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

[1990] HCATrans 71

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry

Sydney No S33 of 1990

B e t w e e n -

THE NEW SOUTH WALES DAIRY

CORPORATION

Applicant

and

MURRAY GOULBURN CO-OPERATIVE

COMPANY LIMITED

Respondent

Application for special leave
to appeal

MASON CJ DAWSON J

TOOHEY J

Dairy

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA ON FRIDAY, 6 APRIL 1990, AT 2.19 PM

Copyright in the High Court of Australia

C2T46/l/LW 1 6/4/90

SIR MAURICE BYERS, QC:  If the Court pleases, I appear with

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

appellant, the respondent before the Full Federal

Court. (instructed by Clayton Utz)

MR T. SIMOS, QC:  If the Court pleases, I appear with my

learned friend, MR R._ KAY, for the respondent.

(instructed by Swaab & Associates)

MASON CJ: Yes, Sir Maurice?

SIR MAURICE: 

If the Court pleases, this is an application

for special leave from a decision on the Full Court
whereby it set aside an order made by the

learned trial judge Mr Justice Gummow expunging

from the Register of Trademarks the trademark

"Moo".  The applicant - - -

MASON CJ: 

I think we are familiar with the history of it,

we are ... familiar with the issues that arise.

The real question, it seems to me, is whether or not

this point necessarily raises the same point as the question that is to be debated befbre

the court in RiV~OLA..'l\l'D.

SIR MAURICE:  Well we respectfully submit it does, Your Honour.

The question turned upon section 28 of the Act

and Your Honours will remember that what was said

in RIV-OLAND was that despite the apparent

disparate character of the various paragraphs of section 28, it was the authority, mainly of the GENERAL ELECTRIC case, required the Court to read

that by eliding the word "or" and by treating the

various heads as if they were conjoined.

And, Your Honours, the Full Court in the

present case said that for the reason, Your Honour,

that Mr Justice Gummow was able to set aside the

decision in RIV-OLAND by way of distinction and,

therefore, Their Honours were compelled to assert

again the authority of RIV-OLAND. (Continued on page 3)

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Dairy

SIR MAURICE:  They say that, Your Honour, at page 149 of the application book.

MASON CJ: One has the impression that Mr Justice Gummow

did not think very much of G.E. TRADE MARK.

MR MAURICE:  No, Your Honour.

MASON CJ: And that he preferred the New Zealand approach.

Being of that mind, but nonetheles~ as it were,

constrained by what he thought was superior

authority, he evolved this distinction as a means

of escaping from the embrace of G.E. TRADE MARK.

MR MAURICE:  I think that statement of Your Honour says

accurately what His Honour's processes were,

and that involved the Full Court, of course, in

saying two things: that RIV-OLAND was right,

the approach in RIV-OLAND was right, and that

it applied in this case. And that is what it did,

at page 149, where they say:

The majority in RIV-OLAND took the view

that, even though there was a

liklihood of confusion, para (a) of

s 28 did not require that the respondent's

mark be expunged.

So, in other words, they refused to treat it

disparately and Your Honoumwill remember, of

course, that the Court of Appeal in New Zealand

had treated it - the paragraphs disparately - as,

indeed, had Mr Justice Cook at first instance,

without any great discussion of it.

Then, having come to that conclusion, Your Honours,

they thensaid that the RIV-OLAND case was not

distinguishable and they say that in the next

paragraph on page 149; they say:

This factual difference between the

cases does not, in our opinion, provide

a ground for departing from the

construction placed on s.28 by the
majority, a construction which was essential

to their decision.

In other words, Your Honours, they are saying that

you read section 28(a) conjunctively not

disjunctively. Their language in the RIV-OLAND

decision was to say, "Well you take out the

word 'or' and you read the various paragraphs as

at least explanatory of each other and as setting

up one ground for setting aside - for expunging

a trade mark".

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Dairy
MASON CJ:	What you really do	is read, "Not entitled to

protection in a court	of justice", into (a),
at least, even if you	do not - you do not have to
read it into (b).

SIR MAURICE:  Well, you would not think so, although, in

fact, they said that, in RIV-OLAND, Your Honour.

That might have been an oversight but that is

certainly what they said. The RIV-OLAND decision

is reported. if Your Honour pleases,

in 19 FCR, and what they say at - ·

Mr Justice Lockhart, with whose decision

Mr Justice Bowen agreed although with some hesitation, I think - we can hand Your Honours

photocopies, if necessary - he said, in the second

full paragraph on page 598:

Hence, notwithstanding its literally

disjunctive form -

His Honour means, notwithstanding its disjunctive form.

MASON CJ:	Yes.
SIR MAURICE:

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 or cause confusion" are no longer

governed by the words "which would otherwise

be not entitled to protection -

in this court, that is what he is rejecting:

The use of the word "otherwise" in

section 28(d) appears to me to be otiose

unless it refers back to the preceding

paragraphs (a), (b) and (c). In my view,

the syntactic function of that word requires

that paragraph (d) be taken to involve such

reference back, which in consequence will

limit the circumstances in which the factors

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

disentitle a trade mark to protection.

So, that is quite clear what they are saying and, of

course, Your Honour, it is,with due and great respect

to the.learned judges, very difficult to imagine

how you could read paragraph (d) conjunctively with

paragraph (b) which says:

the use of which would be contrary to law -

or, indeed, with paragraph (c). At any rate, that was

the view that Their Honours adopted in RIV-OLAND.

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MASON CJ:	Was it Lord Diplock's view that you read it with
(b) and (c), as well as (a)?
SIR MAURICE:	~o? because of the difference of the

prov1s1on -

MASON CJ:  It was not necessary t9 confront that question.

SIR MAURICE:  No, Your Honour. In the English provision,

which I can take Your Honours to in a moment - my

learned friend says it is set out at page 146 of the application book, section 11. I am indebted

to my learned friend. Your Honour will see:

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.~· .. or would

be contrary to law or morality, or any

scandalous design.

So it is quite clear that in the English provision

a distinction or disjunction is drawn so that the

words "by reason of its being likely to deceive or

cause confusion" must be attached to the words

"be disentitled to protection in a court of justice".

No doubt there are other reasons, but that is

clearly what they say.

So the question in the English decision really

would not arise on the text of section 28 which is

totally different from that. Of course, section 114

of the 1905 Act did resemble the English decision,

but then there was the departure in 1955 to its

present form.

(Continued on page 6)

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SIR MAURICE:  So, what they have done - what the Full Court

has done, Your Honour - has been to apply the

reasoning that commended itself to Their Honours in
the RIV-OLAND case to the present. Then, Your Honours,

they took a further step and they said, ''In

addition, if one goes to section 61 (1)" - that is

the section giving you title or sending up a valid

title, Your Honour, unchallengeable title - it

says:

In legal proceedings relating to a trade mark

registered in Part A of the Register (including

applications under section 22), the original

registration of the trade mark under this Act -

now, that .is all that it applies to, "the original

• • registration of the trade mark under this Act" -

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 ..... fraud -

then -

(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.

And then they said, "Oh well, the fact that (c) refers to lack of distinctiveness means that lack of distinctiveness can never be an integer

in confusion, in other words that it is dealt
with solely in paragraph (c) and, therefore, is

not part of section 28 at all". So, therefore,

where·you have lack of distinctivenessrunning into

confusion, as happens with a majority of cases,

Their Honours say, "That is not confusion for
the purposes of section 28".	Now, that means

Their Honours take away from section 28 and confusion which is, after all -section 28 is a

provision for the public interest, not for the

interest between the competing registered proprietors,

but for the public interest.

(Continued on page 7)

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Dairy

SIR MAURICE (continuing) :  They say, "Well, you delete

distinctiveness as an integer", that can never

be an integer in confusion; you do not have

confusion per se; you must have confusion of

a type to which paragraph (d) replies, and when

one says, "Wall what have you got for confusion?",

which is, after all, the cardinal provision,

one is left without any answer, in our respectful

submission, in this decision. And if I can just

remind Your Honours of the way they concluded

their judgment. It is at page 160, about line 16.

This is where, as it were, they sum up, having

already explained their views on lack of

distinctiveness and concluding that, which I

have endeavoured to summarize, about line 15,

they go on:

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.

What they are saying is, that if you register a mark which is inherently incapable of adaptation,

that that is not prohibited by section 28, which

says you cannot register a mark, the use of which

would be contrary to law. Yet clearly

sections 24 and 26 and so on would prohibit the

use of such a mark. Then they go on:

by His Honour was the long period of use of MOOVE before the connnencement of the use of	The second of the factual matters identified 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.

Then they go on: 

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.

Confusion.

This merely restates the fact that the use

of the mark would be likely to deceive or

cause confusion.

C2T51/l/CM	7	SIR M BYERS, QC	6/4/90
Dairy

Which is what section 28(a) says.	Then they
go on:

That fact cannot in itself be enough to bring about removal because each registered

proprietor could make the same accusation

against the other with equal force.

MASON CJ: Well I do not follow that. What is meant by that?

SIR MAURICE: Well I am not quite sure Your Honour, but I

imagine Their Honours are saying, well, the fact

that you have deception when you have registered

marks means that each person is in the same

position. Each deceiver - - -

MASON CJ:  But are we not concerned with the public interest, iust

not the interests of the registered proprietor?

SIR MAURICE:  Of course we are, Your Honour. That is so,

Your Honour and Your Honours, clearly Their Honours,

with great respect, have lost sight of that

altogether. Then they go on and they say that:

The TRADE MARKS ACT recognises that two or more registered trade marks the use of which

would be likely to deceive or cause confusion

may lawfully remain on the Register.

And they talk about honest concurrent use, not

this case. Then they say:

In the AUSTRALIAN BERLEI case, the two marks -

well, of course, then they go to the AUSTRALIAN

BERLEI case in which the deceiving	mark was
removed from the register.	Now, Your Honours, we

would submit, with respect, that that highlights

the difficulties that Their Honours - I was going

to say, got themselves into, but - created, by
treating section 28 as if it set out one rul~	one
ground of removal,	then by removing from section 28

lack of distinctiveness, as an integer in confusion,

and so by leaving the word "confusion", denuded of

what might think would be art ordinary normal

application for it, where one mark ceases to be

distinctive.

(Continued on page 9)

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SIR MAURICE (continuing):  We would submit, Your Honour, that

first of all Their Honours have clearly applied

the RIV-OLAND decision and we would submit, with

great respect,that is wrong and it is one in

respect the Court has granted special leave and this

would raise the same point and additionally it

would raise the point about section 28, namely,
this distinctiveness point about section 6l(l)(c),

whether section 61(l)(c) operates to denude section 28

of confusion caused by lack of distinctiveness.

And we submit, they are cardinal errors of principle.

MASON CJ:	How strong is this distinction argument of yours,
the one adopted by Mr Justice Gummow?

SIR MAURICE: Well, it is quite strong, Your Honour. What

happened was that the MOO mark,Your Honou~ was

used up to 1974 by Healthway, I think it was,

and in relation to milk,was it? I am sorry, I

am not quite sure that I fully understand my

learned - - -

MASON CJ: The point I am raising is how strong is the

argument adopted by Mr Justice Gummow_ that

this case can be distinguished from RIV-OLAND,

because this is an application for removal at

a subsequent date.

SIR MAURICE:  I -would prefer to say that RIV-OLAND was wrong.

In other words, I think the - - -

MASON CJ: The distinction does not leap to my mind as a

particularly persuasive one.

SIR MAURICE:  No, well, Your Honour, it did not leap admittedly to

my mind, although Mr Ireland is rather fond of it

but, Your Honour, that nay be because of his

associaton with the case.

MASON CJ: And his powers of advocacy which apparently

may be - - -

SIR MAURICE: And his powers of advocacy as Your Honour says,

but the real point, Your Honours, both in the argument
below and certainly, we would submit, if Your Honours

were minded to grant special leave is that section 28

must be read as the Court of Appeal in New Zealand read

it not - - -

MASON CJ: mi.ch is the RIV-OLAND point.

SIR MAURICE:  This is the RIV-OLAND point, and once you do that

you cannot take distinctiveness out of it. And so

these two points here that they separate out are

really one and,we submit, that is a matter of general

public importance, Your Honour. That is all we would

wish to say.

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Dairy
MASON CJ: Yes, Mr Simes.

MR SIMOS: If Your Honours please. Your Honour, in our

submission, although the judgment deals with

the matter in the context of 28(d), at the
end of the day the ratio of the decision is that
all matters relating to non-use and expungement
for non-use, including non-use resulting in
lack of distinctiveness, have to be dealt with
according to specific provisions in the Act which
deal with the subject of non-use.

Now, Your Honour, although that ratio arose out of a consideration of 28(d) if the principle

is correct it means the whole of 28, including
28(d), can be put to one side because section 28

is not a section specifically dealing with non-use

and, Your Honours, if that principle is correct
and, we submit it is plainly correct, then

Your Honours would not grant special leave because the decision is not attended with sufficient doubt,

and in support of our submission that that approach

is not attended with sufficient doubt, may I hand,

Your Honours, just a very short submission relating

to this matter and then, if I may, I will take

Your Honours very briefly to the judgment where

Their Honours deal with it.

(Continued on page 11)

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MR SIMOS (continuing): Paragraph 2 is what I have

attempted just to say to Your Honours and then,
in paragraph 3, I have attempted to set out what

the authority is in support of that proposition

and if I may take Your Honours, when Your Honours

have finished reading that, to page 156 of the

appeal book where the first of those statements

appear, namely the statement by Mr Justice Taylor,

Your Honours see:

Taylor J considered the case law which preceded

s 15, and said:

"It was in this somewhat unsatisfactory

state of the law thats 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."

Taylor J then discussed certain provisions

of s 56 and concluded:

"This is the only kind of use after registration

which is to operate to invalidate the mark

on the ground of loss of distinctiveness. If I could just pause there, Your Honours, it

may be that loss of distinctiveness can occur

for reasons other than non-use although it is

a little difficult to see how that could be so

but whether that be right or not in this particular

case, the loss of distinctiveness which was found

in respect of my client's mark was as a result

of non-use. So, for all practical purposes,

in this case, lack of distinctiveness equals

non-use.

Accordingly, I am of the opinion that it

was not open to the respondent to establish

independently of s 56 that, merely because

the mark had lost its distinctiveness, it

wrongly remained on the Register."

Section 56, Your Honours, is the section which

deals with non-use, specifically, and perhaps

I could invite Your Honours' attention to that

at the moment, and 23. Your Honours, it is rather

too long to read to Your Honours but it does

relate to non-use. Section 23 relates to non-use

and 61 indicates that because of the separateness

of section 68(1)(b) and (c) that section 28 is

intended to do different work from the work that

is done by sections dealing with loss of

distinctiveness or lack of distinctiveness.

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If I could just go back, Your Honours, then

to page 156, just after Mr Justice Taylor, dropping down to the bottom of the page, Mr Justice Windeyer in KIMBERLY-CLARK:

"As to this, 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 or capacity

to distinguish and to some characteristic

other than a direct reference to the character

or quality of the goods. A mark which 'would

otherwise be not entitled to protection

in a court of justice' refers, I think,

to something intrinsically objectionable

which disqualifies a mark otherwise registerable -

not being something arising through non-use such

as lack of distinctiveness and His Honour, as

Their Honours in the Full Cour~ said the same

thing again in the AUSTRALIAN BERLEI case. Then

Their Honours point out that Mr Justice Fox in

HTX INTERNATIONAL also took the same view:

in the course of discussing the construction

of s 28, and in particular para (d), referred

to the observations of Windeyer J just cited.

Fox J concluded that loss of distinctiveness

is not a matter which would support a finding
adverse to a registered proprietor under

para 28(d) and was not therefore a ground

for an application under s 22. This view

would appear to accord with contemporary

thinking in England .....

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

And then, over the page:  (Continued on page 13)

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MR SIMOS (continuing):  And then, over the page:

" ... 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 or capable

of distinguishing."

Your Honour, that may be or may not be the

consequence in any particular case but the point we

make is, that if it is to be removed after initial

valid registration for lack of distinctiveness

arising from non-use, then one has to do it by

reference only to the provisions of the Act which

deal with non-use. And then, Their Honours, on

-page 158 deal-with why Mr Justice Gummow

declined to follow Mr Justice Fox in HTX INTERNATIONAL

and I will not read that to Your Honours but we

submit that those reasons are good.

And then, Your Honours, in relation to

paragraph 4 of that note of submissions I have

handed up, if I could take Your Honours briefly to the

questions of statutory construction independently of

authority, as it were - they start at page 152, line 7:

Section 28 is one of the provisions in

part IV of the Act dealing with registration

of trade marks. The primary operation of

section 28 is at the stage of the application

to register a mark.

We concede, Your Honour, that it can apply thereafter

but the primary operation, we submit, is correctly

stated:

The operation of the section to a mark

after lawful registration is secondary. In

the primary operation section 28 directs
attention to the status of the mark under the
general law. At that stage the mark is

entitled to no protection under the Act.

However after registration, when section 28

assumes its secondary role, the protection

to which the mark is entitled in a court of justice includes the protection afforded to

it by its entry in the Register under the Act.

At this stage in the development of the

legislative scheme for registration and use

of trade marks, it may be expected that the

degree of protection afforded to a mark by

registration is to be ascertained by an
examination of the language of the statute

rather than by reference to general law.

Then, they go on to deal with sections 60 and 61 and

section 61 is set out at the top of page 153 and

Your Honours can see the separate provisions of

C2T54/l/JH	13	6/4/90
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(b) and (c) that I have just referred to which,

in our submission, suggests that lack of

distinctiveness whether arising from non-use in

this case or in some other way which it is hard to

imagine is a different subject-w~tter from

section 28. Otherwise, why are they dealt with in

different paragraphs in section 61(1):

Paragraph 6l(l)(b) reflects the principle

already mentioned that a mark after lawful

registration may only be removed if its

continued presence on the Register is
prohibited by virtue of some other provision

of the Act -

that is section 28.

MASON CJ:  But, what I do not understand at the moment is,

is there not a difference between deception,
likelihood of deception on the one hand, and lack of

distinctiveness on the other?

MR SIMOS:  There is, Your Honour, but the submission that I

am making is to this effect, that where the

likelihood of confusion arises from lack of

distinctiveness caused by non-use, then the case has

to be dealt with by those provisions that deal with

non-use in the Act.

MASON CJ:  But, is not the likelihood or the alleged likelihood

of deception that arose in this case at the time

that application was made for removal one that arose

because your client was actually using the mark on

flavoured milk? In other words, it arose because,

in fact, the mark was being used at that time.

(Continued on page 15)

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MR SIMOS:  Yes, it did, but, Your Honour, the mark used by

my client was validly registered originally.

MASON CJ:	Yes.
MR SIMOS:	It was not, on the facts of the case, liable to be

expunged for non-use because it did not fall within

any of the non-use provisions of the Act.

Their Honours said that where a likelihood of

confusion arises through non-use causing lack of
distinctiveness the only remedy is the provisions of

the Act relating to non-use. Either that is right

or it is wrong and if Your Honours feel it is
doubtful then I have to say that Your Honours would,

no doubt, grant special leave, but I am endeavouring

to put to Your Honours that not only is that

submission correct for reasons of authority which
the Court has set out, but also for reasons of

analysis of the statute which are set out by the

Court in these and subsequent pages.

MASON CJ:  What is the difference, as you would sum it up,

between the question that arises in this case in

terms of the construction and application of

section 28(a) and section 28(d) from that which

arose in RIV-OLAND?

MR SIMOS:  If this principle, which I say is the ratio of

this case, is correct and is supported by authority

and by matters of statutory construction, section 28(d)

is irrelevant because you characterize this case as

a case involving non-use. True it is non-use which

produces lack of distinctiveness which causes a

likelihood of confusion, so that at first sight, and

without further analysis it falls within section 28(a)

but if the principle for which I am contending and

which I submit the case appealed from is authority,

is correct, section 28(a) is not dealing with a
likelihood of confusion arising from non-use

causing a lack of distinctiveness.

(Continued on page 16)

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MR SIMOS (continuing): So, in that way we submit that 28(d)

is irrelevant. If that principle is correct 28(a)

and 28(d) and the whole of 28 is irrelevant. And,

as I have said more than once, amongst the other

provisions, perhaps the most powerful provision in

support of that submission is section 61(1) where

(b) and (c) namely, section 28 and lack of

distinctiveness are dealt with as separate

subject-matters.

Now, Your Honour, the only other matter that

I will take Your Honours to is - - -

DAWSON J:	Why if they both - - -
MR SIMOS:	I am sorry, -Your Honour.

• •

DAWSON J:  Why if confusion is involved in both - the set of

provisions on the one hand and 28 mutually exclusive?

MR SIMOS:  I suppose, Your Honour, and it is our submission,

that it is because of the statutory principle of

construction that when the essential cause of the
confusion in our case is non-use, by contrast with
the cause of confusion in other cases, and I will give

Your Honours an exarrole in one m::mai.t of other cases then our case so characterized because it is essentially a case '

relating to non-use although non-use causing confusion,
is to be dealt with by the specific provisions of

the statute that deal with non-use.

Your Honour, there are some examples given in the

context of 28(d) on page 151. It says, lines 5 or 6:

In our opinion RIV-OLAND leaves open the question whether para.28(a) may apply where,

on some other ground -

than non-use, understood -

the mark was not entitled to protection in a

court of justice. We do not understand the

majority judgments to deny the possibility

that a mark may not be entitled to protection

in a court of justice, for example, because

the mark makes a false representation as to

the nature or quality of the goods.

(Continued on page 17)

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Dairy

MR SIMOS (continuing): And then dropping down to 16:

or because the mark would impose a clog
upon the means of identifying the

subject matter of dealings between

traders which operates in restraint of

trade.

Your Honours, it cannot be that if you fall within

28(a) necessarily you are disentitled to

registration because the honest concurrent user

provisions of the Act, section 58(3), specifically

recognizes that some marks - registered marks - you

may have two registered marks which are likely to

give rise to confusion, they may remain on the

register. So, section 28(a) cannot be read in a

totally unqualified sense because the Act, itself,

recognizes that there are some cases in which two

registered marks are likely to cause confusion,

but nevertheless the Act recognizes that they both

may remain on the register. So there has to be something more. However, Your Honours, that is

rather a different point and I am at pains to say

that the true characterization of this case is a

non-use case and likelihood of confusion, arising

from non-use, is not the subject matter of 28(a)

or any other part of 28, but is to be dealt with

by specific provisions of the Act.

Your Honours, the only other matter I would

take Your Honours to is the decision of the

New Zealand Court of Appeal in the PIONEER HI-BRED

CORN CO case, (19]9) RPC 410,at 412, to just

shortly show Your Honours that it is quite clear

that there are differences in the legislative

history which make the New Zealand decision

perfectly appropriate for New Zealand but not

relevant to the Australian decision.

If I could take Your Honours to page 412?

(Continued on page 18)

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MASON CJ: Is this a separate argument from your non-use

argument?

MR SIMOS: Well, it is not really separate, it is directed

towards getting the PIONEER case out of the way.

Yes, well, we say none of it is relevant because

section 28 is not relevant.

MASON CJ:  The reason why I ask the question is, after all

we have granted special leave in RIV-OLAND; having

th;a.t question before us in which we will be looking

at PIONEBR HI-BRED, it would not seem to be a

particularly persuasive ground for refusing special

leave in this case if it is not related to your

non-use point.

MR SIMOS:  No, I suppose it is not, Your Honour, because it

really goes - - -

MASON CJ:  I mean, you may be persuading us that we made a

mistake in granting special leave in RIV-OLAND

but that would be as far as you were getting.

MR SIMOS:  No, well, it is a different point. I do not know

if Your Honours want to look at it briefly, it is

only - - -

MASON CJ: Well, we will have a look at it. You may manage

to prejudice	us for the hearing of the appeal
in RIV-OLAND.

MR SIMOS:  Your Honour sees the quote at line 30 - - -

MASON CJ: This is page?

MR SIMOS:  Page 412.

MASON CJ: Yes.

MR SIMOS: That is a 1953 statute. It now reads - I mean

that was the provision that the court was looking

at:	"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."

And then the predecessor is mentioned, starting

at line 35:

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That section, in common with section 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 in BALI and the GE.

It is however clear that in 1953 the legislature

in New Zealand deliberately departed from the

previous wording as found in section 13 -

which is just two or three lines above, and

substituted the words quoted at line 30.

(Continued on page 20)

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MR SIMOS (continuing):

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 ... other-

wise, be disentitled to protection in a

court of justice".

And so on. So that is quite a different case,

Your Honour, but it does relate really to

section 28(d) and it is our submission, for the

reasons that we have said, that section 28(d)

has no application and if that is right in the

sense that that ratio - that principal - is

not attended with sufficient doubt, Your Honours

would not grant special leave. If Your Honours

please.

MASON CJ: Yes, thank you,Mr Simos. Yes, Sir Maurice.

SIR MAURICE:  I just want to say something about the

New Zealand provision, Your Honour. Far from it

being different, it is, in substance, precisely

the same as ours. True, it is not cast in the

same order, but if Your Honour has the - well I

have the headnote from the PIONEER HI-BRED CORN CO. -

it says:

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 -

That is paragraph (a) and paragraph (c), I think

or would be contrary to law or morality

We do not have "morality", - wnat that says about

this country, I do not know, Your Honour - but II II

we o ave t e d h h contrary to law, -

or would otherwise be disentitled to

protection in a court of justice.

So the language of section 16 is in substance, identical, forgetting the word "or morality",

with the language of section 28.	You have these
disparate subject-matters, just as you have them	in section 28 and as you did not have them in
the English case, section 11, which, by using the
words "by reason of deception" would be :_likely
to cause confusion.

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MASON CJ: But I think the point made against you is not

in the section itself, but rather in its legislative

history.

SIR MAURICE:  Yes, Your Honour, but one- even when there

is an explanatory memorandum, which may be

mistaken, the Court must look to the words of the

section and construe them. So legislative history,

Your Honour, really does not tell one much, except

to say that particularly when there is an identity

in substance of the language used, and we submit

that that is quite clear in this case, and the

Court of Appeal said, oh well, that the present

cast of our section 16 makes it clear that what the

House of Lords was saying in the G.E. ·

case~ does not apply, because the language is

different. So that their reasoning is identical

or applicable, if correct, as we would respectfully

submit it is, to our provision. So we would

respectfully submit to Your Honour that what my

learned friend last said has no substance.

Now, Your Honour, the only other thing I want

to say about what he said is this. Both the

this was a case of confusion and at page 142 of learned trial judge and the Full Court said that

the application book, they start at line 10, and they set out:

The argument that MOO and MOOVE have

different connotations was addressed to the

trial Judge. He said one muat be cautious .....

What is purchased in vast quantities -

and so on.

Purchasers and prospective purchasers know
well enough that the packaging contains

a milk product. In our.view the misspelling which corrnnences with the mark MOOVE with the

letters M-0-0 is likely to be recognised by

a substantial number of those who look at

the label as a misspelling intended to evoke

the connotation of the sound of a cow.

(Continued on page 22)

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SIR MAURICE (continuing):

The MOOVE mark no doubt evokes the idea of

movement but in our opinion it is also
likely to convey an association with cows.

There is both a phonetic similarity between the

marks and a similarity in the association with

cows. In our view there was ample material

before the trial Judge to support his conclusion

that the use of the MOO mark was likely to

deceive or cause confusion. Although the

decision was one for the trial Judge, his

conclusion is one with which we agree. This

ground of appeal fails.

And if Your Honours go to page 20, Your Honours will

find that the learned trial judge in language
echoing the language of Mr Justice Kitto in, I think,

the case in TOOWOOMBA FOllli1)RIES, I think it is called,

fie says, at line 5:

In all the circumstances, my conclusion is

that the use by the first respondent of MOO

in relation to its UHT flavoured milk product

is such that a substantial number of purchasers

and prospective purchasers of the MOO UHT

flavoured milk product, being persons who know

of MOOVE flavoured milk, including the UHT MOOVE

product, will be caused to wonder whether it

might not be the case that the two products

come from the same source; they would entertain

a reasonable doubt -

so he is saying confusion. Your Honour, and then he comes

back to it again when he is finally treating

section 28, at pages 86 to 87, and he says, in the

middle of the paragraph, Your Honours, line 4,

I would say:

The mark of the first respondent was one in

respect to which it was not entitled to relief

in equity. This was not because of any

"blameworthy conduct" -

in reference, of course, to Lord Diplock -

as understood when applying the maxim as to

unclean hands. Rather, there was "otherwise"

no entitlement to such protection, both for

want of the necessary distinctiveness at

5 August 1988 and -

that is the date of the proceedings -

C2T60/l/LW	22	SIR M. BYERS, QC	6/4/90
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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 by causing

persons, in the sense I have explained, to

wonder whether the MOO and MOOVE products

might not come from the same source, and to

entertain a reasonable doubt. 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 - - -

MASON CJ: Sir Maurice, we need not trouble you further.

There will be a grant of special leave in this case.

AT 3.09 PM THE MATTER WAS ADJOURNED SINE DIE

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