found that there was no deception - I should not say

that; His Honour did not find that there was deception

in the sense of something more than mere confusion.

His Honour found merely confusion and we would submit

that although there is no authority other than the

GE case for the proposition for that which Your Honour

is asking me in the sense of within its context of 28(d) at it then was, there is ample authority for the proposition that, as we say, confusion alone

will not be enough to lose your entitlement to

protection.

BRENNAN J:  But is it not right to say that deception or con~usion

alone were sufficient to disentitle unless it was
necessary in the adjustment of the rights inters~
of competing traders to allow that deception or

confusion to continue?

MR EINFELD:  I would put it slightly differently, with resp,·ct,

Your Honour, and that is to say unless in that

circumstance, one could find something wrongful about the c9nduct of the user of the mark under

attack for the reason that we have said before; that the various sections of the Act make plain

that the mere existence on the register of two

marks, one which will be capable of confusion rr	likely to cause confusion with the other, is nrt
something which will inherently lead to its remc~~l

from the register.

BRENNAN J: Yes, I see - - -

(Continued on page 94)

ClT22/2/SH	93	3/5/90
Dairy(2)

MR EINFELD (continuing): If the contrary proposition was so

it would mean that in every case where there are two

marks which are confusing - or to take up Your Honour

Justice Gaudron's point yesterday - both or either

may be susceptible to removal. And one has,

therefore, to grapple with the problem that the

appellant has sought to side step in this case, what

if one has two competing marks and assume there are

cross claims for removal or expungment under 28,

as, for example, one has a long history in the BERLEI

· case or in the GE case, some of the other cases -

long user - but assume there are cross claims because

the one is confusing with the other. The answer cannot

merely be that they both get removed because they

are confusing. The answer cannot be that you simply
focus on one and say the< use of it causes removal

without considering the other. Lord Diplock's proposition was that if they are both properly

registered one has to find something about the

use of their marks which disentitles one to

protection, whether - and I want to come back to

it in a moment to deal with the second part of

Your Honour's question - under the Act or

otherwise, but one has to be able to find something

more than that mere confusion because even if what

Your Honour Justice Gaudron puts to me is correct,

even within the ambit of section 28, one has to

accept, we respectfully submit, that the section

will have a different operation at registration

and after registration. If Your Honour is right - - -

GAUDRON J: That is a different point.

MR EINFELD: It really explains, with respect, what I was

just saying to Your Honour. If Your Honour is

right that confusion simpliciter will render

a mark susceptible to disentitle - - -

GAUDRON J: Well, I am not putting it to you. I just do not

understand why it does not.	I just do not
understand the history. If there is a history - - -

MR EINFELD:  There is a history and the history is apparent

from Lord Diplock's speech that at general law

the law always tolerated the use of honest concurrent

user so that one had a situation where, if there

were two people honestly using a mark, for example,

His Lordship's historical analysis in different

p.arts of the United Kingdom, the continued honest

use of both will not render the one anymore than

the other or even at all, liable to expungment

or loss of protection in a court of equity. From

that it emerges that when one looks then to see

what is the circumstance. in which mere confusion

will disentitle protection, one has to find

something more than confusion between two concurrent

ClT23/l/LW	94	3/5/90
Dairy(2)

marks, then at general law, now we would say

registered under the Act. Your Honour, that is the

historical derivation of the principle.

What I was going to say was to address the

second part and that is, even if it is correct that

mere confusion will disentitle so that on the

reading which we wish to adopt one satisfies the

test in paragraph (d), even that is not enough where

the mark has been properly registered and used

afterwards. It is enough where 28 operates at

registration because the registrar can look at the

matter and say, "Here is a mark, the use of which

in my opinion is likely to cause confusion.	I will
not register it".	But once it is properly registered

section 28 operates differently by virtue of the

fact, as we say, that the Act acknowledges that there

will be a continued use of confusing marks.

GAUDRON J: That arguments seems to have less difficulties

than the first because if you take your first

argument it would seem that the registrar must

be obliged to register both marks although they

be confusing if it can be said there has been honest

concurrent use - must be obliged, not does not ha\·e

a discretion under 34.

MR EINFELD:  I am not sure about that, Your Honour.

GAUDRON J: If you read them together to get that result

it seems to me they must follow.

MR EINFELD:  The problem is the very phrase to which

Your Honour adverted yesterday and that is the

use of the expression "special circumstance". It may be that that is, as it were, the cache

for that problem.

BRENNAN J:  Why is it that 34 does not give a discretion ~ ·,

register marks which are honestly and concurre:--: · :

used and 28 does not prevent any obstacle to tc.-.".

registration?

MR EINFELD:  No, 34 does,in the case of honest concurrent

user,give a discretion to the registrar by its t~c7S.

(Continued on page 96)

ClT23/2/LW	95	3/5/90
Dairy(2)

BRENNAN J: Section 28 simply does not apply.

MR EINFELD:	I am sorry?
BRENNAN J:	And 28, on your argument, simply does not apply.
MR EINFELD:' That would be so.	I mean, one of the points

we want to make is - when I come to it shortly -

when one looks at concepts of distinctiveness and

non-use and so forth, they are dealt with severally

in the Act, as is 28. 28 is a d~viasib~ whic~

the registrar may refuse registration if he is of
the view that it is ~onfusing to the extent that

it would be disentitled, et cetera. And on that

ground he can refuse registration.

Under 34, if ~here is honest concurrent user,

the registrar may register a deceptively similar -

ie confusing and deceptive under the definition

of "deceptively similar" in 6(3) - mark. So that,

under section 34, notwithstanding a mark clearly

offends section 28, it can be registered on the

ground of concurrent user or other special

circumstances.

BRENNAN J: That is proposition which I thought Justice Gaudron

was putting to you and if you put it that way that
notwithstanding 28 you can register under 34 you
must be attributing to 28(a) a construction which
is unaffected by the word "otherwise" in (d) bee 1·..1se

if you say that 28(a) is affected by the word

"otherwise" in (d)1 34 does not override it at ,1 ! l.

MR EINFELD:  No, it operates separately.

BRENNAN J: It operates separately.·

MR EINFELD:	But, Your Honour, that does not deny - what one does is one simply puts aside 28 altogether
in an honest concurrent user case.
BRENNAN J: That is right.
MR EINFELD:	That does not have the effect of saying that

when one does go to 28 one reads (a) as unqualified

by (d).

BRENNAN J: Perhaps we are furiously in agreement?

MASON CJ:  I think so.

MR EINFELD:  Yes, Your Honour. In any event, we ask the

question:  on -what ground could it be said, within

28, that our mark was to be expunged under (a),

read with (d) - no blameworthy conduct as His Honour

has held? Two other suggestions have been made,

ClT24/1/ND	96	3/5/90
Dairy(2)

one is a loss of distinctiveness and the other

one is our non-use. Can I deal with those in turn?

Mr Justice Gummow, at first instance, held

at page 109 of the appeal book that it would seem

there are really three bases upon which our mark

would be expunged - I think Your Honours were taken

to this passage yesterday. It starts at line 4, 109:

The mark of the first respondent was

one in respect of which it was not entitled

to relief in equity. This was not because

of any "blameworthy conduct" ..... Rather, there

was "otherwise" no entitlement to such

protection, both for want of the necessary

distinctiveness ..... and also as a consequence

of the lengthy period of use of MOOVE before

the commencement of use of MOO by the first

respondent. Further, use of the MOO mark

in relation to milk was likely to cause

confusion -

Picking up His Honour's language, it would seem

that His Honour was focusing, on the one hand,

on confusion and then, previously, on loss of

distinctiveness and use of the appellant's mark

coupled with our non-use.

Your Honours, it may be correct to say, as

the appellants do in reliance on a passage in
the case to which reference was made yesterday, that distinctiveness and deception run into one

another. That may be so. Indeed, Your Honours,

we say that a loss of distinctiveness really has

only any relevance because it will - its only

ultimate influence will be because it gives rise

to a likelihood of confusion or deception.

The consequence of that is that it merely takes the appellant no further than - - -

McHUGH J:  Can I just take you up on that language? You

just spoke about "likely to cause deception".

Is the expression "deceptively similar" the same

as "deceive or cause confusion"?

MR EINFELD: It includes it, Your Honour.

McHUGH J: It includes it because the definition of "deceptively

similar" in 6(3) of the Act is it is:

similar to another trade mark if it so nearly

resembles that other trade mark -

the emphasis is on "resembles". In 28 the emphasis

is on the use of the mark. That suggests a

distinction between the two expressions.

ClT24/2/ND	97	3/5/90
Dairy(2)

MR EINFELD: Well, that is not to say that the one will not

become the other, of course.

McHUGH J:	No, I am not putting it against you1i t just struck me that
-.

MR EINFELD: Yes. .That is· not to say that the one will not

become the other. I mean - - -

McHUGH J: No.

MR EINFELD: What Your Honour says, with respect, is right.

The mere existence of a deceptively similar mark

is not sufficient for expungment under 28, but

the use of them - - -

TOOHEY J:  But it is a justification for refusing registration

•

under section 33?

MR EINFELD: Yes,
McHUGH J: Which is another ground?

MR EINFELD: Well, that is so, but of course the two are not mutually exclusive. If at the registration stage the registrar were to _ form a view that the use of the mark would be likely to mislead or deceive

under 28, as qualified, he could refuse

registration because it may not remain on the

register. it may not be entered on the register.

McHUGH J: The only reason I pulled you up is that you have used the

general description "deceptive" when I think you

were talking about 28 and I am not sure that they

are the same thing.

MR EINFELD:. But the misuse of it by me is not to our

disadvantage.

McHUGH J: No.

MR EINFELD: If anything,it takes the matter further because

there are two bases upon which the registrar can

refuse; one is deceptively similar,33, the other

one is the use of which, et cetera, under 28.

I suppose if there is no use, no prior use or no

anticipated use, the mark could be still registered -

when I say"no anticipated use'.', no use which it is

anticipated would be likely to mislead or deceive, it

could still be refused on the ground under 33 that

it so nearly resembled,et cetera,and was therefore deceptively similar. But, Your Honour, in terms of

the distinctiveness argument, it is our submission,

that loss of distinctiveness is not a basis for

expungment of a mark under section 28 at all. If it

does anything, as we say, it merely goes to confusion

ClT25/l/JL	98	3/5/90
Dairy(2)

and takes you back to (a) and adds nothing to

it. If it is thought to be relevant in another

sense, in any other sense, we say it is apparent

from two sections of the Act that it does not

fall within the ambit of 28.	The first of them
is section 61 - - -

McHUGH J:	Why is it not evidentiary of deceit or confusion?
MR EINFELD:	Even if it is, that is my point, it will not take you any further ultimately than to a finding
of deception and confusion and you come back, simply,
to decide whether there is confusion within 28. His Honour said there was confusion because of the
aural similarity, what we say is that at most what
can  be said against us is that if loss of
distinctiveness and non-use are relevant, they will
merely be other bases for a finding under 28(a)
and therefore takes the argument no further. They
are not separate bases for expungment under 28,. but the reason we say even then that loss of distinctiveness is not a matter for consideration
under 28 at all, stems from a reading of section 61,
which is the section that gives validity to the
original registration after seven years except in
the enumerated circumstances, leave (a) aside,
(b) that the Act "offends" under 28 and (d) that it
has lost its distinctiveness. And, we submit,
the Full Court was right to say, that that gives a very strong guide that the several and separated reference to the existence after seven years of
a circumstance of offending section 28, on the one
hand, and on the other hand a loss of distinctiveness,
is a very strong indication that the two are separate concepts and the loss of distinctiveness is not to be considered as falling within section 28.

May I take Your Honours to the BARRIER CREAM

case. The decision of this Court in F.H. FAULDING

& CO LTD V IMPERIAL CHEMICAL INDUSTRIES OF AUSTRALIA

AND NEW ZEALAND, 112 CLR 537. (Continued on page 100)

C1T25/2/JL	99	3/5/90
Dairy(2)

MR EINFELD (continuing): This was a case in which it was

held that the use of the BARRIER mark in relation

to hand cream and such products was not distinctive

at the time of registration, even though matters

were being looked at after the event. But, if

Your Honours go to the passage in the judgment of

Justice Taylor at page 559, Your Honours will see

that reference is made there to section 56 of

the Act and if I can remind Your Honours, section 56

of the Act is the section which deals with the problem of removal of a mark from the register

if, as it were, it becomes generic or if it becomes

descriptive of the class of goods. At page 559

at about point 5, His Honour says:

Section 56 made its first appearance in

this country in trade marks legislation in

the TRADE MARKS ACT 1955. It was undoubtedly

modelled on section 15 of the -

United Kingdom Act -

The object of the latter section, in so far as

it relates to use of a word mark by persons

other than the registered proprietor, was, it

is said, "to remove to some extent the

difficulty experienced in dealing with

marks which had lost distinctiveness after

registration. Prior to the enactment of this

provision the mere loss of distinctiveness

of a trade mark after registration was not

thought to constitute a ground for its removal

from the Register and in the GRIPE WATER CASE

the defendant, which had used the plaintiff's

registered mark which, itself, was found to

have entirely lost its distinctiveness after

registration and before the commencement of

the proceedings, successfully resisted a claim

for an injunction in a passing off suit but

failed in its application for expungement of

The mark was, if may be observed, an old mark the mark and was restrained from infringing it.

and the provisions of section 44 of the English

Act of 1905 - "No registrat:ion under this Act

shall interfere with any bona fide use by a
person of his own name or place of business or

that of any of his predecessors in business, or

the use by any person of any bona fide description

of the character or quality of his goodsn - were
held not to apply to it. Some little doubt has

been thrown on the proposition that mere loss

of distinctiveness after registration was not
in England prior to 1938 a ground for the

removal of a mark from the Register but the
relatively few cases on the subject were discussed

CIT26/l/CM	100
Dairy(2)

by Mr Justice Wynn-Parry in the PAN PRESS

PUBLICATIONS CASE and his conclusions support

the view taken in the GRIPE WATER CASE.

However, in 1933 Mr Justice Mann in JAMES A.

JOBLING & CO. LTD. V JAMES McEWAN & CO. PTO.LTD.

held that the trade mark "Pyrex" should be

expunged from the Register on the ground that

since registration it had ceased to be

distinctive of the proprietor's goods and had,

since the expiry of the proprietor's patent
relating to such goods, become the name of or
purely a description of a type of product with

its own special properties and not distinctive of goods of the proprietor's manufacture. His

Honour referred to the fact that there was not in force in Australia any provision such as

that then to be found in section 6 of the

English TRADE MARKS ACT, 1919 but he considered that section to be "merely declaratory of the

existing law". But he does not seem to have

acted on this view: rather he found in section 53A

of the TRADE MARKS ACT 1905-1922 ..... sufficient

justification for saying that the mark wrongly

remained on the Register. His Honour considered

be fo·Jnd in IN RE SIDNEY ORD & CO. 1 s TRADE r'IA.RK that support for the course which he took was to

but, with respect to his Honour, I think this

proposition cannot be supported.

It was in this somewhat unsatisfactory

state of the law that section 15 of the English

Act of 1938 was enacted and I see it as a

provision intended to define exhaustively

what manner of use after registration of a

registered trade mark which is a word mark shall

or shall not operate to invalidate the mark. His Honour says, what manner of use after registration.

(Continued on page 102)

CIT26/2/CM	101	MR EINFELD, QC 3/5/90
Dairy (2)
MR EINFEID (continuing):

It is not to be invalidated "by reason only of the use after the date of the registration,

of a word or words which the trade mark contains

or of which it consists, as the name or

description of an article or substance". But

if there is "a well-known and established us

of a word as the name or description of an

article or substance by a person or persons

carrying on a trade in that article or substance,

not being use in relation to goods connected in

the course of trade with the proprietor or a

registered user of the trade mark", the

registration of the trade mark, so far as

• regards registration in respect of the article

of any goods of the same description, "shall

be deemed for the purposes of section twenty-two
of this Act to be an entry wrongly remaining in

the Register".

Then His Honour says:

This is the only kind of use after registration

which is to operate to invalidate the mark on

not open to the respondent to establish independently of s 56 that, merely because

the ground of loss of -distinctiveness.

the mark had lost its distinctiveness, it

wrongly remained on the Register.

Now, Your Honours, with respect, we say that that is
the correct statement of the law and properly indicates

the relevance of loss of distinctiveness after

registration. A similar expression of view may be

found in the judgment of Mr Justice Windeyer in the

KIMBERLEY-CLARK case, (1967) 118 CLR 84 where

His Honour says:

I would say first that it seems to me that the

words of s 28(d) refer to some characteristic

of the mark other than mere lack of

distinctiveness

possibly, he says:

to something intrinsically objectionable -

in the mark and the Full Court, in the court below,

at page 193 of the appeal book, apply what

Mr Justice Taylor said in the FAULDING case, in the passage starting at page 193, where the

Full Court, having dealt with non-use - I will

come back to it:

ClT27/l/SH	102	3/5/90
Dairy(2)

Non-use is not the only circumstance which may

cause a mark ..... to later lose -

its -

distinctiveness.

That, perhaps, is another interesting proposition,

Your Honour, because there Their Honours are

suggesting that non-use will not only be a matter

that goes to confusion but also to loss of

distinctiveness so it would take the appellant no

further than loss of distinctiveness which, we

say, has no relevance.

At page 193, then, at line 21:

Section 56 contains lengthy provisions which

deem certain word marks to be wrongly remaining

in the register for the purpose of s 22. This

section deals with the use of a word as a name or

description which has become generic, or the

use of a word which is the only practical

name or description of an article, substance the Trade Marks Act, 1955.

or service previously the subject of a patent.

Then there is the reference to the FAULDING case

which I have just read.	The Full Court says at
line 23:

Whilst Taylor J. dissented from the other

members of the court on a point of construction

under para 56(2)(a), what he said about the

exhaustive operation of s 56 is consistent

with the judgments of the other members of t.. '., ,, court,·although they did not discuss the roi 01t..

In KIMBERLY-CLARK CORPORATION V VEREI~[CTE

PAPIERWERKE SCHIKEDANZ & CO, (1967) 118 CLR 19

at 84 Windeyer J. considered the scope of -

the passage; that is, the passage I just read anJ he

dealt with paragraph 28(d) in the BERLEI case ag2in

and referred back to what was said in KIMBERLEY-CLARK.

Mr Justice Fox dealt with it in the HTX case, to which

referrince was, I think, made yesterday and in the

YORK TRADE MARK case, Lord Wilberforce said:

whether as regards Part A or as regards	"There is no provision in the Act of 1938 through a change in circumstances, it no longer
qualifies for registration -

under the equivalent of our registration prov1sLons on

the basis of distinctiveness.

ClT27/2/SH	103	3/5/90
Dairy(2)

MR EINFELD (continuing): Ker1y says at the top of page 196:

" ... it is clear that a mark cannot be
removed from the Register on the ground

that a change of circumstances has made

it no longer distinctive".

''Then, Their Honours proceed to set out the bases upon

which Mr Justice Gunnnow sought to distinguish

Mr Justice Fox's decision - I do not need, I think, to take Your Honours through that in detail but at

page 197, Their Honours accepting:

that issues of deceptiveness and the lack

of distinctiveness could tend to run -

\ \

together, say this at line 4:

We have already connnented on the possible overlap of these issues. It seems to us

that Fox J was well aware of this

possibility. With respect to the trial

Judge, we do not understand how the

recognition of the possibility that the two
issues may run together helps to resolve

the construction of section 28. In our view

Fox J was correct. The issue of loss or

distinctiveness is not one that is within

the subject matter dealt with by section 28.

May I just make a short connnent about Their Honours'

acceptance of the proposition, as we accept, that the

issues of deceptiveness and lack of distinctiveness

run together. We say that at point of registration

the sections that deal with distinctiveness are

sections 24, 25, 26 and 27 and the like. That which

deals with use rendering likelihood of confusion is

dealt with in section 28. Although the concepts overlap

so that various sections of the Act may come into play,

the sections operate separately, we say, as to

distinctiveness, on the one hand, and as to

confusion and the like, not a product of

distinctiveness, on the other and that is made clear

by the separate treatment of loss of distinctivenss
on one hand and offence against section 28 on the other

in the paragraphs within section 61(1).

Your Honours, for the same reasons the absence

of u~e of the MOO mark does not avail the appellant

in this case for the purpose of section 28. The

Full Court, we say, was right in the passage I just read to say that the relevance of non-us~ if it has

any significance for present purpose~ is in establishing

after time a loss of dinstinctiveness and that is to be

dealt severally for the reasons we have said. At the

most all that can be said against us is that it

creates a likelihood of confusion and falls within

section 28(a) but that is not enough for the reasons

we have aleady said.

ClT28/l/JH	104	3/5/90
Dairy ( 2)

The other reason why non-use,though, we say_

is irrelevant is because as with loss of distinctiveness

it is dealt with elsewhere in the Act than in
section 28. There is provision in the Act for
removal of a mark on the ground of an absence of use
and that is section 23 of the Act and this, of course,
was the relevance of Their Honours'findings that the

appellant failed in its attack under section 23 - the

mere failure is not relevant but there was an attack

launched under section 23; it did not succeed.

Section 23 provides that the court:

may, on application by a person aggrieved -

including the appellant -

order a trade mark to be removed .....

on the ground -

(a) that the mark was registered without an

intention in good faith -

or -

(b) that, up to 1 month before the date of

applicatinn, a continuous period of not less

than 3 years had elapsed during which the

trade mark was a registered trade mark and

during which there was no use in good faith

of the trade mark.

So that, the Act makes specific provision for removJl

of a mark not properly registered under (a) but un~L.:r Cb)

properly registered but where it has fallen into Ji.~·:se.

Your Honours, may I pose this proposition? '·'"':

us assume that the use of the MOO mark had cont in,_;'-.\

for a period of, say, two and a half years, not fr, 1-:

1974 to 1987 - 13 years - but, say, two and a half ·:.<1rs.

On an application for removal for non-use,	. foun,:~:1.1;
upon non-use which is the basis to which Mr Justi\.:·-·	·::7now
referred at page 109 of the appeal book, non-use r>~·

two and a half years, we would respectfully submit,

would be inadequate to warrant removal under the Ac:.

(Continued on page 106)

ClT28/2./JH	105	3/5/90
Dairy(2)

MR EINFELD (continuing): Where the Acthas specifically provided

for the consequences of non-use, proof of a period

of non-use for say two and a half or two and

three-quarter years would be inadequate and one

could not, as it were, in a section primarily

designed such as section 28 is to address the

situation as at registration obtain, as it were,

a removal by the back door on the very ground of

non-use dealt with specifically by section 23,

by virtue of suggesting that non-use would give

rise to loss of distinctiveness or otherwise to

the subject-matter of 28(a).

On the facts of this case there was a

non-use for more than three years but there was

use in good faith within one month prior to the

connnencement of the proceedings so that the attack

under 23 failed. In those circumstances we say

the Full Court was quite right to say that neither
loss of distinctiveness nor non~use were matters
falling for determination under 28, ·either within

the ambit of (a) or within the ambit of (d).

BRENNAN J: 

Why should one construe 28(a) as though it cannot

have any operation in cases which would otherwise
fall under the distinctive provisions or the
non-user provisions?

MR EINFELD:  For two reasons: one because

Mr Justice Taylor said - and the other members of

the Court appear to have agreed - section 56 is

intended to deal exhaustively with loss of

distinctiveness after registration. There are

sections which address a distinctiveness upon

registration and there is a section which addresses

loss of distinctiveness after registration.

The problem arises, Your Honour, because 28 is placed

within the Act as a registration provision. ThL;

Court has said in the BERLE! case that, notwithstanding

the fact that it principally addresses matters

at registration, the use of the word "offends" in

section 61(1).'(b) offends. secticn 28 and the use of

the. expression "wrongly remains in the register"

in section 22, give an indication that the section

is intended to have a post registration effect

and it was said in the BERLE! case than an effect

not just referrable back to the likelihood of

deception as at registration date, which is what

one, with the upmost respect, might have thought

was the import or purport of section 28, but that

it could conceivably apply, although it did not on

the facts of that case, to a case where confusion
did arise after the event even though the marks were

properly registered.

ClT29/l/LW	106	3/5/90
Dairy(2)

McHUGH J:  . But is 6l(l)(a), reinforces that, because 6l(l)(a)

talks about "registration was obtained by fraud"

and 61 (1) (b) talks about "offends".

MR EINFELD: Yes, I accept that. As I say, there are two reasons

why it is said that it has a post register or
an operation upon events after registration:

one is because of the construction of 61(1) and the

other is the BERLEI HESTIA reason when you look

at the words in 22(1)(b). The problem arises,

however, Your Honours, because .28 itself appears

to have had a registration orientation but 22 and

61 which refer to it or which bring it in

allow for a post registration operation. That is

not to solve the problem; it is really just to

state the problem.

But when one does look at a section such as

28 which is primarily addressed to situations of

registration, .. after the event, and there is a

specific provision such as 56 for distinctiveness,

23 for use, which expressly address post registration

situations, it is in.apposite in our resoectful submissicm to

seek to find something in 28 which is not directed

in terms to post registration situation and say,

because of the width of the language it really is

intended to have a post registration operation -

so far so good - but in respect of matters which

are expressly dealt with on a post registration basis

by other sections and provisions of the Act.

(Continued on page 108)

ClT29/2/LW	107	3/5/90
Dairy(2)

BRENNAN J: Take the circumstances of this case! let it be

assumed for the moment that the proprietors of

MOO did not use it for that period of two and a half years to which you have referred in your hypothetical case, but the reason why they did not use it during

that time was that they could see that the proprietors

of MOOVE were developing considerable goodwill in

their product and the intention was that after two

and a half years they would then come in and take

advantage of the deception that might arise. So

that there was some misconduct on the part of the

registered proprietors of MOO?

MR EINFELD: Yes, Your-Honour.

'

BRENNAN J: Well now? would you say that 28 could not be

availed of.

MR EINFELD:  No, because that is Lord Diplock's third category,

that is the very circumstance in which he says that

Your Honour has now provided the extra element which

would warrant removal, that is the very circumstance,

and that is what is different about this case from

any other.

BRENNAN J: Even though it is a non-use case?

MR EINFELD:	No, but the fact of non-use is not what brings it within 28, the factor of which brings it within 28, assuming the marks are likely to confuse
confusion, is the deliberate element in trying to take advantage of the build-up of goodwill on the other part and, of course, we have the express finding in this case that there was no attempt to
cash in on the reputation and the like.

McHUGH J: This argument.is all on the hypothesis that (d) runs

on to (a)?

MR EINFELD: And that brings me to my last submission,assuming

the contrary of tha½which I will come to now, I

have finished what I wanted to say about those other

matters, in fact I have proceeded on that assumption

but it does not found upon that assumption. It does

not and I do not want to repeat myself as to the detail

but it does not because you still need to find something

more under (a) even if you read it separately from (d).

I appreciate what Your Honour put to me earlier, in

terms of the difference between deceptive similarity

and likelihood, et cetera, under 28(a). They are

different terms but that is not to say that their

relevance is necessarily exclusive because resemblance

may turn into use which is likely et cetera. But let

me assume that (a) is utterly independent of (d). As

I say I do not particularly want to reiterate

ClT30/l/JL	108	3/5/90
Dairy(2)

all the argument, but the most stark example -

illustration of why it is that a finding of·

confusion under· (a) cannot of itself warrant

expungment under 28, is because of a section such

as 82. If I acquired my mark by assignment,

without goodwill, as was held that happened here,

and the reputation,let us say, remained in the

assignor, the innnediate use - the day after

assignment - of my mark is likely to cause confusion

of the public. I mean the reputation, let me say,

of - let me assume MOO had been used continuously

for reduced fat cream, as it was, in Victoria right

up until 1988 or some other milk product, skim milk

or something of the kind,not flavoured milk but

skim milk, and the.day following my assignment I

connnenced to use MOO to make flavoured milk, there is a distinct likelihood of deception or confusion in the public mind, with or without MOOVE but let

me even assume with MOOVE there, but that is the very

thing that section 82 contemplates, it allowed for.

Up until 1955 or - - -

McHUGH J:	I just do not follow that, how will there be confusion
unless the person with the goodwill is also using
a mark?
MR EINFELD:	Yes, and so the assignor - well, assuming he stops the day that I start, the reputation will still be
with him even if he is not continuing to produce or
if he does for a short time let us say, but if he
stops the reputation is still with him and the public
is entitled to think that my flavoured milk is
emanating from the same source as the assignor's
produced  skim milk and that would be a confusing
use of the mark as a mark, I am coming to - - -

McHUGH J: You had better help me with this because I am afraid

82 is one part of the Act with which I am not

familiar.

MR EINFELD: Yes, I am happy, I should go back to i~ Your Honour.

There are a couple of points I should make about it

at the outset, I am sorry,Your Honour.

McHUGH J: Yes: Just how does this notion work that you can

assign the trade mark and leave the goodwill

associated with the trade mark in the assignor's

hands?

ClT30/2/JL	109	3/5/90
Dairy(2)

MR EINFELD:  Can I ju~t, before answering your question,

Your Honour, give Your Honour another circumstance in

which it could happen whereby the registered

proprietor divests himself of the use of the mark in

favour of the registered user.? I mean, the registered

user provisions themselves in this Act as, I think,

:we made the point in our written submissions,

c:ontemplate that there may be a reputation which is in

the registered proprietor but the use of the mark comes

to be effected by a registered user. A natural, we

would say, foundation for likelihood of confusion.

McHUGH J:  Yes, I have no problem with that.

MR EINFELD:, And the Act tolerates it. Now, let me come

back~ having said that, the situation is not very much different on a section 82 assignment without goodwill. I have for a long time been manufacturing a particular product using a particular mark with respect to the goods

manufactured. I assign the proprietorship of that mark

to another, let me say, for example, Clark_ rubber goods;

I am making rubber goods of a general kind. I assign it

to a shoe manufacturer to use with respect to footwear

so that he makes Clark. rubber shoes. Now, I continue

to make Clark. rubber goods. The manufacturer of Clark

shoes is somebody with whom I have no affiliation at all.

McHUGH J:  Well, that is what I do not follow in that

illustration because if you have assigned the mark - you

are assuming you are assigning the mark only in respect

of a particular product?

MR EINFELD:  You can because that is what section 82 says:

Subject to this section, a registered mark

may be assigned and transmitted with or
without ,goodwill of the business concerned
in the goods or services in respect of which

the trade mark is registered or of some of

those goods.

McHUGH J:	I see, yes.
MR EINFLD:	I am reminded, Your Honour, that in the court

below at first instance the principal attack upon the

assignment in this case was firstly under section 82(1)

but this was not a valid assignment because it was

proposed that the mark would be with respect to goods, ie

flavoured milk, with which it had not previously been

used but used in respect of a different product, namely,

reduced fat cream. That proposition failed and the second

attack was that under section 82(Z..)(a) the trade mark

had not been used in good faith by the assignor. That

also failed. In the example I have given to Your Honour,
the mark could be assigned for use in respect of footwear,
being one of the items referred to in the class of goods

with respect to which the mark was used but the

ClT31/l/JH	110	3/5/90
Dairy ( 2)

assignor continue~ to use the mark with respect to

rubber boats or flotation material.

McHUGH J:  I have no problem with that illustration but

supposing your mark was only registered in respect of

footwear. Can you assign just the mark?

MR EINf~LD:	Yes.
McHUGH J:	How can you get confusion then?
MR EINFELD:	Your Honour has highlighted one of the great

problems about the way the attack upon our mark is

mounted in this case. The attack upon our mark founds

upon considerations that are passed from.the law of
trade marks since 1955. You see, reputation now does

not have the significance for registered trade marks

that it had prior to 1955 and the illustration of that

is section 82. You could never before, if you had
a mark registered in respect of footwear, assign the
mark with respect to footwear without the goodwill of

the business related to the manufacture of the goods.

In 1955, what was described in the cases and

in the Dean Report as . a radical change took place

which really altered fundamentally the long held

doctrine that reputation was the be-all and end-all
of trade marks as it is in passing off and at common

law with registered marks before this Act before the

legislation. You had a radical change which meant that

you could assign the mark so that somebody else could

become the proprietor of the mark but without any of
the goodwill at all associated with the business

meaning that if I have got a reputation buil::u.p_ of 50 years of manufacturing footwear under the name

"Einfeld" and on 3 M::i.y 1990 I assign my "EinfeJrl"

trade mark - it is a bad exarq:,le because the use of a surnarre i-s a
bad example - "Growshoe" - assign that to somebody else, the m::.rnent the new

registered proprietor commenc~~ to use ~hat mark, there

will be a body of people in the community who think
that the manufacturer of those goods is me, the assignor

of the mark.and who will be prepared to buy the

product because they know that I have been a good

manufacturer of shoes over 50 years and I have a

reputation for my product; I have distinct goodwill

in the sense that my product has always been an excellent

product and they will be confused to the extent that the

new mark is now being used by some other manufacturer

who may not be using the same methods or even the same

place of location or anything else.

ClT31/2/JH	111	3/5/90
Dairy(2)

MR EINFELD (continuing):  Now that, as strange as it may seem,

has inherent in it the characteristic of likelihood

of confusion, and the problem is that that is what

the Act now countenances and if the Act tolerates

it, it cannot be right that the mere existence

of it disqualifies a mark from registration. And

that is the problem for the appellants in this case.

It did not arise in the BERLIE case or any of the

other cases, other than GE. It did not arise

because the ground, as Mr Justice Gummow points

out at,I think, the top of page 98 of the

appeal book, that the ground for removal in all
the other cases, after registration, either the

cases were opposition cases at time of registration

where they -were post-registration, they_ all proceeded

on the foundation that the mark, now likely

•	to. confuse, had the same likelihood of confusion
back at registration time, and therefore could be said to be removable as being an entry wrongly

made in the register. But that is not this case and

where you have got your two properly registered marks,

let me assume, you have to go to something else.

Now, if (a) is to be read separately from (d) we would still, none the less say that Lord Diplock' s

notion of dishonesty or wrongful conduct is the
kind of additional element that one needs to find

in order to disqualify an existing properly
registered mark from its continuation on the register.

MASON CJ:	Mr Einfeld, granted that the case has established that the non-user does not bring into existence a case under 28(d) as such, why cannot non-user,
in certain circumstances, over a long period of time,
amount to that additional element that is required
under 28(a), once you have got a case of likelihood of confusion or deception. Now, take this case for
example, where there has been non-user over a very
long period of time, resulting in the acquisition by your client of the trade mark in circumstances
where the appellant has built up a very valuable
goodwill by using its trade mark?  Why would that
not amount to an element of blameworthy conduct that
would satisfy 28(a)?
MR EINFELD:	Two reasons, Your Honour. One because it is the non-use which itself gives rise to the likelihood
of confusion.  It is the absense of our use over
a long period of time, on Your Honourrs proposition,

· that creates the likelihood of confusion and

deception, and that merely gives you likelih0.od

of confusion or deception.

DEANE J:  But it was not your non-use. What you did was acquire

and go into the field where the other people were.

CIT32/l/CM	112
Dairy(2)

MR EINFIELD: Well, that is a lesser situation. That is

less blameworthy, as it were.

McHUGH J: But you also failed to exercise your rights.

MASON CJ: As a result of which goodwill is being built up.

DEANE :J: You have been besieged from three sides - - -

MR EINFIELD: Well I am happy to deal with each of the three

sides, but I have to do them seriatim.

DEANE J:  On my question you had not failed to pursue your

rights, because on my question you did not have

them.

MR EINFIELD:  That is right. On that proposition, that is

right, but let me deal with the situation about

not pursuing your rights. That was one of the

matters that was raised as an answer to the

assiduous infringer suggestion, both in the

RIV-OLAND case and, I think, to a lesser extent,

by Sir Maurice yesterday. For example, in the

RIV-OLAND case, Settef , the Italian supplier had

an agreement with the marble company for the

production of this cladding which it terminated

at a particular point in time. The Italian

company, in Italy, proceeded, as it were, in

ignorance of the fact that in Australia the marble

company deliberately had determined to utilize the

registered name, take it for itself, and build up

the use, cashing in, as it were, to use the

expression in the cases, on the goodwill of the

previous and first user of the goods. The problem

with the approach of having it in your hands as

registered proprietor to do something about it, but not

doing so, is illustrated by the circumstance in

which in the Italian case or some such case on

similar sort of facts, would be unaware of the

continued existence and misuse of the name in the

market-place. Now that is not an entire answer

because what if there is an acceptance or knowledge

of the misuse in the market-place.

(Continued on page 114)

CIT32/2/CM	113
Dairy(2)

MR EINFELD (continuing): The answer to that is - this was the

second part of the answer to Your Honour

the Chief Justice's proposition to me - the
consequence of the period of non-use - may I go

back one step; mere non-use will not help, we say,

because of section 23. What His Honour the

trial judge said below was here you have a new

or refreshed, as it were, use after a long period
of non-use. It is the period of non-use which has

as its consequence this likelihood of confusion.

I know that it can be said that it is the actual

use after the period of non-use that is the immediate
cause of the confusion but the question is what does

the non-use do?

The non-use is a factor contributing on the

one hand to loss of distinctiveness or, in the present

context, under 28(a), to the confusion. So, it is

not a super-added element upon likelihood of

confusion and deception; it is a formative part of

it.

The other reason is because the Act accepts that that will happen. If I am wrong on this proposition

and the day after assignment or a month after - let

us assume I acquire a mark by assignment, the shoe

mark, mark for shoes, if Your Honour's proposition

to me is correct, then non-use for even a short
period - put aside section 23 - would entitle another
to move to expunge my mark from the register because

of the likelihood of confusion arising from assignment without goodwill and because I am not using it or have not used it. If the proposition is good, it is good

for a long period as it is for a short period.

MASON CJ:  I would not have thought so necessarily. What I

put to you was non-userover a very long period of time

which allowed the other registered proprietor to build
up valuable goodwill in connection with the use of

his trade mark and then user of your mark, for example,

at a period of time when that valuable goodwill had

been built up.

MR EINFELD:  Your Honour, that is the very principle that 1s

behind section 23.

MASON CJ: Yes, I follow your answer based on section 23.

MR EINFELD:  But it is also the reason why it does not become

the added blameworthy, as it were, element in respect

of 28 because 23 is a section designed to deal

expressly with that proposition; that is, there will

be a long period of non-use during which the person

aggrieved - to use the language of section 23 - will

have built up a period of goodwill in consequence of
which he will then move to remove the first registered

mark or the other registered mark lest its use afresh

ClT33/l/SH	114	3/5/90
Dairy(2)

will create confusion and that is why it does not

become an additional blameworthy element on top of

likelihood of confusion because it is the very factual

circumstance which section 23 is there to address;

just that situation.

DEANE ,S:  But in a context where the pol icy of the Act 1s

against profiteering in trade marks, why is it not
different if somebody who wants to move into a field

where he will cause confusion seeks out the owner of

a non-used mark and purchases it to base his intrusion

into that field? I mean, the only basis on which your

client can do what it is doing is by reference to its

trade mark.

MR EINFELD:~- Yes.

DEANE J: Well, now, it is one thing to say, "The holder of the

trade mark did not use it but he held it and he kept

it registered". It may be - and I am not suggesting

it is - another thing in terms of relevant conduct

to say somebody who wanted to move into this field

where he would cause confusion and otherwise infringe

a trade mark has sought out the owner of an unused

mark and purchased it as a sort of protection.

MR EINFELD:  Yes.

DEANE J: Well now, that is this case, is it not, although it

does not seem to have been approached that way?

(Continued on page 116)

ClT33/2/SH	115	3/5/90
Dairy(2)

DEANE J: It is not this case at all?

MR EINFELD:  No. The acquisition of the MOO mark in this case

was totally independent on the findings of the trial

judge of the existence of MOOVE in the market-place

at all.

DEANE J:	I was not suggesting that in the sense of your
client purchased it so that it could come in a take
part of- MOOVE 's product, I am saying the fact was that
it could not enter this field as things were and
it claims as the basis of being able to enter it
its purchase of a disused mark.  It may not go anywhere
but it does not seem to me to be the same position as somebody who just did not use what was his property and now wants to use it.
MR EINFELD:	I take Your Honour's point but the problem is

with that proposition that it denies the

significance of section 82 because section 82 - - -

DEANE J: No, it does not. It recognizes the significance

of section 82(2)(a).

MR EINFELD:	But not 82(2)(b).
DEANE J:	But 82(2)(a) is the section that continues the old
policy, surely?

MR EINFELD:  The question may be: to be or not to be, Your 1:onour?

adverse to the appellant on 82 (2) (a), there undo 1_:::) c edly	If you look at 82(2)(b) His Honour made a findin2,
was in this case use in good faith at a time in
had no place for consideration in this case.
Australia by the assignor of the mark. Section S~(2)(a) proposition because it firstly provides for the assignment of a mark without goodwill, the
acquisition of a mark with no goodwill, and by t:--.c::
way the acquisition of a mark which is not
currently being used, let me assume, fallen into
disuse over a very lengthy period of time, and
says that where it is acquired without the
goodwill - and in answer to what Your Honour
the Chief Justice put to me earlier, one would
envisage that would be the case after a very long
period of non-use - then the mark will none the less
be registrable as on assignment, and if it is
deceptively similar to an existing mark or substantially identical to a mark, then the registrar
can impose conditions which will alleviate what
are perceived to be existing problems. So it cannot
be that upon assignment of a mark that has fallen
into a long period of disuse, that those facts alone -

C1T34/1/LW	116	3/5/90
Dairy(2)

and one is assumes that it is assigned in order to

enter into a particular market - one cannot

assume that such a mark would be able to

be expunged under 28 because it is able to be

there under 82 and the additional factor in

Your Honour Mr Justice Deane's proposition to me

was, but knowing that in the meantime another

party had built up a great deal of goodwill,

et cetera, cannot apply on the findings of

His Honour because His Honour found that our

acquisition of the MOO mark was totally

independent of those factors. It cannot be

read against us as an additional factor to mere

confusion in the face of findings that that

additional element imposed in Your Honour

• Mr Justice Deane's illustration was not a matter

of which we were cognizant at the time or that

was brought to account. There would be
no~hing wrongful about it because we did not do

anything wrongful.

DEANE J:	It might all come down to what is meant by "not
entitled to protection" in (d).
MR EINFELD:	Yes, but, again, what is put against us as

amounting to disentitlement in a court of justice

under (d) are two factors on the findings of the

trial judge: one, loss of distinctiveness; the

other, non-use. I cannot do any more than to say

that,for the reasons I have said earlier, they are

irrelevant factors because of the statutory context

that cannot be overlooked for 28. What Your Honour

puts to me would be right if one could read 28

as if it were the only section dealing with the matter

after registration or, indeed, if it were even

perhaps on one view the predominant section dealing

with matters after registration. It is plainly

neither.

(Continued on page 118)

ClT34/2/LW	117	3/5/90
Dairy(2)

MR EINFELD (continuing): Now, Your Honour, what we suggest

is the appropriate additional requirement to

which the Court has to look in order to resolve the

dilemma of which of two, if you like, assuming

there were cross claims for example, which of two

post-registration uses is likely to render one or

either susceptible to expungment is the question

of priority of registration. And we made the point.

in our submissions that there is written into the

scheme of the Act an emphasis upon priority of

registration. In particular section 33, for example,

is the section which speaks of registration of identical

marks and provides an indication that where there is

competition between registered marks, where it is

a relevant factor, one looks to the time of first

• application~sorry, first registered will prevail and

in some of the cases where there has been a problem,

for example, where an application is lodged for

registration, another mark in the meantime becomes
registered, the Act deems registration to take effect

as at time of application and first application, that

is first registration prevails. Section 34(2) is

another which emphasizes priority of registration.

DEANE J: If I could just take you back for one second, I do not

want to delay you, but would you say in the

circumstances I postulated tha~,you are··-,,enti.:tle.d to

protection of your mark against Sir Maurice's client

to prevent it infringing it?

MR EINFELD:  Yes, where I have-the first mark, yes. I am

certainly rot disentitled.

DEANE J: So you say you could get an injunction restraining

Sir Maurice's client from marketing MOOVE in

New South Wales on the basis that that will infringe

your mark and.presume, for the sake of the

question if it makes it easier, that MOOVE is not

a registered trade mark.

(Continued on page 119)

ClT35/l/JL	118	3/5/90
Dairy(2)

MR EINFELD: No, Your Honour. In infringement proceedings,

58(3) would be a complete answer.	We cannot lose
our - - -

McHUGH J:	To you, you cannot overcome 58(3).
MR EINFELD:	I am sorry?
McHUGH J:	You cannot overcome 58(3), as against Sir Maurice?
MR EINFELD:	No.

McHUGH J: So you could not get an injunction?

MR EINFELD:  No, but I am not losing my protection of

my mark; I have got it under 58(3).

DEANE J:	But that is the question, you see. When you go
to 28, why would you not say, "Circumstances of
this case are the use of the mark would be likely
to deceive or cause confusion in circumstances
where the holder of the mark would not be entitled
to protection against the competing trader in a
court of justice, the competing trader being
Sir Maurice's client"? That was what I was
directing your attention to and it may be that
that is not enough for (d) - - -
MR EINFELD:	No, it is not.
DEANE J:	- - - if you can get protection against Mr X who
now wants to enter the field but that is not self-
evident to me.
MR EINFELD:	I see.

McHUGH J: In that situation though you would rely on 34,

would you not? 34 obviously contemplates the sort

of case where - because of dual registration neither

party can get an injunction against the other -

in 58(3).

MR EINFELD:	Yes, I had just adverted to 34(2) and I was coming to that in a different context but we do
not have a case of honest concurrent user in the sense that we had had a long period of continuous
use.  We cannot put that.
DEANE J:	My question is put to you on the basis that
Sir Maurice's client did not have a trade mark
so I do not really see that 34 helps at all.

MR EINFELD:  No, that is so. On the facts of this case that

is so.

DEANE J: Where what is disentitling you to relief against

Sir Maurice is your conduct.

ClT36/l/ND	119	3/5/90
Dairy(2)

MR EINFELD:  There is nothing of my conduct which would

disentitle me to protection of my mark.	I do not
lose my protection - - -

DEANE J:	But why is not your conduct non-user of the mark
in circumstances where that non-user and non-assertion of rights has let another company move into the field
disentitled you from the protection of the mark as
against that other company?
MR EINFELD:	Because it would have to disentitle me to protection

of my mark as a mark, as a trade mark under the Act.

DEANE J:	Why has it not?
MR EINFELD:	Your Honour asks why has it not; we - - -

DAWSON J: Well, your answer is because the Act contemplates

that situation.

MR EINFELD:  Yes. I was going to say the question i~ does it?

I mean, the Act says - - -

DEANE J:	But your position cannot be stronger in terms of your
conduct by the fact that Sir Maurice's client has a
trade mark.  I am testing your - - -
MR EINFELD:	No, I accept that.
DEANE J:	- conduct on the basis that Sir Maurice's client

has not got a trade mark.

MR EINFELD:  But, Your Honour, the Act says that whilst I have

a registered trade mark of which I am the proprietor, I am entitled to the protection afforded to me by the

Act on the one hand.

DEANE J:  But that begs the question. The question is whether

having seen a field which you are not entitled to

enter and in which there is an established company

selling product, you can purchase a dormant trade

mark or a non-used trade mark and enter that field

and then assert the rights attached to that trade

mark against the operating trader.

(Continued on page 121)

ClT37/l/SH	120	3/5/90
Dairy(2)

MR EINFELD:	Because that is the very thing that section 82 and the other provisions of the Act permit me to do.
If Your Honour's proposition were correc~ the mo~2nt it would be said that I have lost my entitlement
in a court of justice- if Your Honour's proposition
were correct.

DEANE J: You may well be right, all I am directing your

attention to is that - - -

MR EINFELD:	I understand what you mean.
DEANE J:	- it is not apparent tom that an equity court would

listen to you very long if you tried to protect

your mark by getting relief against Sir Maurice's

client. Now, if there are cases that show it

would that answers it.

MR EINFELD, Firstly, there are no cases?indeed in the whole argument thus far, about 28(dJ. · It has never

been suggested, so far as we are aware - that is

not the end of the matter but it is the first step -

that the fact that I would,by virtue of non-use

which would be said to give rise to confusion -

which has the consequence of causing confusion -

lose my entitlement to bring a successful infringement

or passing- off suit such that my non-use which would,
as we say, have the consequence of causing confusion

disentitle me to protection in a court of justice

I have not put that very well.

M::illOOHJ: Well, section 68 assumes that you can bring an action

for damages for passing off in that situation unless the defendant, himself, shows that in effect that it

was an innocent infringement.

MR EINFELD: Yes, I am grateful to Your Honour for reminding

me of that, that is quite so and so are so many

other sections of the Act. Your Honour, the courts

have looked for what it is that disentitles one to

protection in the equity court of a mark which is
likely to confuse or deceive.	I mean it is (a)
subject to (d) on this analysis.

(Continued on page 122)

ClT38/l/JL	121	3/5/90
Dairy(2)

MR EINFELD fcontinuiug):  .Soi if one hasha mark which is

IiRe y to conrnse, iti snot enoug tno say cnat you

have a registered trade mark unless you find the	lose your protection in a court of justice where you
additional element of wrongfulness. Where the
period of non-use and the accompanying build up of goodwill on the other side are the factors which
_give rise to the confusion, you merely come to the end
·result that non-use coupled with build up of goodwill
produce confusion which is not enough to disentitle
protection in a court of justice in the manner I
indicated to Justice Gaudron earlier on in the day.

DEANE J:	There is no point in really putting the pros and cons, but I would just remins:l you my question is directed
to purchasing a.dormant trade mark to move into a
•	field occupied by somebody and thereby cause confusion.

Section 68 says nothing to that. Section 68 is concerned with passing off which is quite the reverse of what I am putting to you.

MR EINFELD:  I understand that. Your Honour, the.question

of trafficking or acqqiting a mark for the express
purpose of the use to which Your Honour puts is, of
course, expressly dealt with in the Act again.

Section 74(4), for example, prevents registration:

as a registered user of a trade mark if

it appears -

and it is likely -

to facilitate trafficking.

The fact, indeed, of the existence of the registered

user provisions and the assignment provisions

contemplates acquisition attendant with confusion -

that does not include the additional element to which

Your Honour Justice Deane refers.

(Continued on page 123)

ClT39/l/JH	122	3/5/90
Dairy( 2)

MR EINFELD (continuing):  Your Honours, I have not looked at

the case but it is suggested to me that in a decision

of PIONEER V REGISTRAR OF TRADE MARKS,

(1978) 17 ALR, Mr Justice Aickin dealt with this

question of trafficking suggesting that the very

fact of which I have been talking - I have been

referred to Mr Shanahan's book on Australian

Trade Mark Law and Practice at page 244, which

suggests that in the PIONEER case Mr Justice Aickin

indicated that questions of trafficking and the like

are to be differently regarded since the author

suggests the restrictions on assignments without
goodwill are not as severe so that the very context
of the Act would seem to suggest that even in that

circumstance, there is no scope for operation of the

kind of principle to which Your Honour was referring

but may I say again that we have on this case - I

have to keep coming back to it; I will do so for

the last time now - the fact that accepting non-use, accepting build up of goodwill, on the facts of this

case there was no acquisition for the purpose of

the appellant availing itself of the goodwill which

had built up in Sir Maurice's mark.

Now, if I accept as a matter of principle what

Your Honour puts to me, the facts are that it does

not apply to the facts of this case so that in this
case there is nothing more than non-user build up

of goodwill, loss of distinctiveness, which has

build up of the other goodwill as an attendant
part of it, all of which go to cause confusion;

takes us back to (a) and the need for something

more. We suggest the something more, where the

confusion arises after correct and proper orderly

registration, is that where the confusion arises

between two registered marks, the Court will not

expunge the·first in time concordant with the

policy of the Act - - -

BRENNAN J:  Mr Einfeld, before you get on to priority again can I just ask you one further question?

MR EINFELD:	Yes.
BRENNAN J:	Could you give us a reference to any findings that

are made with respect to the knowledge as distinct

from the purpose of the respondent, his knowledge

or its knowledge of the trade of the appellant and

of the association of its trade mark with that trade?

(Continued on page 124)

ClT40/l/SH	123	3/5/90
Dairy(2)

MR EINFELD:  I will have that done, Your Honour, but I can

certainly tell Your Honour now that if His Honour did -

there was no question that the officers of my client

were aware of the existence of the use of MOOVE in

New South Wales with respect to MOOVE milk.

BRENNAN J: At the time of the acquisition of the trade mark?

MR EINFELD:  I think that it probably right, Your Honour,

yes. But, Your Honour, it was said use with respect

to a quite different market. I mean the-thrust of what

was said was that my peoplers use - the thrust of blameworthiness were that when the mark, MOO, was

used there was an awareness by my client of the

existence of MOOVE but it was perceived, as His

Honour found, honestly and properly at the time -

sorry, that His Honour found quite honestly perceived that there was a difference in the markets in respect

of which the two separate products were to be

produced.

At page 118, line 9:

In the meantime, as I later find, the

first respondent had gone ahead well

aware there was significant aural

similarity ..... and that for a number

of years the applicant had produced

flavoured milk products -

and then at - I will have to extract the references

in detail for Your Honours - page 123, line 10;

Mr Wills -

who was an officer of my client -

said in his evidence that in taking the

decision to use the name MOO, he never

thought that this would be a problem for

MOOVE, because the MOOVE product was aimed

at "an entirely different market",

namely teenagers and young adults, and

was promoted so as to appeal significantly

to that market. Mr Wills said that this

view that there would be no problem with

the name MOO was reinforced when Mr Scott

of Messrs Edward Waters & Sons -

they were the patent attorneys -

advised that the mark MOO was available

and was already registered -

this is even at a time when they knew MOOVE was on

the market -

ClT41/l/PLC	124	3/5/90
Dairy(2)

and by the circumstance that the mark
was subsequently assigned so that it

became the property of the first

respondent.

T41	And, again, a denial, at line 23, of any anticipated
benefit for the first respondent. I notice the time.

MASON CJ: The Court will adjourn until 2.15.

AT 12.54 PM LUNCHEON ADJOURNMENT

UPON RESUMING AT 2. 15 PM:

MASON CJ:	Yes, Mr Einfeld.
MR EINFELD:	Your Honours, I was starting to go to what I call

the priority point but, before getting there, was asked

to answer a number of questions about the content of

paragraph (d) and I had not quite finished what I

wanted to say about that. With respect to the

matters put to me by Justice Deane before the

adjournment, we would submit that when the section

speaks of disentitlement to protection in a court

of justice the question of whether we would be able

to successfully proceed against Sir Maurice's client

for passing off is not the right question.

The question is whether ~e would lose our

protection in defence of an attack· upon us. The provision speaks of being disentitled from one's protection that one gets from having a registered

trade mark and we submit the question that arises

is would we, in proceedings brought by way of attack

upon our mark, lose the entitlement we would otherwise

have to protection of our mark under the Act?

For example, when we speak of section 58 Justice Deane

was right to point out to me earlier, with respect,

that that speaks of, as it were, a contest between

two registered marks but, on Your Honour's hypothesis

that the other mark were not· registered one goes back

to section 58(1) and still finds that if registration

was valid, or· is valid, it gives the registered

proprietor the right to the exclusive use of the

mark.

ClT42/l/PLC	125	3/5/90
Dairy(2)

MR EINFELD (continuing): The question is do we lose that

exclusive right to use the mark by reason of some

factor so that we would thereby be disentitled

to that protection in equity.

We submit that we will not have lost that right

of protection in a court of equity by mere

confusion. Something more is required and in

addressing the question as to whether the matters

that were put to me before the adjournment are

sufficient we would remind the Court that there

were a number of findings of fact in this case that

would make the suggestions put to me earlier, we

would say with respect, inapposite.

Can I refer Your Honours to the appeal book at

page 44 where the trial judge recites some of the

relevant factual considerations, dealing in the

context firstly of the attack based upon section 52

against our use of our mark. It was said that:

The applicant - - -

Perhaps I should go back to the foot of the previous page. In BRIDGE,Mr Justice Lockhart had said - I

am reading page 43, about six lines from the foot of

the page:

that the presently received doctrine in this

area may require some refinement, especially

on the question of confusion ..... whilst it

was established that the intent of the
corporation was not an essential .....

nevertheless there were cases where there will

be deceptive conduct ..... where the intention

of the corporation is established. The

applicant sought to make good this point by

characterising the first respondent as an

unscrupulous trader which had cleverly
pitched its marketing techniques at shoppers

who would be perplexed or uncertain about

the identity of the products with which they

were presented, and which hoped or expected

thereby to derive a benefit from the

resemblance of MOO to MOOVE.

ClT43/l/LW	126	3/5/90
Dairy(2)

MR ENFIELD (continuing):

Much of the evidence was directed to this

issue, and it is one to which I return

under the heading "The Conduct of the

First Respondent". However, it is sufficient

at this stage to indicate that unless the

applicant makes good this point, it would

fail in its case for contravention of s. 52.

It would fail also as regards its claim in passing-off -

Reference is then made to TELMAK. and to SOUTHERN CROSS.

Now then if one then goes to 125 and sees what

conclusions are reached by His Honour, at line 6 page

125, His Honour says:

The evidence satisfies me that when, over the

period August - September 1987, the first

respondent selected MOO for its cheese and

milk products, it was aware that MOO was not

in current use by the second respondent -

that is H~althway,~he assignor -

and had not been used for some time, but the

legal significance of this was not
appreciated by the first respondent.

Further, the first respondent was well aware

that there was significant aural similarity

between MOO and MOOVE and that the latter

was the name under which the applicant had

produced flavoured milk products for a

number of years -

That is conclusion addressed to the facts that were asked of me earlier before the adjournment by

Mr Justice Brennan -

But I accept what was said by the witnesses

for the first respondent to the effect

that the first respondent was not acting

fraudulently in the sense of choosing MOO

in the hope or expectation of deriving benefit

from its resemblance to MOOVE. The first

respondent's position was that the products

would be directed at different: "target"

markets and be promoted accordingly. The

acquisition of the registration of MOO

confirmed the first respondent in the view

that there would be no problem with the

proposed course of conduct.

That, Your Honours, is a reference back to that

evidence of the patent attorneys and the response

of my client after receiving the patent attorney's

C1T44/1/JL	127	3/5/90
Dairy(2)

advice that MOO was available,notwithstanding

they knew that MOOVE was available in the

market-place and used in the market-place--

The first respondent was not setting out to

"cash in" on the reputation of MOOVE or to
sail as close to the wind as it might
without attracting legal liability.

Thus, the inferences that would otherwise assist the applicant on its passing-off claim are not available to it.

Now, Your Honour, were the findings to the contrary

of those, were _there adverse findings, Your Honours,

on those matters, we would, perhaps, accept that the

extra element that were necessary whether one

read (a) independently of (d) or otherwise

might be made out.

(Continued on page 129)

ClT44/2/JL	128	3/5/90
Dairy(2)

MR EINFEID (continuing): But, in the face of those findings of

fact, it is our respectful submission that there is

nothing arising from a protracted period of non-use

and nothing arising from a loss of distinctiveness

that would disentitle us to protection in a court

of equity firstly, simpliciter, but secondly,

disentitle us to any - I am sorry, firstly, nothing that would disentitle us from protection in a court

of equity as a matter of general law but, secondly,
nothing that would render our mark liable to

expungment under section 28 because, for the reasons

we gave earlier, loss of distinctiveness and non-use

are not factors brought to account in a consideration

of 28, whether under (a) or (d).

Now, Your Honours, may I then just make mention

briefly of the priority point,.arrl the significance

of it. It is dealt with in our submissions in

paragraph 18 and I do not particularly wish to

elaborate it but simply this - we have given

reference to the sections - that there is apparent

from the scheme of the Act an emphasis upon priority

and where one has, for example, in section 33, an

indication that where the confusion arises between

two registered marks-and let me assume against myself

that the latter of them registered in time, in this

case, Sir Maurice's client's mark, was one which was

registered at a point in time at which there was no

likelihood of deception by the use of its mark - let

me assume that against myself - even then, there is
an indication from the overall emphasis upon the
Act of priority of registration, first in time 0~

the two would prevail and in so far as the confusi0n

arises not from something inherent in the mark
itself, tm confusion arises not from something in

the relationship or in the connection between th0

trader and the goods to which the mark attaches -

I will come back to that in a moment - but the

confusion arises directly because of a similarit·:

with another name and another registered mark, ~~1t
where one has to search for the answer to

Justice Gaudron's question, which of the two ou~ht

go, on the assumption, for example, there were

cross claims, the answer is the first in time docs

not.

(Continued on page 130)

ClT45/l/SH	129	3/5/90
Dairy(2)

MR EINFELD (continuing):  If that has the consequence that

the second goes, so be it, but it does not have

the consequence that the first in time, absent

wrongful conduct, will be expunged.

Your Honours, the last point we wisp to make was

one to which we have adverted in paragraph 17 of our

submissions which is that one possible explanation

of section 28, to which I have not yet made reference,

is that section 28 has no scope for operation at all

in terms of competition between marks. Section 28, in
so far certainly as it has any operation as to a mark

becoming confusing after proper registration, is not

addressing a question of competition between marks

at all but to pick up the words of the section, "the
use of the mark", which must mean, on this analysis,

use of the mark as a trade mark and when one goes

to the definition of "trade mark" in section 6, one

finds t.hat "trade mark" means:

(a) except in relation to Part XI -

which we do not need to deal with -

a mark used or proposed to be used -

and, by the way, that is an indication that use is

not the -actual use is not a prime determinant of

validity of a trade mark in the sense that potential

use is envisaged by registration of a trade mark;	so
that when one has a trade mark that has fallen into

disuse one always envisages that it is capable of again

being used - so "trade mark" means:

a mark used or proposed to be used in

relation to goods or services for the

purpose of indicating, or so as to

indicate, a connexion in the course of

trade b~tween the goods or service~ and

a person who has the right, either as

proprietor or as registered user, to

use the mark.

On this analysis, we would respectfully submit that

when section 28(a) addresses the, use of a mark in a

deceptive or confusing way, for the reasons that we

have given, one comfortable construction which sits
well with the other provisions of the Act to which

we have adverted, is that it is addressing a use by

the registered proprietor or user in a manner which is confusing or deceptive in so far as it relates to the connection between the proprietor and the

goods in respect of which it is used.

ClT46/l/HS	130	3/5/90
Dairy(2)

MR EINFELD (continuing):  In other words, it addresses not

confusion between one mark·and another, but

confusion as to the connection between the

proprietor and his goods and in so doing the

section is addressed to a circumstance of

misrepresentation, for example, of the trade mark as to some affiliation or association between his

own name, himself and his product, completely

divorced from the question as to whether or not

that involves a suggestion of use or confusion

with some other registered mark or somebody else's

goods.

Now, -there is in the BERLEI V BALI case, I think,

a suggestion to the contrary at 361 in 129 CLR.	I
do not need to take Your Honours to it, but at ·
page 361 in the paragraph to which we have given reference, being the same paragraph in which
Your Honour the present Chief Justice referred to

tbelanguage of (a) being influenced by (d), the

paragraph cormnences, at page 361 at about point 4 or 5:

Although not limited to deception or

confusion flowing from similarity to another

mark, section 28 (a) extends to deception and

confusion so caused.

Reference is made to ARISTOC LTD. V RYSTA LTD., which was a case, Your Honours, in which a mark had

been used in connection with manufacture of goods

and was then sought to be applied in respect of the

repair by the same manufacturer of another's goods,

and the question was, whether or not that gave

rise to registration of a trade mark so as to

designate origin or use of a trade mark so as to

designate the origin of the goods. The point I

simply want to make is that conformably, with the

import of the new provisions of the 1955 Act and

the consequences they have, that when the Act

speaks in 28(a) of use of the mark, it really means

use of the mark as a trade mark, one goes then

back to section 6 definition of "trade mark" and

sees that one is speaking of the use of the mark so

as to designate the connection between proprietor

and the goods and that the confusion or deception

to which reference is made in (a) arises, in

that respect, and not in the respect of confusion

with other goods.

(Continued on page 132)

CIT47/l/CM	131
Dairy(2)

MR EINFELD (continuing): Your Honours, they are the

submissions we have. The last matters is

canvassed - if I may respectfully use that

expression - in an article to which we have referred

in the submissions and of which we can hand copies

to Your Honours. I do not wish to take Your Honours

to it at the present time.

BRENNAN J: Could you give us an illustration of how there

would be such a confusion?

MR EINFELD:  Yes, Your Honour. A proprietor in Australia whose

reputation, for example, is built upon the fact

that his goods are Australian made bicentennial

goods, or s6mething of the ilk associated with the

• bicentennial or something, where the

reputation focuses particularly upon something being Australian made, who represents goods as

Australian made when they are, in fact, not, or

in some way associated with his manufacture of

Australian goods, when they are in fact not.

If, for example, the Bicentennial Authority had

acquired a trade mark in respect of T-shirts
or something of the kind and then represented by

endorsement of its trade mark that, in effect,

these were goods which .: in a manner which dem:mstrated

the connection between it and the goods, namely,

they are made in Australia for bicentennial

purposes or other parochial purposes, when in fact

the goods were not made in Australia at all, so

as to misrepresent something about the goods
themselves and the proprietor's connection with the

goods.

(Continued on page 133)

ClT48/l/LW	132	3/5/90
Dairy(2)

MR EINFELD (continuing):  Perhaps simply a representation

that in terms of tradt:- mark designating the origin of

manufacture, goods produced by the manufacturer,

made by me when, in fact, they were not,again

illustrating something incorrect or deceptive about

the nature of the goods and their connection with the

trade mark and its owner. In those circumstances,

and plainly that kind of representation is included

within the ambit of section 28 , 0 ,n no view could it

be said that, we would respectfully submit, does

section 28 only address confusion between the goods

of the registered proprietor of the trade mark and the

goods of another so that one does not have a situation

only of confusion between goods or between registered -

BRENNAN J:  That problem would only arise if the trade mark

was descriptive either of the goods or their

manufacturer.

MR EINFELD:  Or of the connection between the two of them,

Your Honour. I would accept the first two but also -

if, for example, Ampol were to produce Ampol T-shirts

or register Ampol T-shirts, that mark would represent

that a sale of goods with that mark attached to them

would represent a connection between the goods and

Ampol. If, in fact, - perhaps that is not a good

example. If the trade mark registered were "made by

Ampol"; there were T-shirts endorsed on the label, "made by Ampol" when in fact they were not, that would be a misrepresentation as to the connection

between the goods and the proprietor of the trade mark.

Maybe there are others.

McHUGH J:  There has to be something about the mark itself,

does there not? It is the mark the use of which

would be likely to deceive or cause confusion.

MR EINFELD:	Yes, but ·used as a trade mark.
McHUGH J:	But, under section 28, it has got to be inherent

in the quality of the mark, has it not, that its use

would be likely to deceive or cause confusion?

MR EINFELD: 

If that is right, the appellant fails in limine,

as it were, because there is rothirig. inherently geceptive
about - it may be right and I do not want to convey

to Your Hon.ours that we do not accept that proposition
but if that is right, then the appellant fails in limine

because it is not the use by us in all the
circumstances that have been canvassed today that

created the confusion. It is something inherent in the mark and there is nothing inherent in the mark which is

itself deceptive or confusing.

McHUGH J: 

Yes, I understand.

ClT49/l/JH	133	3/5/90
Dairy(2)

MR EINFELD::  A scandalous mark, fO-t* example, would be

one, the use of which would offend section 28, but

which arises from something inherent in the mark

itself.

DEANE J:  One example might be if you use MOO to describe

goat's milk. One could designate goat's milk.

MR EINFELD:  It could be.rather than "Baa" or something of

that kind; it could be, Your Honour, yes.

Well, Your Honours, may I conclude by simply

producing for Your Honours' consideration copies of

the article to which we have referred in our

submissions; an article by Dr Emmerson on the

BERLE! case, (1974) MULR. May I also, because

reference is made to it in our written submissions,

hand to Your Honours copies of the passage in Kerly - the

12th edition of Kerly to which we have made reference

in the context of loss of distinctivenss where Kerly
reflects the views of Mr Justice Taylor in the BARRIER
case and suggesting that loss of distinctivenss can

never be a ground for removing a properly registered

mark otherwise than by means of section 15 or the

equivalent of our section 56.

Lastly, Your Honours, there is a copy of the

passage from the 5th· e::lition of Sebastian's

Law of Trade Marks to which we have also made reference

in our submissions on the question of the importance

of relationship between traders as having a role to

play, the contrary of which is submitted by our

learned friends in their written submissions. I am

sorry to produce these, as it were, in the broad but

we have kept the extracts as short as we can for

present purposes, may it please the Court.

MA.SON CJ:  Yes.

(Continued on page 135)

ClT49/2/JH	134	3/5/90
Dairy(2)
MASON CJ: Yes, Sir Maurice.

SIR MAURICE:  Your Honours, all we would wish to say about the

last submission my learned friend put to Your Honours

is that it would make the register a nest of deception
and it is supported, in our respectful submission,

neither by reason nor authority, as my learned

friend conceded. That is all I would wish to say

about it, if Your Honour pleases.

Might I just remind Your Honours of a description

of the phrase "disentitled to protection in a court

of justice". It is in the BALI TRADE MARK case in

England, (1969) RPC 472 and the passage is in

Lord Upjohn's speech at the bottom of page 495.

His Lordship says, at about line 41 or 42:

My Lords, I think the presence of these

words "disentitled to protection in a court of

justice" whether in their original form or in

their phraseology of today are ·explained by the

fact that in order to prevent the registration

of a mark or to secure its removal it must be

established (here, of course, I am not dealing
with questions of onus) not·merely that there

is likelihood of deception or confusion between

two marks judged upon the well-known tests .....

but something more, that is user at the relevant

time by the owner of the existing mark which

under the old common law the court, as

Sir John Romilly said, would protect.

Now, my learned friend cannot say that.	Then,
His Lordship goes on and considers section 11.	A

few lines from the bottom of that paragraph, he says:

Section 11 is, as I have said -

it begins in the right-hand side of that paragraph,

about line 11, Your Honours -

for the protection of the public and anyone may

must prove the practical likelihood of confusion

to the public and this he can only do, for the

purposes of the section, by proving the existing
use by another, not necessarily by himself,
which is likely to cause deception or confusion;
but if he does not establish likelihood of
confusion by some present user of a similar
mark likely to cause deception or confusion
the court would not treat that as sufficient

to disentitle the mark in suit to protection.

object, but if he relies only on similarity he

So, on any view, my learned friend cannot rely on

that.

ClT50/l/SH	135	SIR M. BYERS, QC	3/5/90
Dairy(2)

Can I just give Your Honours the references to the judgment where the learned trial judge dealt with

this question of the way this mark was taken up. It

is at page - I will not read it out - 118 point 4 and

then at page 122 point 9 to 124 point 2 and all of

page 125.

His Honour took the view that the word "otherwise"

in paragraph (d) extended to loss of distinctiveness

and His Honour said what he meant, "coupled with

confusion"and he said that at page 105, at the bottom.

Now Your Honours, might I just say something

about FAULDING.

BRENNAN J:	Was a case raised in the courts below that this was a case falling within paragraph (d) for the reason
that there had been to the knowledge of the present respondent a userof MOOVE in such a way as to build
up a trade reputation which would be affected by the
use of MOO?
SIR MAURICE:	Your Honour, as I understand it, some such case

was made and is referred to in the passages to which

I have given the reference; where His Honour says

the respondents were aware of the aural similarity

of MOO and MOOVE; that they took the assignment 0f

the mark; that they then used it in relation to c·',·'cse

and that they finally used it in relation to fL1,.•,'11red

milk and it was the use in relation to flavoured ~ilk

that caused the confusion and gave rise to the ~,,;t,

as Your Honour wi 11 remember from His Honour's :·: ·, i L ng

of fact. So that one had knowledge of the aurc, l

similarity, knowledge of the reputation of MOOVE

and the taking up of the mark MOO and the use ,~ :' · ·

in relation to flavoured milk.	So, it had all t:1 ·;,,
factors.

(Continued on page 137)

ClTS0/2/SH	136	SIR M. BYERS, QC	3/5/90
Dairy (2)

BRENNAN J: And were those factors then said to be factors

which disentitled MOO to protection?

SIR MAURICE: Well, a submission to the learned trial

judge was,however if blameworthy conduct is

necessary the applicant relies upon the following
matters: the fact that the assignment was a

bare assignment without goodwill; the knowledge

of the first respondent that the trade mark was

not being used and had not been used in relation

to relevant goods at the time the assignment was taken; the knowledge of the first respondent of the lack of reputation or goodwill in connection

with the name MOO at the time of the assignment;

• the knowledge of the first respondent of the

substantial reputation attached to the applicant's

trade markMX>VE at the time of the assignment;
the knowledge of the first respondent of the aural

similarity of the two names. That is the written

submission that was made. That was also preceded

by the submission that blameworthy conduct was not

necessary, but if it was, those factors constituted
the blameworthy conduct.

Now, Your Honour, can I just say something

about FAULDING.	Now my learned friend relied upon
what Mr Justice Taylor said in FAULDING.	Now, of

course, Mr Justice Taylor dissented in that case

and what Mr Justice Kitto says, at page 552, about

the middle of the page, His Honour says, just

below the middle of the page:

by an· amendment of the· defence made

on the day before the hearing the denial

of the validity of the registration and

the allegation that the entry wrongly

remained on the Register were supplemented

by an allegation that the trade mark was

not at the commencement of the action

distinctive of the goods of the appellant.

The relevance of this was to s. 60 and

perhaps to s. 61; for under each of those
sections it is an answer to a reliance
upon a period of registration as conclusive
of validity that the trade mark was not,
at the commencement of the proceedings,

distinctive of the goods of the registered proprietor. No similar amendment seems to

have been made to the notice of motion for

rectification of the Register, but on the

argument of the appeals we were assured by

counsel, without distinction between the two
proceedings, that before McTiernan J. the

case was made by the respondent that the

appellant's trade mark was not inherently

adapted to -

C1T51/l/JL	137	SIR M. BYERS, QC	3/5/90
Dairy( 2)

and he goes on. And then he goes on and says well

this really - the real point in the case was that

the word "barrier cream" had become a generic term

and thus lacked distinctiveness, and that was the

whole point. And Mr Justice Windeyer agreed in

the judgment of Sir Frank Kitto and Mr Justice Taylor

dissented.

Now, it is obviously therefore relevant to say

that one can have regard to the loss of

distinctiveness in proceedings to which section 60

and 61 apply and the learned judge did have that

but as an integer or factor relevant to paragraph (d)

of section 28. Now, Your Honours, it is clear

that one can have confusion by actions short of

passing off.and that is referred to in the TOOWOOMBA case,

9l CLR 595 and 608. Now, Your Honours, that means

that actions short of coimnon law torts or coimnon law

proprietary interests can give rise to confusion

and that section 28(d) has to be read in such a

context. Now the point of that, Your Honour, we

submit, is that one must read section 28{d) bearing in mind that one of the factors which it extends

to is a confusion short of property rights.

Now, Your Honour, from what my learned friend

has put to Your Honours it is clear that there is

a marked distinction between the two arguments and do nothing to assist them.

(Continued on page 139)

ClTSl/2/JL	138	SIR M. BYERS, QC	3/5/90
Dairy(2)

SIR MAURICE (contirruing):  Your Honours, my friend gets no

comfort from section 82. Section 82 talks

about an assignment. It says nothing about the

validity of the registration of a trade mark.	So
my friend gets no comfort out of that.	He gets
no comfort out of section 34, as he admits.	Then

what section, might one ask, that deals with the

presence on the register of confusing marks does

he get comfort out of? And what does he say, "Oh",

he says, "I get comfort out of the section which

forbids it". Now, that is his argument. You have

got to read section 28 which says, "a mark ,the

use of which would be likely to deceive or cause

confusion shall not be registered" and that applie~

throughout the duration of the registration, he says,

"Oh, no, you have got to read that as if"a mark,the
use of which would be likely to deceive or cause

confusion or which would otherwise not be entitled

to protection in a court of equity'', has to have

something else added to it, and, Your Honour, that

is the whole point and he says , "blameworthy conduct"

and we submit, Your Honours, that is not a necessary
integer, but if it is then it was found in this

case and the integers on which the learned judge relied to find it, establish it, unless my friend can, by a process of surgery dissect the integers out and ascribe them to some other form of behavior.

MASON CJ: Now, Sir Maurice, I must say that it was not

immediately apparent to me that you were asserting

that there was blameworthy conduct in this case.

I had understood the appeal as you presented it

to turn on the interpretation of section 28. I

had understood the application for special leave

to be presented on that footing, apart from this

issue about the assignment. The question, whetr-.c.:r

there was blameworthy conduct, assuming the

interpretation of section 28 against you, seems

to me to have been raised during the course of

Mr Einfeld I s address. I had not unders toed it , ,1 be

a real, live issue in the case until then.

SIR MAURICE: Well, Your Honour, L'thi~k, perhaps that is

right, but what we were relying on was of course

said,. 11Well that is not blameworthy conduct" anc.i	the finding of the trial judge and the learned judge
in that sense, obviously, we had to set aside the
finding of the Full Court, and that is why we
applied for special leave and that is why I argued ·the case in-chief as I did, because, as I understood
it, essential to that was some behavior which the
Full Court said was not present and they reached
that conclusion by a process of dissection out.

CIT52/l/CM	139	SIR M. BYERS, QC 3/5/90
Dairy(2)

In other words they took out11distinctiveness'.1 Why?

Because it was dealt with in section 6l(l)(c)
and they took out rrnon-use", because that was dealt

with in section 23 and they said"therefore there is nothing left but confusion". Now, we at all

times relied on the finding of the trial,judge, that

when you added all these together you had matters

to which a court of equity, would not extend its

protection. Now, Your Honour, in that sense, of

course, our argument has not changed, but as I would

appreciate it, essential to our argument is that

the finding of the Full Court that it is necessary

to have blameworthy conduct and that the conduct ,that

the trial judge found ceased to be blameworthy in

some way, because it was splintered out that that

had to be set aside and that was the task I undertook

in-chief and that is the task, I suppose, in a sense

I have taken up in reply, but I assent, with respect,

to what Your Honour the Chief Justice has said to

me, that the finding of the Full Court was that there

was no blameworthy conduct and it was on the basis

that that decision was wrong that we applied for

special leave and addressed Your Honours in-chief.

I think that is all I can say about that. If the

Court pleases. That is all we would wish to say,

if Your Honours please.

MASON CJ: Yes, thank you, Sir Maurice. The Court will consider

its decision in this matter.,

AT 2.55 PM THE MATTER WAS ADJOURNED SINE DIE

CIT52/2/CM	140	3/5/90
D airy(2)