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

[1990] HCATrans 86

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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

COMPANY LIMITED

Respondent

MASON CJ
BRENNAN J
DEANE J
DAWSON J
TOOHEY J
GAUDRON J

Dairy(2)

McHUGH J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON WEDNESDAY, 2 MAY 1990, AT 2. 16 PM

Copyright in the High Court of Australia

ClT 44/1 /ND 1 2/5/90

SIR M. BYERS, QC: If Your Honours please, I appear with

my learned friend, MR J.M. IRELAND, for the

appellant, a respondent before the Full Court.

(instructed by Clayton Utz)

MR M. EINFELD, QC:  May it please the Court, I appear with

my learned friend, MR R.G. KAYE, for the

respondent to the appeal. (instructed by Swaab &

Associates)

MASON CJ: Yes, Sir Maurice.

SIR MAURICE:	I think my friend wants to say something, ~'our Honour.
MR EINFELD:	Your Honours, before Sir Maurice cormnences, we would

wish to make a short submission as to the scope of the

appeal. The appeal raises two questions: one is to

section 28 of the TRADEMARKS ACT; the other is a

shorter question of validity of a deed of assignment

by which my client acquired its trademark.

Your Honours, the argument on the special leave

application concerned only the difficult questions that arise in respect of section 28 and during the

course of the application for special leave no

submissions were made; indeed nothing was

said during the oral argument about the other matter,

the question of the validity of the deed of

assignments.

Your Honours, at the conclusion of the special

leave application the Court did not retire but
granted leave without limitation and the validity of
the assignment question was dealt with in the Full Court
and is dealt with both in the submissions of my
learned friends and ourselves but we would wish to

submit that, appreciating the point of time in

which we now do so, the question relating to the
validity of the deed of assignment is not a matter

which would in the ordinary course of being

an appropriate one for the grant of special leave,

it turns, we would say, on factual questions. It does

not give rise to any legal question of significance.
What ought to have happened at the hearing of the
leave application is that when Your Honours granted
leave in general terms, having heard only the argument

as to the section 28 matter, one apprehends that the

point should have then been made as to whether or

not the leave was general in nature as it was expressed

to be or limited to the section 28 point.

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Dairy(2)

MASON CJ:	Was the ground in the draft notice of appeal?
MR EINFELD:	Yes, it was in the draft notice of appeal and

also in the written submissions of the parties

and we accept that. What we would - - -

MASON CJ: Well, it seems clear enough then that the grant

was not made per incuriam.

MR EINFELDi Well, Your Honours, as we say,there were written

submissions handed up.	The scope of the oral argument
was limited solely to the section 28 point.	We would

respectfully submit that the question of assignment

of the deed turns on construction of the deed itself

and other factual questions that were before the

• •	trial judge and would not, in the ordinary course, have
been appropriate for grant of special leave. I accept
what Your Honour the Chief Justice says, but we would suggest, with respect - we would submit that it would
be appropriate that the leave granted in respect of
the other point in fact be revoked because it really
just does not raise any point of significance, it
turns very much on its facts. What His Honour did
was to say - the argument against us on this appeal
is that where the deed of assignment expressed an
intention to assign the deed with goodwill, in fact
the deed was assigned without goodwill as His Honour
found, and in those circumstances it is suggested
that the deed was ineffective to assign the trademark
question.

MASON CJ: Well, Mr Einfel~ it may be a more convenient course

to hear Sir Maurice in support of the appeal, hear

what he has to say about this second point and then

you can say what you want to in response to that and if you feel so advised at that time you can continue

with this application to have the grant of special

leave rescinded so far as it relates to this particular

point.

MR EINFELD: May it please, Your Honour.

MASON CJ: Yes, Sir Maurice.

SIR MAURICE: 

If Your Honours' pleas~ the main point involved in

the appeal is the question of interpretation of
section 28 of the TRADE MARKS ACT and, perhaps,
sections supportive or that section. There have been

written argument~ as Your Honours are probably aware,
and what I would propose to do, subject to
Your Honours' view as to it being an appropriate course,

is to go to some of the sections of the Act which we consider significant to the argument, then go to the decision in RIV-OLAND and then during the course of

the RIV-OLAND decision make appropriate submissions to

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Dairy(2)

Your Honours which would raise, I think, and

probably exhaust all we would wish to say on the

section 28 point. The other points, Your Honours,

even that which my learned friend had mentioned,

would be very short points. Now, Your Honours,

can I go to section 14 - can I go to the

TRADE MARKS ACT first - now, Your Honours, will

remember that section 14 makes provision for a

register and I do not need, I think, to remind

Your Honours of that provision. There are to

be particulars of registered trademarks and other

prescribed matters including registration of

assignments - that is section 20. Then, Your Honours,

section 22:

Subject to this Act, a prescribed court

may, on the application of a person

aggrieved ..... order the rectification of

the Register -

and paragraph (b)	I think,Your Honours, is the one
that is important:

by the expunging or amendment of an entry

wrongly made in or remaining in the Register.

And Your Honours will remember in this Court's

decision in 129 CLR,BALI V BERLEI,the Court said,

well, remaining in the register meant originally

entered - extended to entries on the register

properly made and remaining there.

(Continued on page 5)

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Dairy(2)

SIR MAURICE (continuing):  So that, section 22 picked

up section 28 and applied that to the register

as it continued in existence. Then, Your Honours,

section 24 and 25 and 26 - section 24, Your Honours

will remember, is the provision which requires that

trade marks in part A are to be distinctive. At

section 24(1):

A trade mark is registrable in Part A

of the Register if it contains or consists

of -

(a) the name of a person .....

(b) the signature of the -

person and:

(c) an invented word;

(d) a word not having direct reference

to the character or quality of the goods

or services in respect of which

registration is sought and not being,

according to its ordinary meaning, a

geographical name or a surname; or

(e) any other distinctive mark.

Your Honours will remember that this Court has said

in THE REGISTRAR OF TRADE MARKS V MULLER, 144 CLR 37,

that all marks in Part A must be distinctive. In

other words, that paragraph (e) of subsection (1) is a sort of cumulative notion so that everything

preceding paragraph (e) must none the less also be

distinctive in the trade mark sense which, of

course, is explained at section 26 that:

it is adapted to distinguish goods or

or services of a person.

Then, section 25, if I may go back for a moment, says:

A trade mark is registrable in Part B -

must only be -

capable of becoming distinctive.

All Part A trade marks must be distinctive.

Now, if I might, I must make a brief connnent,

Your Honours.	Of course, the point of that is that
to say that each mark in Part A	must be distinctive

of the goods of the person who is a registered proprietor of it, is a point against confusion

because it says every mark must be distinctive of

or adapted to distinguish that person's goods so it

eliminates the notion of confusion.

C1T46/l/JH	5	SIR M. BYERS, QC 2/5/90
Dairy(2)

That would be the only significance for the present purposes that we would see in Your Honour's

decision in MULLER to the effect that I have

mentioned.

Then, Your Honours, can I go now to section 28

and Your Honours will remember that it says that:

A mark -

(a) the use of which would be likely to

deceive or cause confusion;

or - and I have interpolated "or", of course -

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

or -

(c) which comprises or contains scandalous

matter; or
(d) which would otherwise be not entitled

to protection in a court of justice,

shall not be registered as a trade mark.

(Continued on page 7)

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Dairy(2)

SIR MAURICE (continuing):  And when one reads section 28

with section 22(1)(b), that enables one to say

that section 28 applies not only to the entry of

the trade mark on to the register but to its

remaining on the register. So, therefore, 28

governs the criterion of entry and remaining on
the register of trade marks - read, no doubt, also
with section 24 and 26. But that is the rule and

the rule is against confusion. It says:

the use of which would be likely to deceive

or cause confusion;

(b) ..... contrary to law;

(c) ..... contains scandalous matter; or

(d) which would otherwise be not entitled

to protection in a court of justice,

shall not be registered -

Your Honours, can I just say a word to:

the use of which would be contrary to law -

would seem to have no substantive relationship to
paragraph (d). So if you had a mark which the

law forbad you to use then that cannot stay on
the register per se and paragraph (c), Your Honours,

which comprises or "contains scandalous matter",

again, one would image that that is a total

description of disqualification.

Now, Your Honour the Chief Justice said in the

BALI V BERLEI case, to which I will refer later,

but paragraph (a) was influenced by paragraph (d)

and it may be, as Your Honour was perhaps indicating,

that they share the one or derive from the one

universe of discourse in the sense that they are

talking about allied subject-matters but, of course,

it is only to that extent, in our respectful

submission, that one would read paragraph (d) into
paragraph (a).

What that means, so that we can make ourselves quite clear, we say that you treat this according

to its natural meaning and its natural meaning

is a series of disjunctive disqualifications and

·if any one of those is met the mark is liable to

be expunged under section 72.

At this stage, it might be convenient if I

were to remind Your Honours of the history

because the learned judges in the RIV-OLAND case

do refer to it.	The previous section was
section 114 of the 1905 Act.	Your Honours will

C 1T4 7 /1 /ND	7	SIR M. BYERS, QC 2/5/90
Dairy(2)

find that set out I regret to say with a

misspelling or a mistake at page 9 of our written

submissions, at the top of the page.	So the
1905 Act said:

No scandalous design, and no mark the use of which would by reason of its being

likely to deceive or otherwise be deemed

disentitled to protection in a court of

justice, or the use of which would be contrary

to law or morality, shall -

that "such" should be "shall", Your Honours -

be used or registered as a trade mark or part

of a trade mark.

(Continued on page 9)

ClT47/2/ND	8	SIR M. BYERS, QC 2/5/90
Dairy(2)

McHUGH J:	You must be using a different edition of your written submissions: The Act is - the
legislation is at the bottom of page 8 in mine and
the correction is made.

SIR MAURICE:  I am indebted,Your Honour, I have been

overtaken.

TOOHEY J:	I think what happened, Sir Maurice, we received
the list of corrections to the original submission
and that was in turn replaced by a corrected version.

SIR MAURICE:  Thank you, Your Honour. We have photocopies

available, if Your Honours please, and perhaps I

should just hand them up, of a number of sections

of the 1905 Act, including section 114. I do

not wish to take Your Honours to them, unless

Your Honours wish to go to them, at the moment.

McHUGH J: Well,we have got copies of the whole Act anyway.

SIR MAURICE:  As Your Honour pleases. Now, Your Honours, if

one is going to history and I suppose one should be

complete, so can I now give Your Honours a very

brief statement about what happened. There was the

Knowles Report, Your Honours. That contained a

section, which was section 112, annexed to the

report - a draft bill,I should say, Your Honour,

which was identical - would Your Honours just

pardon me a moment - can I come back to that later,

if Your Honour pleases?	We seem to be in a slight
state of confusion at the moment.	Section 112 in

the Knowles Report was similar to section 114 in

the 1905 Act. That.was before the last world-war.

Then, Your Honour, after the last world war, there

was a Dean Report, which introduced the present

section 28, with a connnent which says that the

proposed section 28 would be substantially the same,

and I will read Your Honours the connnent, which

Your Honours will find also in Mr Justice Lockhart's

decision. It says:

Clause 28, while in different words, has in

substance the same effect as section 114

of the present Act, but it relieves the of "morality".

So the word "morality" was dropped., Now, what

they have said has in substance the same effect

as section 114, but relieves the Registrar and

the Court from considerations of moralitv. Now

the author of that comment obviously must have

treated section 11 of the English Act as disjunctive,

because his draft is clearly disjunctive.

CIT48/l/CM	9	SIR M. BYERS, QC 2/5/90
O'Toole(2)

SIR MAURICE: 

It is true the word "otherwise" is there in

section 28 as it was in section 114,but in
section 114 it was confined to denial of protection of

court by reason of confusion or deception or

otherwise, whereas in the present section it is,

in our respectful submission, a drag.net provision

and comprisedany other reason for which protection

would be denied.

Your Honours, that is the history. I regret to

say that I have not yet given Your Honours the cooy of the

Knowles Report. Perhaps, if Your Honours will pardon me, I will hand up the Knowles position later.

We have 112, if Your Honours please, and if I might hand that up to Your Honours and give a copy to

my learned friend. It is identical, really, with

section 114 of the previous Act.

So that if one is looking to history, Your Honours,

one has the 1905 Act, section 114; one has

the Knowles Report which is similar; one has the

Dean Report which was said in substance, so the

draftsman said, the draftsman of the report, but the

draftsman of the section wrote the. section

disjunctively and that is really the whole historical

situation.

Your Honours, could I then go back to the text

of the Act and remind Your Honours, if I may, of

section 34. The purpose of my doing so, Your Honours,

is to support the proposition that where the Act
permits registration of marks that are similar or

deceptively similar, it does so by specific provision,

and in section 34 it provides for the case:

of honest concurrent use -

in such a case -

or of other special circumstances which, in the

opinion of the Registrar, make it proper so to

do, the Registrar may permit the registration

of trade marks which are substantially identical
or deceptively similar, or, but for the honest
concurrent use or other special circumstances

would be deceptively similar, for the same goods

or services or other goods or services, by more

than 1 proprietor subject to such conditions and
limitations (if any) as the Registrar imposes.

So, there is no right to registration. There is a

right to approach the Registrar. There is a discretion

widely granted, subject to conditions, so as to contain

the confusion that might in such circumstances arise.

ClT49/l/LW	10	SIR M. BYERS, QC	2/5/90
Dairy(2)

Your Honours will see that the second arm

of section 34(1) says while admittedly having

previously remarked that substantially identical

or deceptive similar marks might, in special

circumstances, or honest concurrent use, be

registered, it then goes on to say:

or, but for the honest concurrent use

or other special circumstances would be -

so that seems to be saying that there has been a use

which has enabled the public to identify the

respective marks, in other words, which has prevented

deception from the use of the mark.	And, of course,
the registrar in exercising his authority under	·

section 34(1) would have to have regard to the public

interest because that is what, for example,

section 28 is all about, and that would enable him to

impose conditions limiting the use of the marks so

as to avoid confusion.

(Continued on page 12)

ClT49/2/LW	11	SIR M. BYERS, QC	2/5/90
Dairy(2)

SIR.MAURICE (continuing):  So, Your Honours, section 34(1) is

adverted to in section 58(3), as we would submit

and since the subject-matters are similar, could I

go there now, Your Honours.

Section 58(3) says:

Where 2 or more persons are proprietors of

registered trade marks -

so, they are on the register -

which are substantially identical or

deceptively similar, whether for the same

goods or services or other goods or services,
rights of exclusive use of either of those
trade marks are not ..... acquired by any 1 of
those persons as against any other of those
persons by registration of the trade marks
but each of those persons has otherwise the
same rights as against other persons (not

being registered users) as he would have if

he were the sole registered proprietor.

So, they get, each within his field, the same rights

as a registered proprietor but not against each other

and that, as we would submit, Your Honours, fleshes

out, if I may use that expression, section 34.

Now, Your Honours, there is a question of

associated trade marks; that is in section 36 and their

a s s i g nm en t i s de a 1 t w i th in s e c t i on 3 7 . Wh a t

those two sections require is that there should be the one person if there are the same sort of marks

registered and they can only be assigned, as it were,

in bulk; that is, sections 36 and 37.

Now, if Your Honours were next to go to

section 59:

In legal proceedings relating to a registered

trade mark (including applications under

section 22), the original registration of
the trade mark and the registration of any
assignment or transmission of the trade

mark shall be deemed to be valid unless the

contrary is shown.

Now, that is the effect of registration, nothing

else. Then, section 60 goes - might I just pause

for a moment. Your Honours will have observed that

section 59 applies also to proceedings under

section 22, "The original registration ..... shall

be deemed to be valid unless the contrary is shown"

and then, section 60 says:

ClT50/l/SH	1 2	SIR M. BYERS, QC	2/5/90
Dairy( 2)

In legal proceedings relating to a trade
mark registered in Part A of the Register

(including applications under section 22) -

that is, expungment amongst others -

instituted after the expiration of 3 years

from the date of registration, the trade

mark shall not be removed from the Register
or be held invalid on the ground that it was

not a registrable trade mark under section 24 -

that is distinctive -

unless .it is proved that it was not, at the

. .	commencement of the proceedings, distinctive
of the goods or services of the registered
proprietor.

(Continued on page 14)

-

ClTS0/2/SH	13	SIR M. BYERS, QC	2/5/90
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SIR MAURICE (continuing): So, you may strike out the original

registration after the three year period upon the
ground that at the date of the commencement of the
proceedings it was not distinctive of the goods or

services of the registered proprietor. And then,

Your Honour, section 61 says that:

In legal proceedings relating to a trade

mark registered in Part A ..... (including

applications under section 22), the

original registration of the trade mark

under this Act -

and again on~y original registration -

shall, after the expiration of 7 years

from the date of the original registration,

be taken to be valid in all respects,

unless it is shown -

(a) ..... fraud -

I need not worry Your Honours with that -

(b) that the trade mark offends against the

provisions of section 28; or

(c) that the trade mark was not, at the

commencement of the proceedings, distinctive

of the goods or services of the registered

proprietor.

Then (c) -

does not apply to a trade mark registered before the commencement of this Act until after the expiration of 3 years.

So, he has a three year run as it were. So what sect ion 61

says, you can always set aside under section 22

a registered mark on the ground of fraud, offend

section 28 or it was not distinctive at the commencement

of the proceedings. And of course (c), in our

submission, relates to an application on the ground

only of loss of distinctiveness. Where you have

loss of distinctiveness coupled with another use of
the mark creating confusion, as the present case,

section 28(a) applies.

Now, Your Honours, since there is a question of

assignment perhaps I should mention section 82.

If Your Honours have the pamphlet print it is at page

34. It says:

ClTSl/1/JL	14	SIR M. BYERS, QC	2/5/90
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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 ..... services.

In the present case the instrument was an assignment

with goodwill and the judge has held that there was

no goodwill in fact. Then (2) says:

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 -

now, we do not say that of the MOO mark of course

because it was, for a number of years from 1966 to 1974,

used in relation to cheese, I think it was - cream, I

am sorry, not much different -

(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

assigno~ and assignee upon their respective

goods or services.

(Continued on page 16)

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Dairy(2)

SIR MAURICE (continuing):  So, Your Honour sees that

subsection (2) is again inserted to prevent

deception where you assign a trade mark normally,

one would think, that is where you would assign

a trade mark, without goodwill and, indeed,
subsection (2) is expressly designed to ..... anq,
again, the section specifically aims at the

prevention of deception.

So, what we respectfully submit to Your Honours

is when one bears in mind the specific statutory

provision dealing with the discretion to register marks which are deceptively similar are conferred by section 34, that there is no reason to read down

section 28(a) so as to allow deceptive marks to

remain on the register and that is what the

RIV-OLAND case does. In a different statutory

context that is what the GE case does and that is

the main point which we would wish to raise and

develop for Your Honours.

Your Honours, could I now go to the

RIV-OLAND case with,thatintroduction. It is

RIV-OLAND, 19 FCR 569 and what we wish to say is

that this case is, with respect to the learned

judges who formed the majority, wrongly decided.

The judges forming the majority were the present

Chief Justice Mr Justice Bowen and Mr Justice Lockhart.

Now, the facts, of course, perhaps go some way to explaining the decisions, if I may be permitted to

such a remark - perhaps I should not say it - but

if I can just read the headnote:

The appellant had misappropriated the

respondent's trade mark and used it for

many years in a prosperous business selling

a product identical with that of the

respondent's. The appellant, however, had

never become the proprietor of the mark.

On 30 June 1978, after the appellant had

used the mark for some 11 years (some seven

years wrongfully), the respondent had

lodged an application to register the mark

under the TRADE MARKS ACT 1955 ..... At the
time of its lodgment (the deemed date of
its registration) the mark had been the
property of the respondent and the mark had

been distinctive of the respondent's goods.

Also on that date the respondent's use of the mark had been "likely to deceive or cause confusion" within the meaning of section 28(a)of the Act.

So, you had two. It was distinctive and it was likely

to deceive or cause confusion:

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Because it had been the appellant's

misconduct that had created the likelihood
of deception or confusion a Supreme Court

had dismissed the application to expunge

the mark from the register.

It was held that the word:

"or" that introduced paragraph (d) of

section 28 ..... was not to be construed as

disjunctive.

I might just pause for a moment, Your Honours.

Their Honours -were saying, presumably, that it must

be construed as conjunctive. The word:

"otherwise" in paragraph (d) served to

limit the circumstances in which the

provision of paragraphs (a), (b) and (c)

of that section would disentitle a trade

mark to the protection afforded by

registration.

Can I take Your Honours to page 570, about the middle

of the page and innnediately above the word

"Proprietorship'.'.

(Continued on page 18)

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Dairy(2)

SIR MAURICE (continuing):

The facts are set forth in the reasons

of Justice Lockhart and Justice Northrop

and I shall not recapitulate them. I agree

in general with the reasons for judgment of

Justice Lockhart~ but wish to add some

observations of my own upon the three

issues I have listed above.

So there is a sort of general agreement.	So now
could I take Your Honours to page 572, the

other questions being immaterial for present

purposes. And then under the heading "A mark

likely to deceive or cause confusion", His Honour

said:

The most difficult question -

section 28, and then he says:

At first blush one might read section 28 as

referring to a mark which was intrinsically

of such a character that its use was likely
to deceive or cause confusion or be contrary
to law or that it comprised or contained

scandalous matter. A mark, the use of which

would fall within paragraphs (a), (b) or (c)

for any of these reasons would not be entitled

to protection in a court of justice. Read in

this way paragraph (d) appears then to be a

dragnet provision to pick up marks of a type

which would otherwise be disentitled to

protection in a court of justice, so that

these marks also should be denied registration.

And we would say, with great respect, that is right.

However, the authorities show that it is

not just the intrinsic character of the mark

which is referred to in section 28(a). It

is necessary to look at the situation of the

use of marks in Australia in determining

whether there is likelihood of deception.

So he says you have got to look to the facts.

A question is whether a substantial number of

persons by reason of the use of the mark by

the Marble Co. would be deceived or confused

by use of the Settef mark -

And then His Honour -

whether they would infer -

he says -

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Dairy(2)

the Settef goods had come from the

Marble Co or would be caused to wonder whether that might be the case.

And that, of course, is a quotation from

Mr Justice Kitto:

In the current legislation the position has

been complicated by provisions relating to

concurrent user and the assignment of

trade marks without goodwill.

He sets out section 34, which is a clear, specific,

statutory provision. Then he says:

No doubt this provision had its

origin in the situation that traders in
different parts of the country might be

circulating goods within their particular

region under marks which were similar -

and then -

In such circumstances -

His Honour goes on to what I might call assumptions

as to why section 34 came in.	Then he goes on and
says:

It is not entirely clear to my mind

whether Settef was not entitled to
registration notwithstanding the terms

of s 28(a) because it was an honest concurrent user with the Marble Co.

Then he goes on and discusses that which I need not worry Your Honour with, because there is no

question in this case of honest concurrent user.

(Continued on page 20)

ClT53/2/CM	19	SIR M. BYERS, QC	2/5/90
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SIR MAURICE (continuing): It is the paragraph towards the

bottom of the page:

However, the argument of counsel for

the Marble Co has an attractive simplicity.

It is based on the proposition that if one looks at the findings of the trial judge it

is clear that there would be a section of the

market which at 30 June 1978. would have been

likely to be deceived or have confusion caused
to it by Settef being registered and using

its mark in Australia because of the extent

of the use which prior to that had been made

by the Marble Co of the mark in Australia.

Settef, Your Honours, was an Italian company.

It is a simple proposition that Settef was

not entitled to registration because the mark

was in conflict withs 28(a) of the Act.

This really is his reason:

This would appear to place a premium upon the "assiduous efforts of an infringer" to

adopt the phrase used by Windeyer Jin RE

BALI BRASSIERE ..... One must look more closely

at the interpretation of s 28.

I might pause there for a moment.

His Honour is saying the efforts of the

assiduous infringer. Of course, what registration

does do is place the registered proprietor in the

position to control infringement because he said,

"You don't have to prove any title to your mark."

And then he refers to what Mr Justice Fox says

and I do not wish to read. that, if Your Honours please.

His Honour adopted the reasoning based on

Lord Diplock's remark and then:

It is however, to be noted that the Court

of Appeal in New Zealand construed the

corresponding provision in that country as

requiring refusal of registration where there

was the likelihood of deception or causing
of confusion notwithstanding there was no

blameworthy conduct on the part of the

proprietor of the trade mark.

And then he gives the name of the case.

The question is a difficult one but my own inclination is to uphold the decision of the

learned trial judge in the circumstances of

this appeal. I have not obtained much

C 1T54/l /ND	20	SIR M. BYERS, QC 2/5/90
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assistance from the close analysis of the

slight differences in wording adopted in the

variations in language used in the provision

in the United Kingdom, New Zealand and in Australia from time to time or the way in which the word otherwise appears in par (d).

I am, I think, conscious of leaning against

a construction of s 28 in regard to blameworthy

conduct on the part of a proprietor -

but it would be to infringe it, if I may

interpolate that -

which would lead to a situation described

by Windeyer J where the proprietor of a mark

might be denied or lose registration by reason

of "the assiduous efforts of an infringer" -

Your Honours, His Honour must be referring

to the person who is not registered, I assume,

and I think, when he used the word "proprietor"

one would think that is what he means -

or to adapt the words to cover the period
before the registration "the assiduous efforts
of a misappropriating user". Furthermore,

the trade mark law providing for registration

is designed rather to clarify the position

of proprietors of trade marks and facilitate

enforcement rather than to raise difficult

and complex questions which would be

generated by the contrary construction.

And then His Honour goes to section 82 and then

that really concludes His Honour's discussion.

I shall not worry Your Honours with

Mr Justice Northrop; he concludes in favour of

the appellant and we would rely on it. His Honour

considers the authorities, His Honour considers

the GE case, His Honour considers previous authorities

and His Honour says, at page 589:  (Continued on page 22)

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SIR MAURICE (continuing):

For reasons set out earlier in these

reasons, in my opinions 28 of the Act is

in such a different form from s 11 of the

United Kingdom Act that the opinion of

Lord Diplock in the GE case has no direct

application. In particular, in my opinion
there is no reason v..hy s 28 of the Act should

not be construed according to normal canons

of construction. Each paragraph is separate

and distinct from each of the other paragraphs

ands 28(d) does not qualify the operation of s 28(a). In any event, on the facts of

this appeal, the statement of law set out in

the third paragraph of the summary of law - I need not worry Your Honours with that because that

is a factor that probably does not arise in this case.

When he says "earlier", I think His Honour is

referring to what he had said at page 588, about the

middle of the page, the paragraph beginning:

In my opinion, the contentions made on

behalf of the appellant are persuasive and

should be accepted.

Then he says:

The common law developed rights by which a trader was able to protect his trade mark

against persons infringing those common law

rights. The TRADE MARKS ACTS conferred

statutory rights upon registered proprietors

of trade marks and empowered registered

proprietors to enforce those rights against

persons infringing those rights. In creating

and conferring those rights Parliament

prohibited the registration of trade marks

which offended the provisions of what is now

s 28 of the Act. In particular, Parliament

proscribed the registration of a trade mark

which would be likely to deceive or cause

confusion. At the same time Parliament has

created exceptions to the general prohibitions

contained ins 28. The discretion conferred

upon the Registrar bys 34 of the Act to register
a mark ..... is an illustration.

So, we submit that the dissenting judgment is

correct. Can I now come to the reasons advanced

by Mr Justice Lockhart and I think they begin at

page 596. Your Honours will observe that, about

the third full paragraph, he says:

ClT55/l/SH	22	SIR M. BYERS, QC	2/5/90
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Section 28 has taken its present form since

the Act first came into operation in 1955.

Its immediate statutory predecessor was

s 114 of the TRADE MARKS ACT 1905 (Cth) which

differed both in language and structure from

s 28 of the Act.

Then he sets out section 114. Then, he says:

Section 114 took substantially the same form

as s 11 of the TRADE MARKS ACT 1938 (UK) -

Now, could I just remind Your Honours of what that

says because it could be important:

"It shall not be lawful to register as a trade

mark or part of a trade mark any matter the

use of which would, by reason of its being

likely to deceive or cause confusion or

otherwise, be disentitled to protection in

a court of justice or would be contrary to

law or morality, or any scandalous design."

(Continued on page 24)

ClT55/2/SH	23	SIR M. BYERS, QC	2/5/90
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SIR MAURICE (continuing):  So what Lord Diplock refers to

as the "paramotmt and subordinate" clauses are:

by reason of its being likely to deceive

or cause confusion or otherwise, be

disentitled to protection in a court of

justice."

Now, His Lordship's reasoning depended upon those

phrases. Now, His Honour then goes on and refers to:

Two views have been taken of s 28(a). The

first of these views is that in 1955 the

legislature in Australia deliberately departed

from the previous wording of s 114.

McHUGH J: Well, it is not likely they did, is it, because the

Dean Report in 1954 had said that clause 28 had the same effect as the old section 114.

SIR MAURICE: That is, they say, in substance and, obviously

Your Honour, one has only to look at the two pieces

of English to see that they did depart from it. You

cannot read them both together and say they did

not depart from it because manifestly they did.

Whatever they may have thought, how can you say

that the words:

by reason of its being likely to deceive
or cause confusion or otherwise, be
disentitled to protection in a court of
justice, or would be contrary to law or

morality -

forgetting the business about is the same as section 28,

it is manifestly different.

McHUGH J:  I thought it was only morality, was it not, that was -

SIR MAURICE: But, Your Honour, when one looks to section 28 one

finds no connection between "the use of which would be

likely to deceive or cause confusion" and "which

would otherwise be not entitled to protection in a

court of justice". They are disjoined. It says

"or, or, or", whereas the other Act says "by reason

of its being likely to deceive or cause confusion or

otherwise, be disentitled to protection in a court of

justice". Now, that is the cast of a language which

led to Lord Diplock's conclusion and it is obvious,

beyond doubt, with great respect, that section 28'uses different languag

C1T56/l/JL	24	SIR M. BYERS, QC	2/5/90
Dairy(2)

Now, that is our submission. Now, Your Honours,

the word "otherwise", of course, is not tied

to (a) but what it does is disjoin from the

preceding paragraph and, Your Honour, of course

as Mr Ireland reminds, section 114 is in substance

the same as section 11. Now, Your Honour,

His Honour then refers to the New Zealand case

and he sets it out and then he says, at the bottom

of the page:

Their Honours expressed the view that the word

"or" ins 16 ..... must be read disjunctively

and appeared to have been a deliberate change.

Well, we would say with great respect, Their Honours

rightly said that it was:

a deliberate change made by the legislature

in 1953 so that there was no justification

for concluding that the likelihood of

deception or confusion was in some way modified

by the final phrase of s 16.

Then His Honour gives the reference. Then he refers

to the Dean Committee Report, which Your Honour had

quoted to me, and then refers to what Mr Justice Mason

said in the Australian BERLEI case where the language

His Honour says:

"The meaning of the words 'the use of

which would be likely to deceive or cause

confusion' ..... is influenced by the language

in which s 28(d) is expressed when it refers

to a mark 'which would otherwise be not

entitled to protection'.

(Continued on page 26)

ClT56/2/JL	25	SIR M. BYERS, QC	2/5/90
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SIR MAURICE (continuing):

Thus, a special problem may confront the court

when a mark which was not likely to deceive or

cause confusion at the time of its original

registration subsequently becomes so or when two

marks substantially identical or deceptively similar

have been registered following honest concurrent

use.

Then His Honour refers to section 34. So the "honest

concurrent use" is, of course, on the register,
section 34:

Thus, a special problem may confront the court when a mark which was not likely to deceive

or cause confusion at the time of its original

registration subsequently becomes so -

and I think that is the case here although when the

MOOVE mark was registered - which was in 1978, I think -

the MOO mark had been in a state of disuse since

1974 and remained so until 1987. It remained so

later than 1987 - it just was not used. So that is

why the learned judge said it is an essential to the

protection you get that you use the mark, and that

is clearly not a case of the learned trial judge.

And then Their Honours refer to the HTX case

and Mr Justice Fox, and then they go to Lord Diplock.

Can I just read this with some care if Your Honours

will permit me. He said:

11

••• as a matter of syntax -

now what he is doing, Your Honour, is reading

1972 1 WLR, page 740. Can I at this stage,before taking

Your Honours through what Mr Justice Lockhart said,

just remind Your Honours of what Lord Diplock said.

At the top of page 740, Lord Diplock, referring to

what the Court of Appeal says, at the third line: The Court of Appeal, having held, as I think

rightly, that the use of the rondel mark

simpliciter as a trade mark on July 20, 1967,

would have been likely to cause confusion, were

of opinion that its continued presence as an

entry on the register was prohibited by section 11 -

and Your Honours see he now italicizes the words he

conceives to be important:

"11. It shall not be lawful to register as a

trade mark or part of a trade mark any matter

the use of which would -

and these are the words that are italicized -

ClT57/l/LW	26	SIR M. BYERS, QC	2/5/90
Dairy(2)

by reason of its being likely to deceive

or cause confusion or otherwise, be
disentitled to protection in a court of justice,

or would be contrary to law or morality -

and then His Honour goes to section 13 which is rather

like section 61 of the Australian Act.	Then he goes
and says:

They held that it fell within exception (b) -

which says that:

the trade mark offends against the provision

of section 11 -

So His Lordship had to set that aside. Then he says:

The ratio decidendi of the Court of Appeal

involves two questions as to the true construction

of section 11. The first is as to the time to

which the prohibition expressed in the words

"It shall not be lawful to register" relates.

The second is as to whether a limitation upon the

prohibition of the registration of a potentially

deceptive or confusing trade mark is imposed by the

requirement that its use "would ... be disentitled

to protection in a court of justice".

The words in which the proviso to section 13

is expressed are of assistance in answering

the first question as to the construction

of section 11, but throw no light upon the

answer to the second question.

(Continued on page 28)

ClT57/2/LW	27	SIR M. BYERS, QC	2/5/90
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SIR MAURICE (continuing):  Then he goes to the second

question if Your Honour would skip the next

six or seven lines. His Lordship says:

With regard to the second question, as a
matter of syntax the dominant phrase in
the relevant description of the
disqualified matter is: - matter "the use

of which would be disentitled to protection

in a court of justice". The words "by

reason of its being likely to deceive or cause confusion or otherwise" constitute

a subordinate clause of which the
syntactic function is to restrict the

amplitude of the disqualified matter.

This it does by reference to the reasons

for the disqualified matter's being

disentitled to protection in a court of

justice. But the inclusion in the

subordinate clause of the words "or

otherwise", if they are to be given a

literal interpretation, has the consequence

that the clause is wide enough to embrace

any reason for the matter being disentitled

to protection in a court of justice, and

the clause thus becomes devoid of any

restrictive effect and therefore performs

no function at all.

Now we would, with respect, submit that that is a

rather strong statement. After all, one is talking

about a reason which must render it disentitled - and

is positive - to protection in the court of justice.

He goes on:

Furthermore, the use of the subjunctive mood in the dominant phrase gives rise to

ambiguity as to the time to which the test

of disentitlement to protect relates -

and then he goes on to discuss questions of time.

So, what is apparent from that passage is

His Lordship's close attention to the language of

section 11 and then Mr Justice Lockhart, about the

middle of the page - going back to RIV-OLAND -

page 597:

Lord Diplock said (at 740; 517) (with

reference to section 11 ..... ):

" ... as a matter of syntax the dominant

phrase in the relevant description of the

disqualified matter is: matter 'the use of

which would be disentitled to protection in

a court of justice'. The words 'by reason

of its being likely to deceive or cause

confusion or otherwise' constitute a

ClT58/l/JH	28	SIR M. BYERS, QC 2/5/90
Dairy ( 2)

subordinate clause of which the

syntactic function is to restrict the

amplitude of the disqualified matter.

So, there is His Lordship talking about the English

Act:

This it does by reference to the reasons

for the disqualified matters being

disentitled to protection in a court of

justice. But the inclusion in the

subordinate clause of the words 'or

otherwise', if they are to be given a

literal interpretation, has the consequence

that the clause is wide enough to embrace

any reason for the matter being disentitled

to protection in a court of justice, and
the clause thus becomes devoid of any

restrictive effect and therefore performs

no function at all."

It is quite clear, we would respectfully submit,

that that passage is one in which His Lordship is

talking about the syntax of the English provision

which has no correspondence in the Australian

provision. Then:

(at 751; 526), His Lordship expressed the

view, based on the doctrine developed by

the Court of Chancery with respect to

common law trade marks, that:

"If the likelihood of causing

confusion did not exist at the time when

the mark was first registered, but was the result of events occurring between

that date and the date of application to

expunge it, the mark may not be expunged

from the register as an entry wrongly remaining on the register, unless the likelihood of causing deception resulted from

some blameworthy act of the registered

proprietor of the mark, or of a

predecessor in title of his as registered

proprietor."

(Continued on page 30)

ClT58/2/JH	29	SIR M. BYERS, QC 2/5/90
Dairy(2)

SIR MAURICE (cont:inuing):  If Your Honours were to go to page 7 51,

these are the four rules, as it were, that

His Lordship formulated in relation to the history

of the English provisions; the text of the English

provisions and the collllilon law and the learned judge,

Mr Justice Lockhart has selected, I think,

paragraph 3 of those reasons. Now, Your Honours,

so the reasoning is, you could get some problems

about the assiduous infringer.	Then he goes to
what Lord Diplock said of the English provisions	"subordinate11 "dominant" clause and then he picks
up a passage in page 751 and then he says:

Whilst the syntax of section 28 leaves

much to be desired -

Now what we would say about that Your Honour,

with respect, is that it does not leave anything

to be desired, unless you want to read it in a

way different from its natural language. Indeed,

if His Honour says "syntax", the syntax of the

provision is quite clear. He says:

I cannot discern any valid reason why the

legislature would have intended to achieve

any difference in substance between

section 28 of the Act and section 114 of

the 1905 Act or section 11 of the UNITED

KINGDOM ACT of 1938. It appears to me that

the draftsman of section 28 was conscious of
the syntactical problems associated with
section 114 and section 11 and sought to
render the new section more easily intelligible

and of simpler grallllilar and syntax, but did

not intend to achieve a different result by

the use of the disjunctive form.

Hence, notwithstanding its literally

disjunctive form, I reject the view that

section 28 must be construed in the disjunctive -

So His Honour then is saying, 'I am going to depart
from the language of the provision".	So:

(Continued on p_age 31)

CIT59/l/CM	30	SIR M. BYERS, QC 2/5/90
Dairy(2)

I reject the view that section 28

must be construed in the disjunctive so

that the words "the use of which would be

likely to deceive ..... " are no longer

governed by the words "which would otherwise

be not entitled to protection in a court
of justice".

So what he has done then is attached paragraph (a) to paragraph (d) and then he goes on:

The use of the word "otherwise" in

s 28(d) appears to me to be otiose

unless it refers back to the preceding

pars (a), (b) and (c). In my view, the

syntactic function of that word requires

that par (d) be taken to involve such

reference back, which in consequence will

limit the circumstances in which the factors

specified in pars (a), (b) and (c) will

disentitle a trade mark to protection.

BRENNAN J: Sir Maurice, I think I must be missing something.

The way in which I understood Lord Diplock to be

construing the English Act and the way in which one
might, apart from what Mr Justice Lockhart said,
construe the Australian Act, and the way in which

I understand you to be contending for, is to

describe non-entitlement to the protection

in a court of justice to be the genus and the

particular instances to be species of that genus.

Now, is that right or wrong?

(Continued on page 32)

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Dairy(2)

BRENNAN J:  Wrong?

SIR MAURICE:  Yes. Does Your Honour asks me why?

BRENNAN J:  Yes.

SIR MAURICE: It is wrong because the language says if there

is something which is confusing or if there is

something which is contrary to law - this is

section 28 - or something which is scandalous.

BRENNAN J:  Yes.

SIR MAURICE: And then it says:

Or which would otherwise be not entitled

to protection in a court of justice.

It, no doubt, assumes that equity would not protect scandalous matter but really the word "otherwise", if you read it according to what it says, is saying

"for any reason would be such that a court of equity

would not protect it other than the above".

BRENNAN J:	But why are you concerned with that if it is sufficient that a court would not give protection
to that which is likely to deceive or cause confusion?
SIR MAURICE:	Well, in this case, that was the finding of the

trial judge but the finding of the trial judge was

overturned because it was said there had to be some

blameworthy conduct.

BRENNAN J: Well, that is not a problem. It was a matter

of construction.	I understood you to be saying
that once you have got deception or	causing
of confusion

SIR MAURICE:	Yes.
BRENNAN J: Well, reading what Lord Diplock said, I do not

understand him to be saying anything different in

the passage which was cited.

SIR MAURICE:  No, he is not saying anything different but he

is saying it in a different context, is what I am

saying, Your Honour.

BRENNAN J:  ·Be it so. I am just wondering why

we are worried about the context if -

SIR MAURICE:  I am not worried about the context; I say it

does not matter. It is just a simple case but,

Your Honour, I have a task of putting submissions

to Your Honour about whether Mr Justice Lockhart

is right, a task I take seriously.

ClT60/l/SH	32	SIR M. BYERS, QC	2/5/90
Dairy(2)

Now, it may be that I have said sufficient either for Your Honours to agree or disagree, in which

event I do not want to, as it were, proceed

indefinitely but, Your Honour, that is what I am

at so that Your Honours will know what I am at;

that is what I am seeking to do and what I am

seeking to do is, therefore, to say that the

conclusion that was arrived at in RIV-OLAND is

wrong; that you do not read in blameworthy conduct

so that you have a deceptive mark; it remains on the

register so that the register is a chapter of deception

unless you can show that a particular person has been

guilty of some blameworthy conduct.	You do not find
that in section 28 but - - -

• • DEANE J: Sir Maurice, you have lost me a little bit earlier

and that is I do not quite follow why it is you say

that a mark which was properly registered can be

expunged if it subsequently becomes li\ely to

deceive or cause confusion. I know you referred

to section 22 but I do not quite see why it is that

22(1)(b) says that a mark which was rightly registered

is wrongly on the register simply because it has

subsequently become liable or likely to deceive or

cause confusion.

SIR MAURICE:	Well, we submit, Your Honour, that is because the words "wrongly remains" on the register.
DEANE J:	But that answers the question in favour of yourself.
I mean, the question is - - -
SIR MAURICE:	I hope so, Your Honour.

DEANE J: - - - if a mark was properly registered, is it

wrongly on the register if, because of what somebody

else subsequently does, it is likely to deceive or cause confusion? One can see with (b) and (c), if

you answer those, at the subsequent time it was

wrongly registered and I was noticing in the BERLEI

case it was common ground that if it was likely to

confuse at the subsequent time, it was wrongly

registered because it would have been likely to

confuse at the earlier time but I have not seen

anything that fills the gap that I currently have.

(Continued on page 34)

ClT60/2/SH	33	SIR M. BYERS, QC	2/5/90
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SIR MAURICE:  Your Honour, we submit the BERLEI case shows

or establishes that where a mark, rightly registered,

becomes by reason of subsequent events wrongly

registered, so as - where it becomes confusing

by reference to what other people do, then

section 28 applies and because it then - - -

DEANE J: · It has got to be section 22 applies.

SIR MAURICE: Section 22 applies, 28 then says it is

confusing and one can then remove it from the

register.

DEANE J: That I do not see, unless section 60and61

are r~ad as providing grounds for removal, as

distinct · from a barrier against removal.

SIR MAURICE:  That is what we submit is what happened in

BERLE!. What happened in the BERLE! case is that

the mark on the register was expunged under

section 28(a).

DEANE J: If you look at the Chief Justice's

judgment in BtRLEI at page 354, he says:

it is said that the mark ought not to

have been registered -

The present Chief Justice, at page 361, makes it

clear that it was conceded that if likely confusion

had been reached at the subsequent stage it existed

at the time of registration which makes one wonder

whether - - -

SIR MAURICE:  Your Honour, at 360:

Bys 22(1)(b) the Court is empowered

to order rectification of the register by

expunging an entry "wrongly made in or

remaining in" the register. An entry is

"wrongly made" in the register if at the time

of its registration it "would be likely to

deceive or cause confusion" within the meaning
of s 28(a) for the prohibition contained in

that section clearly applies to the original

registration of a trade mark. Whether the

prohibition also relates to the continuance

of a trade mark which offends against the

section has been a matter of some debate;

it is a question closely connected with the

interpretation to be given to s 61(1) which

creates a conclusive presumption of validity
of "the original registration" of a trade

mark registered in Pt A after the expiration

of seven years from the date of the original

registration unless one -

C 1 T6 l /1 /ND	34	SIR M. BYERS, QC 2/5/90
Dairy(2)

or more -

of the circumstances ..... is shown to

exist .....

Despite earlier authority to the contrary,

it may now be accepted that a trade mark

"offends against" s 11 ..... (the counterpart

of ours 28) within the meaning of s 13 .....

(the counterpart of ours 61) if it would

be likely to deceive or cause confusion at

the date when application is made to rectify

the register.

And then His Honour refers to what Lord Diplock

said and what he also said in the House of Lords.

DEANE J:  Yes, I see, that does support what you say. I

must confess I have trouble in giving that effect

to the statutory provision.

McHUGH J: Sir Maurice, would you just explain this to me:

how is it that when you have marks registered under

section 34 they do not attract the operation of

28 after registration?

(Continued on page 36)

ClT61/2/ND	35	SIR M. BYERS, QC 2/5/90
Dairy(2)

SIR MAURICE:  We would say, Your Honour, that section 34 is

a specific enactment.

McHUGH J: It deals with registering.

SIR MAURICE:  Yes, it gives a discretion to register. It gives

no right - discretion to register in exceptional

circumstances and so the statute has made specific

provision and it, as it were, fleshes that out,

if Your Honour will pardon that expression, by

section 58(3).

McHUGH J:	What -is 34 as to be read as an exception of 28, is it?
SIR MAURICE:	Yes.
McHUGH J:	Both at the registration stage and continuous?

SIR MAURICE:  Yes. Then you have section 58(3) which I think

I referred to. Your Honour sees that 58(3) says:

Where 2 or more persons are proprietors of

registered trade marks which are substantially

identical or deceptively similar, whether for

the same goods or services or other goods or
services, rights of exclusive use of either of

those trade marks are not -

I will leave out the words of exception -

..... acquired by any 1 of those persons as against

any other of those persons by registration of the

trade marks but each of those persons has

otherwise the same rights as against other persons.

TOOHEY J: I appreciate that refers to your rights. It does not

seem to me to throw much light on 28. Section 58(3)

is only there, is it not Sir Maurice, to take a~ay

a possible defence that might be available to a third

party?

SIR MAURICE: Perhaps to make sense of 34, otherwise, Your Honour,

it is true you could impose conditions under

section 34 and you would say you cannot use it in

such and such an area, or you can only use it in

relation to ordinary flour and not self-raising flour,

whatever the condition may be. So that you get a right

to approach the registrar where there is honest

concurrent user - which is not the case here - or

whether there are other exceptional circumstances.

Now, what we are saying, with respect, Your Honour,

that section 34 is a special statutory provision

dealing with honest concurrent user and, no doubt,

other special circumstances. But that does not \vri te

section 28(a) out of the Act. Section 28(a) remains

in the Act but section 34 is a special provision dealing_

with special circumstances. And it may be, I would

C1T62/l/LW	36	SIR M. BYERS, QC	2/5/90
Dairy(2)

perhaps suggest with deference to Mr Justice Toohey,

that perhaps 58(3) is a means of accommodating the

rights of holders of deceptive marks registered

under section 34, in any event, because section 34 is

to make them subject to such conditions or

limitations as the registrar imposes. At any rate,

Your Honour, that, in our respectful submission, is

what section 58(3) does. In any event, each of those
provisions are special statutory provisions dealing
with deceptive marks and they do not cut down, in

our respectful submission, section 28(a). In other words, you cannot use section 34 to say, "Oh, look,

true it is that section 28(a) says that you are

not to register or leave on the register a mark which

it would be likely to deceive or confuse confusion", but

that is old hat. You have section 34 and you have

section 82, so you just leave the marks on the register.

You have got to find in a case of subsequent events

some wrongful dealing, some blameworthy Act, by the

subsequent expunger, the person seeking to expunge

and cause the confusion.

(Continued on page 38)

ClT62/2/LW	37	SIR M. BYERS, QC	2/5/90
Dairy(2)

GAUDRON J: Sir Maurice, what I do not follow, accepting all

that you have said, is that why it is not your

mark that is expunged?

SIR MAURICE: Well, because the other mark was not used,

Your Honour.

GAUDRON J: But what in the Act decides which is the one that

is deceptive or likely to cause confusion. You
are in a situation where both are registered,
giving rights; if one is confusing with the other

the other must be equally confusing with the

first. Who says which one goes?

SIR MAURICE:  Well, if Your Honour were to ask me1 Your Honour knows what answer I would give.

GAUDRON J: But what in the Act says which one goes?

SIR MAURICE: Well, we say section 28, Your Honour.

GAUDRON J:	Says which one goes?
SIR MAURICE:	Says which one goes, namely it is the mark - I beg Your Honour's pardon.

GAUDRON J: What part of section?

SIR MAURICE: Section 28(a) and 28(d). The learned trial judge

said, ·I will expunge the mark because , he said,

the mark -that was the MOO mark, that was the first
mark that was registered.- was not used between

1966 and 1974 and therefore any rights that you got

either at common law or under the Act go. Then he

said, the MOOVE mark was used from 1976 and was

distinctive of the present appellant's flavoured

milk.. Then he said the assignee of the MOO mark,

acquired it and started to use it in relation to flavoured milk, it not having heretofore been so

used and he said that was an Act which caused

"confusion or deception" because people could confuse
the mark.	He said, if you add all those together

you have confusion; you have a lack of distinctiveness,

in the sense that the MOO mark had ceased because of

this long interregnum between 1974 and 1987 or 1988 to be

used in relation to any goods at all so it had ceased

to be distinctive and therefore was, in a sense,

liable to be expunged for non-use and was only saved

because of some advertising progression. And he

said you had confusion because of the use of it in

relation to flavoured milk and he said, therefore in

all of those circumstances a court of justice would not

extend its protection to the MOO mark.

C1T63/l/JL	38	SIR M. BYERS, QC	2/5/90
Dairy(2)

GAUDRON J:  I understand all that but I do not see how it

comes from section 28.

SIR MAURICE: Well we say it comes from section 28 because -

first of all we say the trial judge was right to

say that paragraph (d) applied because the person

who was causing the trouble, the person who was

causing the confusion, is the owner of the MOO mark,

not us.

DAWSON J: Rather	: the mark which was causing the confusion - - -
SIR MAURICE:	The mark, the mark, yes.
DAWSON J:	The use of which was causing - - -

SIR MAURICE:  The use, that is right, yes,Your Honour. It is

the use of the mark in relation to flavoured milk

that was causing confusion.

GAUDRON J: With your products?

SIR MAURICE:  No.

GAUDRON J: But equally the use of MOOVE, if it was legitimate

to use MOO for flavoured milk the use of MOOVE must

have caused confusion with the MOO product?

SIR MAURICE:  Well, it did. Once they started to apply it to

flavoured milk it did. But that is only one of the

factors.	It had never been used in relation to
flavoured milk before;	it had been used in relation

to cream, I think,Your Honour, until 1974 and they

started to use it in relation to flavoured milk only -

they started to use it in relation to cheese and which

there was no dissent from the owner of the MOOVE mark.

(Continued on page 40)

ClT63/2/JL	39	SIR M. BYERS, QC	2/5/90
Dairy(2)

SIR MAURICE (continuing):  Then, they started to use it

in relation to flavoured milk in which there was

dissent from the owner of the MOO mark because

now the use of the MOO mark on flavoured milk

caused confusion and if you added together,

confusion, lack of distinctiveness because it was

not distinctive of anyone's goods; it was not

distinctive of the MOO owner, if you will pardon

me putting it that way. It was not distinctive of

his goods; it had ceased to be distinctive of his

goods and that was a factor tending towards

confusion because lack of distinctiveness and

deception run into one another. Then, he said,

you have actual confusion and people would be

confused or, at least, they would raise doubt as to

whether or not they came from the same source.

That is the reasoning, Your Honour, and we say,
with great respect we submit, Your Honours, that that

reasoning is right.

The only way the reasoning was upset was by

the Full Court applying its decision in RIV-OLAND

and saying, "Well you needed some blameworthy act

on the part of the owner of the MOO mark" and they

said, "Oh well, there's none here".

McHUGH J: 

That still does not overcome the language of

section 28, does it? Even on adopting the trial
judge's reasoning, your mark is still a mark:

the use of which would be likely to deceive

or cause confusion.

SIR MAURICE:  Your Honour, so what, are we to say that,

because, so what, MOO? I mean, you cannot say,

"Well, let confusion reign". That is not what the
Act is about and it cannot be right to say,

although the Full Court really said it, "Oh well, you can't take off confusion" because every other

confusioner could complain. That cannot

possibly be right because it is a question between

the public and the owner. It is not the question

of competition between owners. That is what

section 28 is about.

In other words, Your Honour, it is a provision

designed to protect the public and this Court has

said so and the House of Lords has said so, so it

cannot be an answer, with great respect, to say, "Oh

well, the other people would complain". Of course,

they would complain but, you know, that is

unfortunate.

DAWSON J:  But, I can understand in this particular case, you say, "Well, it was the other mark because it hadn't been used in a long time, the use of which

ClT64/l/JH	40	SIR M. BYERS, QC 2/5/90
Dairy(2)

caused confusion", but what if you had concurrent

use of two marks from the beginning?	How would you
choose between them?

SIR MAURICE:  Well, that is a difficult question, Your Honour.

We would say, if there were no priority of

registration or no factor which would enable ( 1 ):

to come within paragraph (d) to prefer (1) within paragraph (d), for example, lack of

distinctiveness or something of that sort, or delay,

then none the less, the choice had to be made,

we would submit, Your Honour.

Your Honour, if I am still on my feet

tomorrow, could I perhaps think about it and give

any further answer to that question.

GAUDRON J:  When you are thinking about that, why is not

registration of two similar names without honest

concurrent use other special circumstance which would

attract the same consequence as comes from

"concurrent user"?

SIR MAURICE:  Your Honour, what has a presence in the Act

of section 28(a), I suppose, is really what I keep

on coming back to and it is liable or susceptible

of application at all stages during the life of a mark on the register. Section 34 is a particular

case which the statute deals with in a particular way.

Your Honour, I do not want to go - let me phrase

it differently. When the M)OVE mark was applied to

flavoured milk, which was in 1978, nothing was

being done in relation to flavoured milk or otherwise

by Moove, nothing.

(Continued on page 42)

ClT64/2/JH	41	SIR M. BYERS, QC 2/5/90
Dairy(2)

SIR MAURICE (continuing): Then Moo mark, as the learned

trial judge held, became distinctive of the goods

of the appellant. MOOVE, I beg your pardon. MoOVE

became distinctive of the goods of the appellant.

MooVE ha~;:Aever been distinctive-at the time of

the application -of:.the·. flavoured milk of the

assignee of the Moo mark or,indeed, anyone else,

and so you had one mark that was distinctive. You

had the delay in which nothing was done and so the

mark ceased to be distinctive and you had these

other findings which are referred to in our

written argument. Your Honour, that may not

be intellectually satisfying to Your Honour but, with

respect, we submit it is a resolution, a logical

sort of resolution of the case. The alternative is

to leave both marks on the register.

TOOHEY J: Just in that regard, Sir Maurice, if the registrar

exercises his power under section 34, does the
section contemplate the possibility of a challenge
to that action of the r.egistrar? There are some
sections in which an appeal appears to lie to the

Federal Court and some decisions of the registrar

in which an application to the Administrative

Appeals Tribunals is provided for. t cannot

innnediately see any way in which the decision of

the registrar under section 34 is open to challenge.

SIR MAURICE: Well, you could, I suppose, Your Honour, under

section 22, on one view, because you could say, "Let

us expunge this mark on the ground that it is

confusing. I can go to section 22(l)(b) and

say it is registered. Now, true it is that no

right of appeal from the r.egistrar and it may be

that you would not read -and I think there was

some suggestion in a judgment of Sir Samual Griffith,

that he would hesitate, he said, to read in relation

to the very early legislation, 34 subject to the

equivalent of section 28 but,we submit, Your Honour,

that the purpose of section 34 is to allow, under

the conditions it states, for there to be a

restricted and limited use of conflicting marks and

the object of the limitation is to prevent confusion.

Now, I have not answered Your Honour Mr Justice Dawson,but
I would hope to do so, if Your Honour pleases. Now,

Your Honours, I do not want to go on reading - I think

that I have read all that I would wish to read,

Your Honour, from RIV-OLAND. The judgment of

Mr Justice Lockhart continues, but really it goes

to things like section 34 and so on and on this

aspect, and then he goes to section 82 and he
finishes at page 600, but what he says there does

no more than say, "Oh well, there is section 34 in the Act and there is section 82 in the Act". That

really, in our respectful submission, tells you nothing.

CIT65/l/CM	42	SIR M. BYERS, QC 2/5/90
Dairy(2)

It is true that they are there but,we submit,

Your Honour, that the provision about what is to

stay on the register, apart from special circumstances,

is contained in section 28. Now I do not think there

is anything that I would wish to say further about

RIV-OLAND. We submit it is wrong and we submit that

the trial judge wasright and we submit that

Mr Justice Northrop was right and we submit that

the Court of Appeal of New Zealand is right. The

decision is PIONEER HI-BRED CORN CO V HY-LINE

CHICKS PTY LIMITED,(1978) 2 NZLR 50. We have

photocopies here if Your Honours would wish them.

MASON CJ: Yes, thank you.

SIR MAURICE:  Th~ j~dgment of Mr Justice Cooke is reported

at (1975)2 NZLR 422, but I will go to the Court

of Appeal.

(Continued on page 44)

CIT65/2/CM	43	SIR M. BYERS, QC 2/5/90
Dairy(2)

SIR MAURICE (continuing):  We will hand to Your Honours'

associate the decision at first instance. It

does not really deal with this problem; it just

assumes that what we are submitting to Your Honours

is correct. But, at page 52 of the Court of Appeal,

at about line 31, the President, Mr Justice Richmond,

sets out section 16:

"It shall not be lawful to register as a

trade mark or part of a trade mark any

scandalous matter or any matter the use
of which would be likely to deceive or
cause confusion or would be contrary to
law or morality or would otherwise be

disentitled to protection in a Court of

• justice."

So that is very similar to our prov1s1on.	In fact,
in meaning it is the same.

At this point it is convenient to note

thats 16 is worded in a different way from

its statutory predecessors, the last of which

was s 13 of the PATENTS, DESIGNS, AND TRADE-

MARKS AMENDMENT ACT 1939. That section, in

common withs 11 of the United Kingdom Act of

1938, prohibited registration of any matter

the use of which would "by reason of its being

likely to deceive or cause confusion or

otherwise, be disentitled to protection in a

Court of justice". The effect of that

particular form of language was discussed by

their Lordships in BALI TRADE MARK ..... and

GE TRADE MARK ..... It is however clear that in

1953 the legislature in New Zealand deliberately

departed from the previous wording as found in

s 13 of the 1939 Amendment Act. The result

is that in this country the words "the use of

which would be likely to deceive or cause

confusion" are no longer governed by the

words "would ... otherwise, be disentitled	to protection in a Court of justice".	They
should accordingly be given effect in

acco~dance with their ordinary and natural

meaning.

At page 72, about line 26 - this is

Mr Justice Richardson - His Honour sets out their

provision and the earlier provision and he goes on:

So there were obvious similarities with

s 11 of the English Act and its predecessors.

But, when the TRADE MARKS ACT 1953 was

enacted, the scheme of s 13 of the 1939 Amendment

Act was abandoned for what is nows 16.	In
my view each "or" ins 16 must be read
disjunctively and, having regard to the

ClT66/l/SH	44	SIR M. BYERS, QC	2/5/90
Dairy(2)

deliberate statutory change made in 1953,

there is no justification for concluding that

the likelihood to deceive or confuse is in

some way modified by the final phrase of s 16.

It is the awareness or cognizance of those

who are potential buyers in, or otherwise
associated with the relevant New Zealand

market that is material. If there is a

likelihood that they will be deceived or

confused as to the origin of goods covered

by the applicant's mark, it matters not how

they gained the knowledge that gives rise

to that deception or confusion.

Now, Your Honours, the result is that you have

Mr Justice Cooke, in fact, and the Court of Appeal

construing the New Zealand provision consonantly

with the submission we would urge before

Your Honours.

(Continued on page 46)

ClT66/2/SH	45	SIR M. BYERS, QC	2/5/90
Dairy (2)

BRENNAN J: Sir Maurice, I take it that you regard the

exercise as one of statutory interpretation alone

and not one where the interpretation of the statute

or its application is governed by the pre-1875

law which was examined by Lord Diplock in the case

to which you have referred?

SIR MAURICE: Yes, we say that, Your Honour. It is difficult

to imagine if one reads His Lordship's judgment
that the Act in 1955, made for this country, has

its meaning determined by the history of the United

Kingdom legislation, going back - I think
His Lordship said - to about 1830 or the common law, because what one is concerned about is the

trade mark, not the rights at common law. For

example, so I make myself clear, the use of t~e

trade mark is no doubt used in relation to gc js

but, of course, you can get deception otherwi,e

than by means of actions which would be equivalent
to passing off, as Mr Gummow pointed out, and,

indeed, as this Court pointed out in the TOOWOOMBA

case, 91 CLR - and I will give Your Honours the

reference in a moment.

So that what one is doing here is to construe

the statute which gives to the registered proprietor
of the mark not property but an absence of the

need to prove title because his registration is

always subject to challenge under section 61, by

an offence against any provision of the Act, including

section 28, and by loss of distinctiveness.

So, therefore, when one is to construe

section 28 one should, in our respectful submission,

bear in mind that it is that right - that statutory

right - that one is construing and not notions

deriving from the equitable doctrine of clean hJnds

which influenced His Lordship because he goes wJy

back to the common law position and reads that

language into section 11 of the English Act as

Your Honour will remember.

We respectfully submit that that is not an

approach apt for this country; that first of all

you have a new Act. There is no suggestion anywhere

in the Act that the Act takes its form because
of or due to English legislation and, therefore,

one would construe it as legislation adapted to

the needs of this country, and without regard

to the legislative history that His Lordship discusses

in the GE case and, particularly, Your Honours,

when one bears in mind that there is a deliberate

departure from the use of the language in the English

Act and in the earlier Act.

I am conscious, of course, of what was said

in the report. What we say here is that

C 1T6 7 /1 /ND	46	SIR M. BYERS, QC 2/5/90
Dairy(2)

Your Honours' task, with great respect, is to

construe the language. And we would remind

Your Honours of the way Your Honours expressed

it in RE BOLTON, EX PARTE BEANE - or at least

Your Honour the Chief Justice, Mr Justice Wilson,

Mr Justice Dawson - 61 ALJR 190, at page 191.

McHUGH J:	I think it is in the CLRs now.
SIR MAURICE:	I was not aware of that, Your Honour.
MASON CJ:	Yes.

SIR MAURICE:  I am sorry for that, Your Honour. The relevant

part - can I get the reference to the Commonwealth

Law Reports and hand it to Your Honours;	I see
Your Honour has it.

McHUGH J:  No, I have only got the ALJR.

(Continued on page 48)

C1T67/2/ND	47	SIR M. BYERS, QC 2/5/90
Dairy(2)

SIR MAURICE:	We will get the reference in the Commonwealth Law Reports and inform Your Honours tomorrow.
But Your Honours see on page 191 in the right hand
colunm, about the middle of the paragraph,
after discussing various provisions of the Act,
Their Honours go on to say:

Furthermore, given that section 19 is

ambiguous, consideration may be given in

ascertaining the meaning of the provision to

the second-reading speech of the Minister when

introducing the Bill for the Act into the

House of Representatives in 1963 ..... section 15AB.

That speech quite unambiguously asserts that

Pt III relates to deserters and absentees whether or not they are from a visiting force. But this of itself, while deserving serious consideration, cannot be determinative; it is

available as an aid to interpretation. The

words of a Minister must not be substituted

for the text of the law. Particularly is this

so when the intention stated by the Minister

but unexpressed in the law is restrictive of

the liberty of the individual.

Admittedly, that factor is not here. However:

It is always possible that through oversight or
inadvertence the clear intention of the

Parliament fails to be translated into the text

of the law. However unfortunate it may be when

that happens, the task of the Court remains clear.

The function of the Court is to give effect

to the will of Parliament as expressed in the

law.

And we say that has always been the case and we say,

or submit, that what we are advancing to Your Honours

is - I will give Your Honours the reference to

91 CLR. Your Honour, I am sorry, but again there is

a failure but I think I can give Your Honours the

two pages where that is said. I am sorry, Your Honour,

I cannot do that; I thought I could.

There are two passages: one in the judgment of

Mr Justice Kitto and one in the judgment of the

Full Court where that is referred to and it is

mentioned by Mr Justice Gummow. Now, Your Honour,

perhaps I could do that at a later time.

Your Honours, might I just say I do not want to

say anything more about RIV-OLAND. I will have to say

something about the judgment of the Full Court in this

matter but might I just say something about the

assiduous infringer, Your Honour, and what I have to say

will be fairly brief. Your Honours, 91 CLR 592, the

ClT68/l/LW	48	SIR M. BYERS, QC	2/5/90
Dairy(2)

passage of Mr Justice Kitto's judgment is at the top of page 595. I do not want to repeat myself but what we say is this: that the person who is on the register really has the right to restrain

an infringer and you cannot use the possibility,

so we would respectfully submit, of an assiduous

infringer, to use Mr Justice Windeyer's phrase

to say that section 24 contemplates a register

full of deceptive marks, and that is the use that
is made of that passage.

Your Honour, that would, I think, bring me to some of the passages which I think I can be fairly

brief with in the Full Court in this case.

(Continued on page 50)

ClT68/2/LW	49	SIR M. BYERS, QC	2/5/90
Dairy(2)

SIR MAURICE (continuing):  Now, Your Honour, as we say in

our written submissions, Their Honours concluded

Their Honours' judgment, at page 198 of the

appeal book, about line 16, they say:

The first of the three factual matters identified by the trial judge as the

basis for his conclusion, that the MOO

mark lacked the necessary

distinctiveness, is not a ground which

prohibits the mark from remaining on the

Register.

Now, Your Honour, of course, that is always subject

to section 61 and, perhaps, section 60:

The second of the factual matters identified

by his Honour was the long period of use

of MOOVE before the cormnencement of the

use of MOO by the appellant. This matter,

in our opinion, goes to non-use of the

mark.	The application to remove the MOO
mark for non-use failed.	On this ground the

MOO mark was not disentitled to protection in a court of justice.

Your Honour, really, that misconceives the point.

The point is, not that the attempt to remove the

MOO mark for non-use failed but that the MOOVE mark

was used and the MOO mark was not. That is the

point and that was the factor that the learned trial

judge picked up in his judgment which is referred

to in our written submissions. What His Honour said -

at page 3 it is set out, Your Honour. It is in the

appeal book, page 109, paragraph 10. He says:

"The mark of the Respondent was one in

respect of which it was not entitled to

relief in equity. This was not because of

any "blameworthy conduct" as understood

when applying the maxim as to clean hands.

Rather there was "otherwise" no

entitlement to such protection, both for

want of the necessary distinctiveness at

5 August -

that is the date of the expungment: application -

1988 and also as a consequence of the lengthy
period of use of "Moove" before the

cormnencement of use of "Moo" by the First

Respondent. Further, the use of the "Moo"

mark in relation to milk was likely to

cause confusion by causing perons in the

sense I have explained, to wonder whether

the "Moo" and "Moove" products might not come

ClT69/l/JH	so	SIR M. BYERS, QC 2/5/90
Dairy(2)

from the same source and to entertain a

reasonable doubt.

Now, that is confusion. That comes, of course,

from Mr Justice Kitto:

In reaching that result one looks, as I

have said, to the use the First

Respondent could properly put "Moo"

within the ambit of its registration, not
merely the existing use of "Moo" in

relation to UHT flavoured milk."

His Honour is saying that there had been_l~ck of

distinctiveness and the fact that the MOOVE mark

had been used for a substantial period of time had

become distinctive of the appellant's goods and the

MOO mark was not used.

Now, it is not to that point to say that the

application to strike out failed. It says nothing
to it. It was not used in relation to commodity.

(Continued on page 52)

ClT69/2/JH	51	SIR M. BYERS, QC 2/5/90
Dairy(2)

SIR MAURICE (continuing):  Then if it is not used the result

is that both ·at common law, we submit, and under the Act, the entitlement is lost because you can strike it out for non-use and between 1974 and 1987,

no use, and the common law, the right to have it

go, and I will give Your Honour a reference to

authority for that in a moment. "Then:The third

matter identified by his Honour was that the MOO

mark in relation to milk. was likely to cause

confusion by causing people to wonder whether the

MOO and MOOVE products might not come from the

same source, and to entertain a reasonable doubt~'

This is at page 199. "This merely restates the fact

that the use of the mark would be likely to deceive

or cause confusion. That fact cannot in itself

be enough to bring about removal because each

accusation against the other with equal force. 11	registered proprietor could make the same
And that totally overlooks the fact that the purpose
of section 28 is the protection of the public and,
Your Honour,that was the decision of this Court,
for example, in the DISNEY case, RADIO CORPORATION
PTY LTD V DISNEY 57 CLR 448, in which
Sir Owen Dixon quotes the passage of Lord Macnaghten
in ENO V DUNN, where His Lordship says that the
question is not between competing proprietors, but
between the public. And that passage Your Honours,
is page 458 to 459 and,Your Honour,there are,
of course, other decisions to this Court where the public interest nature of the provision is adverted to.

Now, Your Honour, I do not want to repeat what

we say, but we say, once it is a public interest

provision then it should be given a generous

construction and I have referred - - -

TOOHEY J: Sir Maurice, when Justice Gumm.ow speaks of the

want of necessary distinctiveness of 5 August 1988,

is he speaking there of non-use or of non-use of

the name MOO in relation to a particular product or - - -

SIR MAURICE:  Total non-use. What happened was, Your Honour -

TOOHEY J: But that is the content of the reference to a

want of necessary distinctiveness.

SIR MAURICE:  What happened, Your Honour, was that no use

was made in relation to any product by the Healthway

products of the mark. So it was not applied to

their trading purposes so there was no reputation

or goodwill in itlt JJSt stopped. a:nd that meant
that it had ceased to be distinctive, because there

was never a business as from that time.

CIT70/l/CM	52	SIR M. BYERS, QC 2/5/90
Dairy(2)

I notice, Your Honour, it is a little after a

quarter past, does Your Honour wish me to continue?

I am quite happy to do so.

MASON CJ: Very well, we might continue for a short time,

Sir Maurice.

SIR MAURICE:  Now, Your Honour, I doubt really, with the

other two points that the judgment referred,to,

with the exception of a point about distinctiveness.

(Continued on page 54)

CIT70/2/CM	53	SIR M. BYERS, QC 2/5/90
Dairy(2)

SIR MAURICE (continuing):  Now, what Their Honours said about

that was that section 61 refers in a separate

subparagraph to loss or want of distinctiveness
and, therefore, Their Honours said that that

according to normal constructions would give rise

to the view that section 28 did not comprise, as

an integer, want of distinctiveness. In other

words, section 61 carved it out and put it into

separate compartments so that you could never

deal with confusion arising from lack of

distinction.

Now, what we say,Your Honour,and we have said

it in our written case, is that as Sir Frank Kitto pointed out, lack of distinctiveness and deception

run into each other. Now, that must mean when one
is considering confusion that lack of distinctiveness

is a factor where you have two competing traders. On no view, in our respectful submission, can you

say that section 6l(l)(c) therefore deprives

section 28 of any application to a set of facts

in which lack of distinctiveness is one, is an

integer. We say this is part of confusion and therefore the court was wrong in separating it out. The consequence of doing that was that

Their Honours just expanded the ambit of the circumstances in which you could have confusing marks on the register because they were saying

not only did you have to have this blameworthy

conduct but you could never have regard to the

fact that there was a want of distinctiveness

which gave rise to confusion because that is

dealt with separately and there was no, as it

were, ground to strike the mark off on the

ground of loss of distinctiveness and, Your Honours,

we submit with respect that that is wrong; that vou

can consider want of distinctiveness leading

into confusion arising from other people using

similar marks in relation to similar goods.

(Continued on page 55)

ClT71/l/SH	54	SIR M. BYERS, QC	2/5/90
Dairy(2)

McHUGH J: Could I ask you something? It almost seems as

though parts of the judgment contradict each

other or had different authors. Am I right in

thinking there is some conflict between what

appears at page 197, line 9, about:

The issue of loss of distinctiveness is

not one that is within the subject

matter dealt with bys. 28 -

on the one hand, and on page 192, where the Court

seems to recognize that:

characteristics of deceptiveness and lack

of distinctiveness may overlap.

SIR MAURICE:  Yes, at page 192 they refer to what

Sir Frank Kitto said:

The characteristics of deceptiveness and

lack of distinctiveness may overlap, or to use the expression of Kitto J. "tend

to run into one another". Where they

do, those provisions of the Act which

deal with distinctiveness -

this is what they are saying -

and those which deal with the likelihood of

deception or confusion both come into play,

but it does not follow that the scope and

meaning of the various sections alter. It

is simply the case that the mark, if it is

to gain (or retain) registration, must

comply with the provisions of the Act on

both topics.

Your Honour, how they can say that and say

additionally that you are dealing with:·_ the

Act decides to deal with it in two separate

compartments, in our respectful submission, is

clearly wrong and I think, perhaps, as

Your Honour Mr Justice McHugh pointed out,

inconsistent with their approach later on.

McHUGH J:	Well, I am not sure they are - - -
MASON CJ:	They are not, are they?
McHUGH J:	.No, I do not think they are.
MASON CJ:	Line 21, or 22.
McHUGH J:	Yes, line 21.

SIR MAURICE: It:

does not regulate the requirement at the
stage of registration, it would be surprising if

it assumes such a function after registration.

ClT72/l/DR	55	SIR M BYERS, QC	2/5/90
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SIR MAURICE (continuing):  One way of looking at section 28

is to say that either section 24 regulates, 24, 26,

and so that if you have a deceptive mark - a

non-distinctive mark - that you are not using a

mark in accordance with the Act, and if it comes to

be the case that it causes confusion, it falls naturally

within paragraph 20, or on one view, you could say

it could fall within paragraph B because the Act says

you must have a distinctive mark - all Part A marks
must be distinctive, and this would be the use of a

mark which was not.

However, I must say, Your Honour, there is no

authority that supports the latter proposition, but

there is nothing in point of reason which would, so

we would submit, deny it.

MASON CJ:  Sir Maurice, 'that may be a convenient time to

adjourn.

SIR MAURICE:	If Your Honour pleases.
MASON CJ:	We will resume at 10 o'clock tomorrow morning.

AT 4.25PM THE MATTER WAS ADJOURNED

UNTIL THURSDAY, 3 MAY 1990

ClT73/l/FK	56	2/5/90
Dairy( 2)