Oxford University Press v Registrar of Trade Marks

No judgment structure available for this case.

Re: THE CHANCELLOR, MASTERS AND SCHOLARS OF THE UNIVERSITY OF OXFORD t/a
OXFORD UNIVERSITY PRESS
And: THE REGISTRAR OF TRADE MARKS
No. V G223 of 1989
FED No. 251
Trade Marks
24 FCR 1

COURT

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
Lockhart(1), Jenkinson(2) and Gummow(3) JJ.

CATCHWORDS

Trade Marks - Registration - word according to its ordinary meaning a geographical name - whether a mark which is 100 per cent distinctive in fact must also be inherently adapted to distinguish before it is registrable under the Trade Marks Act 1955 - meaning of "adapted to distinguish" in sub-s. 26(1) of the Act - whether both elements (a) and (b) in sub-s. 26(2) must be considered.

Trade Marks Act 1955: ss. 24, 26.

HEARING

MELBOURNE

#DATE 1:6:1990

Counsel for the appellant: Dr J.McL. Emmerson and Mrs R.J. Howard

Counsel for the respondent: Mr D. Shavin

Solicitors for the appellant: Messrs Davies Ryan De Boos

Solicitor for the respondent: Australian Government Solicitor

ORDER

The appeal be dismissed.

The appellant pay the costs of the respondent of the appeal.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

JUDGE1

This case raises the question whether a trade mark which is wholly (or what the cases call 100 per cent) distinctive in fact must also be inherently adapted to distinguish before it is registrable under the Trade Marks Act 1955 ("the Act"). Central to the question are ss. 24 and 26 of the Act and their interpretation.

Sections 24 and 26 are in the following terms:

"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 represented in a special or particular manner;

(b) the signature of the applicant for registration or of some predecessor in his business;

(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. 24(2) A name, signature or word (not being a name, signature or word described in paragraph

(a), (b), (c) or (d) of the last preceding subsection) is not registrable in Part A of the Register unless it is, by evidence, shown to be distinctive.

24(3) A trade mark may be registered in Part A of the Register in respect of any goods or services notwithstanding the registration of the trade mark or of a part or parts of the trade mark in Part B of the Register, in the name of the same person, in respect of the same goods or services or other goods or services.

. . .

26(1) For the purposes of this Act, a trade mark is not distinctive of the goods or services of a person unless it is adapted to distinguish goods or services with which that person is or may be connected in the course of trade from goods or services in respect of which no such connexion subsists, either generally or, where the trade mark is sought to be registered, or is registered, subject to conditions or limitations, in relation to use subject to those conditions or limitations. 26(2) In determining whether a trade mark is distinctive, regard may be had to the extent to which -

(a) the trade mark is inherently adapted so to distinguish; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish.

The question arose before the Supreme Court of Victoria (King J.) on appeal from a decision of the respondent, the Registrar of Trade Marks, of 11 March 1987 refusing two applications for registration of the word "Oxford" in the Register of Trade Marks. The applications were lodged on 14 September 1981 and seek registration of "Oxford" in Part A of the Register in respect of (in the case of application No. 365545): "Recorded films, tapes and discs for reproducing information, all the aforesaid goods being included in this class", being goods in Class 9, and (in the case of application No. 365546): "Printed publications being goods in Class 16". The respondent refused to register the applications not only in Part A but also in Part B, though the basis for his assumption of jurisdiction in respect of Part B is not clear.
The Supreme Court dismissed the appeals against the respondent's refusal to register the marks applied for in Part A of the Register. King J. made no order in respect of the appeals against the respondent's refusal to register in Part B for reasons which his Honour gave but which are not relevant on this appeal.
At the commencement of argument before us counsel for the appellant abandoned the appeal with respect to the application for registration No. 365545 concerning recorded films and the like and applied for the appeal to be dismissed with respect to that application. The appeal has thus been confined to the application to register "Oxford" in Part A of the Register in respect of goods in Class 9 "Printed publications being goods in Class 16". No question arises with respect to the refusal of the respondent to register the applications also in Part B of the Register.
The relevant facts may be briefly stated; they are not in dispute. The appellant carries on business as Oxford University Press. The learned primary Judge found that, although the University of Oxford, is sometimes conveniently referred to as "Oxford" that would be understood in such a context to be a convenient shorthand reference not just to Oxford University but also to a university identified by reference to its locality. His Honour rejected the view suggested by some of the witnesses that "Oxford" ordinarily designates the university as distinct from the town. His Honour also rejected the argument advanced by counsel for the appellant that, when the word "Oxford" is used in relation to the goods applied for, its ordinary descriptive significance is the university rather than the town.
His Honour concluded that on the face of it persons in Oxford other than the appellant might well be carrying on the industry of producing printed publications and recorded films, tapes and discs, and might be expected to do so in the future. His Honour went on to hold:

"They might well also wish to advertise their goods in Australia as originating in Oxford, thereby gaining the benefit of the reputation of the Oxford town-university complex and they and their distributors should not, by the registration of 'Oxford' as a trade mark, be prevented from doing so, or placed at risk of litigation."

The respondent accepts that the mark applied for has acquired 100 per cent distinctiveness in fact in respect of the goods for which registration is sought.
Counsel for the appellant submitted that the sole issue is whether a mark which is 100 per cent distinctive in fact is therefore distinctive in law and registrable under the Act even if it is not inherently adapted to distinguish. It was submitted that the basic requirements of distinctiveness are set out in s.26 of the Act, that the effect of sub-s. 26(2) is that there are three kinds of distinctive marks: (a) a mark which is inherently adapted to distinguish it (para. 26(2)(a)); (b) a mark which has become distinctive through use or other circumstances (para 26(2)(b)); and (c) a mark which is adapted to distinguish through a combination of use or other circumstances. As the word "Oxford" was admitted to be 100 per cent distinctive of the appellant's goods in fact, it was said to have necessarily qualified for registration. Even if it is necessary that the word be also inherently adapted to distinguish, it was submitted that it passed this test.
It was submitted that "Oxford" has at least two important meaning in ordinary parlance, namely, to describe the university and to describe the town. By reason of the special connection between the appellant and the word when used in the context of printed publications, the meaning of the word as the university and not the town predominates. It was submitted that in those circumstances the word "Oxford" has an inherent adaptability to distinguish and that the primary Judge erred in his findings of fact to the contrary.
It was accepted by counsel for the respondent that a word being according to its ordinary meaning a geographical name is not registrable in Part A of the Register unless it is otherwise a distinctive mark. It was submitted that, as Oxford is the name of a city in England, the onus is on the appellant to establish that it is not a word "being according to its ordinary meaning a geographical name" within the meaning of para. 24(1)(d) and that the appellant failed to satisfy this onus. To establish that "Oxford" is a distinctive mark it is necessary for the appellant to establish both that it is inherently adapted so to distinguish and by reason of its use or of any other circumstances it does so distinguish within the meaning of sub-s. 26(2) of the Act. Counsel said that there was an unbroken line of authority from Registrar of Trade Marks v W. and G. de Cross Limited (1913) 30 RPC 660 to York Trailer Holdings Limited v Registrar of Trade Marks (1984) RPC 231 which established this proposition.
Counsel for the appellant responded to this submission by contending that the decision in the York Trade Mark Case was wrongly decided and that, even if it were correctly decided, it should not be followed in this country; that the decision in Waterford Trade Mark (1984) FSR 309 was correctly decided and should be followed. He argued that the other cases upon which reliance was placed by counsel for the respondent did not represent an unbroken or any line of authority to support the proposition of the respondent; but rather they were all cases that were decided on their own facts and were distinguishable on various grounds from the present case including the fact that some of them were dealing with different trade marks legislation which raised different issues.
The central question is, in my view, whether the word "Oxford" is "adapted to distinguish" the goods of the appellant within the meaning of sub-s. 26(1) of the Act, a question which is to

"be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of a word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it."

Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 per Kitto J. at 514; Burger King Corporation v The Registrar of Trade Marks (1973) 128 CLR 417 per Gibbs J. at 425.

Sub-sections 26(1) and (2) must be read together, the latter giving content to the former. Although sub-s. 26(2) is not expressed in language of the kind to be expected in a statutory provision which defines the elements of registrability that must be satisfied before a mark is "adapted to distinguish" goods within sub-s. 26(1), that is the effect in law which the authorities give to it. Sub-section 26(2) provides that "in determining whether a trade mark is distinct, regard may be had to the extent to which" the two criteria of paras. (a) and (b) are satisfied. Doubtless it is primarily the Registrar of Trade Marks to whom sub-s. 26(2) is directed when stating that "regard may be had" to the matters there specified because it is the Registrar who determines whether registration of a particular mark should be permitted. But three points must be made: First, the word "may" in sub-s. (2) is used in the imperative, not the permissive or facultative sense, so that regard must be had to both paragraphs (a) and (b): the Tarzan Case (1970) RPC 450 per Salmon L.J. at 455; Burger King per Gibbs J. at 426. Secondly, the question of whether a mark is "adapted to distinguish" the goods of the applicant for registration within sub-s. 26(1) involves a balancing process, a weighing of the two elements stipulated in sub-s. 26(2) in determining the ultimate question whether the mark is "adapted to distinguish" and therefore registrable under sub-s. 26(1): Clark Equipment Co. per Kitto J. at 513 and Burger King per Gibbs J. at 426.
The third point is that although sub-s. 26(2) does not itself stipulate that particular emphasis be given to paragraph (a) (that the trade mark be inherently adapted to distinguish) that is the effect of the authorities. In Eclipse Sleep Products Inc. v The Registrar of Trade Marks (1957) 99 CLR 300 Dixon C.J., Williams and Kitto JJ. said at 313

". . . it is so clearly established that distinctiveness in fact is not conclusive and that inherent adaptability to distinguish, of which the fact that the mark has proved to be distinctive in use is but evidence, is the true test, Yorkshire Copper . . ."

The question of whether the mark for which registration is sought is inherently adapted to distinguish the goods of the applicant for registration was described in Burger King by Gibbs J. at 426 as "the primary inquiry". Also, in F.H. Faulding and Co. Limited v Imperial Chemical Industries of Australia and New Zealand Limited ("the Barrier Cream Case") (1965) 112 CLR 537 Kitto J., with whose reasons for judgment Barwick C.J. and Windeyer J. agreed, said at 554:

"but even if it has acquired distinctiveness by use it is still not distinctive, in the sense which justifies registration, if it is inherently unadapted to distinguish the goods of the proprietor from those of other persons: see s. 16(2) of the former Act (s. 26(2)(a) of the present Act) and the Yorkshire Copper Works Case."

The reference by Kitto J. to "the Yorkshire Copper Works Case" is a reference to Yorkshire Copper Works Limited's Application (1954) 71 RPC 150 in which the word "Yorkshire", where used adjectivally in relation to copper products, was held not to have lost its primary geographical significance. It was held also that, although the mark was in fact adapted to distinguish the goods of the applicant for registration, it was inherently not adaptable to distinguish those goods, and therefore not distinctive. Yorkshire Copper was criticised by counsel for the appellant and said to be responsible for subsequent judicial error because it approved the proposition that the section in the Trade Marks Act 1938 of the United Kingdom (ss. 9(2) and (3)) equivalent to s.26 of the Australian Act of 1955 required that both elements (embodied in paragraphs (a) and (b) of sub-s. 26(2) had to be satisfied before a mark could be said to be distinctive and therefore registrable.
Counsel for the appellant embarked upon an interesting examination of the numerous authorities both before and after Yorkshire Copper but in the final analysis the question is answered by decisions of the High Court which bind this Court so I see no useful purpose in embarking upon a detailed analysis of the English cases.
The cases to which I have referred already of Clark Equipment, Burger King and the Barrier Cream Case sufficiently answer the argument of counsel for the appellant and deny its validity. It should also be remembered that there is a strong line of authority commencing with the oft cited judgment of Lord Parker in the Registrar of Trade Marks v W. and G. Du Cros Limited (1913) 30 RPC 660 (especially at 672 and 673) with reference to the Trade Marks Act 1905 (U.K.) which support generally the proposition that both elements (a) and (b) in sub-s. 26(2) of the Australian Act of 1955 must be considered and that the primary element is that of inherent adaptability. Of course, in some cases there may be no evidence of distinctiveness in fact (for example, no actual use in the case of a new mark) so that paragraph (b) of sub-s. 26(2) could not be established. The mark would not be disqualified from registration provided it was inherently adapted to distinguish within paragraph (a), being the essential integer.
Counsel for the appellant relied on the decision of the High Court in the Registrar of Trade Marks v Muller (1980) 144 CLR 37 in support of the argument that the effect of sub-s. 26(2) is that there are three, not two, kinds of distinctive marks, one of which is a mark which may become "adapted to distinguish" by reason of extensive use or other circumstances. It was submitted that the word "Oxford" on the facts of the present case satisfied that description and was therefore "adapted to distinguish" within the meaning of sub-s. 26(1) whether or not it was inherently adapted to distinguish within the meaning of para. 26(2)(a). Reliance was placed by counsel for the appellant upon the following passage from the reasons for judgment of the High Court in Muller (Stephen, Mason, Murphy, Aickin and Wilson JJ.) at 42:

"A mark may be 'adapted to distinguish' and therefore may be distinctive in the relevant sense in three ways: (1) it may be 'inherently adapted so to distinguish'; (2) it may be 'adapted to distinguish' by reason of a combination of inherent adaption and use or other circumstances; and (3) it may, being 'capable of becoming distinctive', become 'adapted to distinguish' by reason of extensive use or other circumstances. In any event the mark is or becomes registrable in part Pt. A. But if the mark is not 'adapted to distinguish' and is merely 'capable of becoming distinctive', then it is registrable only in part Pt. B. The scheme of registration is in these respects similar to that introduced in the United Kingdom by the Trade Marks Act, 1919 and subsequently by the Trade Marks Act, 1938."

In Riv-Oland Marble Co. (Vic) Pty. Limited v Seteff SpA (1988) 83 ALR 677 I referred to that passage from Muller (at 712) in making certain findings as to distinctiveness. In Riv-Oland this Court did not have the benefit of full argument on the question of distinctiveness which was a subsidiary issue in that case. The passage from Muller cited above is obiter; but, on reflection, I do not think that the High Court could have intended in such a short passage and without reference to authority to have departed from the well established doctrine that regard must necessarily be had to the inherent adaptability of a mark before deciding whether or not the mark is distinctive. I reject the argument that a mark may become "adapted to distinguish" by reason of extensive use or other circumstances without its having any inherent adaptability.
I turn to the argument of counsel for the appellant that the word "Oxford" has an inherent adaptability to distinguish or, in the alternative, that "Oxford" cannot be said to have no inherent adaptability to distinguish.
The learned primary Judge held, correctly in my opinion, that the onus lay upon the appellant, as the applicant for registration, to establish that the mark should be registered and that if the question was left in doubt the application should be refused. His Honour relied for this finding on Eclipse Sleep Products Inc. v The Registrar of Trade Marks (1957) 99 CLR 300 at 314.
The relevant findings of the primary Judge are as follows:

"As the authorities state it may be difficult in such cases as this for an applicant for registration to prove the required elements of its case. . . It would have been useful to have evidence before me as to whether the categories of goods in respect of which registration is sought are produced in the town of Oxford by anyone other than the appellant. . . . The further question whether such categories of goods may in the future be produced in the town of Oxford by someone other than the appellant also has not been the subject of evidence. It is therefore necessary for me to consider these questions on the basis of the matters of which I can take judicial notice. Disregarding the trade mark reputation of the word 'Oxford' I think that the relevant facts are that Oxford is a university town, i.e. it is a complex of town and university, and that the university is of high world-wide repute and is known in Australia to be a place of intense scholastic activity. Whilst such activity results and is known to result in the creation of learned works and their publication to the world I should not, I think, assume that the university is the only entity in or near the town of Oxford which records such works for publication in the form of printed publications or recorded films, recorded tapes and recorded discs for reproducing information. I see no reason for assuming that the university monopolises or will monopolise such acts of recording information in Oxford, or will be considered in Australia to do so. It may be that organisations have already come into existence in and around Oxford which supplements the activities of the University in this way or that they will come into existence for this purpose; the reference in the evidence to Equinox (Oxford Limited) Ltd. may be said to suggest one or other of these possibilities. Not only is there no evidence to the contrary, but I think that on the basis of the matters of which I can take notice such possibilities arise to a substantial extent. My conclusion therefore is that on the face of it persons in Oxford other than the appellant might well be carrying on the industry of producing printed publications and recorded films, tapes and discs, and might be expected to do so in the future. They might well also wish to advertise their goods in Australia as originating in Oxford, thereby gaining the benefit of the reputation of the Oxford town-University complex, and they and their distributors should not, by the registration of 'Oxford' as a trade mark be prevented from doing so or placed at risk of litigation."

It is a basic principle of trade mark law that no person should be able to monopolise a place name, because the effect of registration would be to impose an unreasonable restraint upon other traders who may legitimately wish to use that name in relation to their own goods or services. Paragraph 24(1)(d) reflects this principle and does not give prima facie entitlement to registration of a word which is according to its ordinary meaning a geographical name. A name of this kind is still registrable as a trade mark in Part A if it is established on the evidence to be distinctive and thus qualify for registration under para 24(1)(e): see sub-s. 24(2). It is established that the five paragraphs in sub-s. 24(1) are to be construed distributively, so that if, for example, a word is, according to its ordinary meaning, a geographic name, and therefore outside para 24(1)(d), it may still qualify for registration under para 24(1)(e): Eastman Photographic Materials Company v Comptrollor-General of Patents, Designs and Trade-Marks (1898) AC 571, especially per the Earl of Halsbury L.C. at 576, Lord Morris at 584 and Lord Shand at 584; In re Joseph Crosfield and Sons Limited ("the Perfection Case") (1910) 1 Ch 130 per Fletcher Moulton L.J. at 145.
There are some geographical names which probably are incapable of registration because they are

"so adapted for descriptive purposes that no amount of acquired distinctiveness can justify registration and that among such words are the names of large and important industrial towns or districts, and also of smaller towns or districts if they are receipt of manufacture of the goods for which registration is sought":

Clark Equipment per Kitto J. at 516. When reviewing the relevant authorities including the Yorkshire Copper Case, the Glastonbury Case (1938) AC 557 and the Liverpool Electric Cable Co. Case (1929) 46 RPC 99, Kitto J. applied those principles to include in that prohibited category of words the word "Michigan" which it was sought to register in relation to earth moving and similar equipment in Pt. B of the Register of Trade Marks under the Act. Kitto J. recognised in the following passage in Clark Equipment at 514 that some geographical names are registrable:

"It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Case . . . "

In my opinion the primary Judge correctly held that the appellant had not discharged the burden of proving whether the categories of goods in respect of which registration is sought are produced in Oxford by anyone other than the appellant. His Honour referred to certain evidence which may touch this question and we were referred in argument by counsel for the respondent to other evidence which was said to constitute positive evidence in support of the proposition that there were persons in Oxford who would or would be likely to legitimately produce written publications from Oxford and use the word "Oxford" in connection with them.
It has not been established that the primary Judge fell into error in his findings of fact on this question.
I would dismiss the appeal with costs.

JUDGE2

The circumstances relevant to the decision of the appeal and the legal considerations which may influence that decision are disclosed in the reasons for judgment of the other members of the court, which I have had the advantage of reading.

Counsel for the appellant relied upon the argument that a trader could not "legitimately" or "without any improper motive" use the name of a geographical entity in connection with his goods if that name enjoyed "100% distinctiveness" as a trade mark of another trader in connection with goods of that kind. So to use the name in those circumstances would be to pass off his goods as those of him who owned that trade mark. Since counsel for the respondent Registrar had conceded before King J. and before this Court that the name "Oxford" did enjoy "100% distinctiveness" of the appellant in relation to printed publications, it followed in the submission of counsel for the appellant that no person could legitimatively and without improper motive use that name in connection with printed publications. The conclusion therefore followed, it was submitted, that the question whether the mark "Oxford" is adapted to distinguish the appellant's printed publications, tested by reference to the criterion propounded by authority, should be answered in the affirmative. The criterion is stated by Kitto J. in Clark Equipment Company v. Registrar of Trade Marks (1964) 111 CLR 511 at 514 as a requirement that "the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it." For the reasons stated there could be no such a person who would want so to use the word "Oxford" in connexion with printed publications, it was submitted.
K.E. Shelley QC, by whom the expression "100% distinctiveness" was used in argument before the House of Lords in Yorkshire Copper Works Limited's Application (1953) 71 RP 150 at 151, was careful to define the meaning he attributed to it : "that the word 'Yorkshire', used adjectivally in relation to these particular goods, has lost its primary geographical significance to everyone concerned with the trade in those goods." That was not a trade in which members of the public would, in the ordinary way, be involved, as Lord Evershed M.R. pointed out in the Court of Appeal (70 RPC at 2). "Such a thing", Shelley QC pointed out of "100 per cent. distinctiveness" in that sense, "can only happen in a very specialised field, in which everyone who deals with the goods is trained in his trade : it could not happen with goods sold to the general public (such as slippers, in the Glastonbury case) : but we say it has happened here". It is in my opinion apparent that by the words, "everyone concerned with the trade in those goods", Shelley QC intended to comprehend those who buy the goods. The reference by Shelley K.C. to the Glastonbury Case evokes the observations of Lord Russell of Killowen, on the effect of the evidence as to "distinctiveness in fact" in that case, in which Lord Thankerton and Lord MacMillan concurred:

"My Lords, if it were necessary for the purpose of our decision on this appeal to express a view as to the effect of the evidence, I would, speaking for myself, agree with Clauson J. that it falls far short of establishing that the geographical name 'Glastonburys' where applied to slippers had in the space of some two or three years come to indicate primarily, not that the slippers were made in Glastonbury, but that they were made (presumably anywhere) by a particular manufacturer. That the word bore this signification in the trade is not enough; though it is a fact which may be taken into consideration by the tribunal under para 5 of s. 9. In the case of household articles in general use such as slippers, the meaning which the word in question conveys to the purchasing public is of vital importance."

There is evidence in the case under present consideration which could be understood to suggest that all persons able to read would think that the word "Oxford" in connection with a book indicated primarily, not that the book was made in Oxford, or had been written by an author connected with Oxford, but that it was published by a particular publisher. The chairman of Hodder and Stoughton Ltd. deposed:

"I would regard the use by anyone other than the Oxford University Press of the word 'Oxford' (as in an Oxford dictionary, The Oxford Book of Wild Flowers etc) as an attempt to pass off a book which was intended to appear to come from the Oxford University Press. A book with such a title could, in my view (and surely in the view of all book users), only be published by the Oxford University Press."

A senior lecturer in English at Monash University deposed:

"In my opinion if one saw 'Oxford' on the cover of a book, one would know that that book was an Oxford University Press publication."

Most of the evidence, however, went no further than to assert that the persons to whom the signification of the word in connection with a book is primarily as a name or mark of the publisher of the book comprise a substantial proportion of those who are able to read. A consideration of the whole of the evidence in my opinion is consistent with a finding which, if judicial notice of such a matter were permissible, common experience of life in this country would confirm : that a substantial number of the persons who buy books in this country would not take the word "Oxford", on or in connection with a book, as any indication or mark of a particular publisher, but would suppose, if adverting to the word at all, that that word signified the place where the book had been produced or the place where the publisher had its principal place of business, or would suppose, if the word formed part of the book's title, some other connection between the contents of the book and the place named Oxford. If Mills and Boon were to publish a book or a series of books entitled "An Oxford Romance" or "Oxford Romances", it could hardly be doubted that many copies would be purchased in this country by persons whose minds had never adverted, before or after purchase, to the phrase "Oxford University Press", and in whose minds the title excited no advertence at all to the identity of the publisher. Or, if elementary technical or trade instructional books were to be published, whether by the appellant or another, with the word "Oxford" in the title or on the spine or below the publisher's name on the title page, many of those books would be purchased by persons to whom the thought would not occur that that word was a trade mark, or any indication of the identity, of the publisher.

It is in my opinion clear that the expression "100% distinctiveness", in the sense in which Shelley K.C. declared that he used it, cannot be applied to the appellant's use of the word "Oxford" as a trade mark in respect of its printed publications.

"It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Case (1953) 71 RPC 150, at p 154. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as 'North Pole' in connexion with bananas: A. Bailey and Co. Ltd. v. Clark, Son and Morland Ltd. (the Glastonbury Case (1938) AC 557, at p 562; (1938) 55 RPC 253, at p 257) (see also the Livron Case (1937) 54 RPC 326, at p 339), or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification." (per Kitto J. in Clark Equipment Company v. Registrar of Trade Marks (1964) 111 CLR 511 at 514-515)

In my opinion the eclipse must darken the minds of virtually all potential purchasers to that "primary signification". Although a distinctiveness in fact which falls well short of achieving such an eclipse may in some circumstances suffice to ground an action for passing off goods to which the "geographical name" has been applied as a trade mark without the authority of the trader who has by use of the name on or in connection with his goods achieved that distinctiveness, not every use of the name on or in connection with similar goods which is without that authority and which is outside the protection afforded by s.64 of the Trade Marks Act 1955 will necessarily constitute a passing off, as will use of a geographical name the primary signification of which has been so eclipsed. No finding of such an eclipse could in this case be made, in my opinion.

The foregoing considerations are in my opinion sufficient to require that the appeal be dismissed. It is, I think, unnecessary to express an opinion whether in this country the operation of the law is, as Kitto J. seems to suggest in Clark Equipment Co. v. Registrar of Trade Marks (1964) 111 CLR at 515-516, such "that there is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of . . . . . towns or districts if they are" - or, perhaps one should add, if they may become - "a seat of manufacture of the goods for which registration is sought." That may be the category of words metaphorically designated by Lord Evershed M.R., quoting Cozens-Hardy M.R., "the great common of the English language", enclosure of any part of which by trade mark registration should be prevented (70 RPC at 4). If there be such a common in this country, the word of which the appellant seeks registration must surely be one of the choicest parcels in it.
I agree in the orders proposed by the other members of the Court.

JUDGE3

This is an appeal from the decision of a Judge of the Supreme Court of Victoria (King J.) in which his Honour upheld the decision of the respondent, the Registrar of Trade Marks ("the Registrar"). The Registrar had refused certain applications pursuant to the Trade Marks Act 1955 ("the Trade Marks Act") for registration of the word "OXFORD" in the Register maintained pursuant to that statute. The appellant thus was unsuccessful, both before the Registrar and before King J.

I shall identify the appellant as "the University". The University was incorporated under the style "The Chancellor, Masters and Scholars of the University of Oxford" by s. 1 of the Oxford and Cambridge Act 1571 (13 Eliz. I, c. 29) (Eng.). The University, of course, traces its origins to a much earlier time. Certain of the earlier Letters Patent were confirmed by the 1571 statute.
The evidence indicates that the first book to be published at the University with the use of a printing press was in 1478. The activities of what is known as the Oxford University Press ("the Press") commenced in 1586, although the use of "OXFORD" as a mark to identify publications of the Press commenced only in the 19th century. There has been a branch of the Press in Australia since 1908. The Press has no legal identity distinct from that of the University.
The University already holds a number of Australian trade mark registrations, including trade marks Nos. A365,547 and A365,548 (for "Oxford University Press", in respect of goods included in Classes 9 and 16) and Nos. A376,594 and A376,595 (for a device including the words "Oxford University Press" and "Oxford Australia", in respect of goods in Classes 9 and 16).
The two applications with which these proceedings are concerned were filed on 14 September 1981. Each sought registration of "OXFORD" in Part A of the Register, in respect of goods, not services. In each case, the description of the goods in respect of which registration was sought was subsequently amended. As amended, application No. A365,545 sought registration in respect of:

"Recorded films, tapes and discs for reproducing information, all the aforesaid goods being included in (Class 9)."

Sub-section 31 (1) of the Trade Marks Act provides that a trade mark shall be registered in respect of any or all of the goods or services comprised in a prescribed class of goods or services.

Application No. A365,546 was amended so that registration was sought in respect of "Printed publications being goods in Class 16".
Sub-section 44 (2) of the Trade Marks Act provides that in the case of an application for registration of a trade mark in Part A of the Register, the Registrar may, instead of refusing to accept the application, and with the consent of the applicant, treat the application as one for registration in Part B of the Register, and deal with it accordingly.
The Registrar refused both applications, not only in Part A but also in Part B. However, at the commencement of his reasons for judgment, King J. noted that there was no indication that sub-s. 44 (2) had been invoked before the Supreme Court. Accordingly, his Honour assumed that the appeals before him were in respect only of the applications for registration in Part A. At the end of his reasons, his Honour said that he made no order in respect of the appeals against the Registrar's refusal to register in Part B. However, King J. said that if he was wrong in that approach and if he should have considered the proceedings before him as including appeals from the refusal of the applications in Part B, he would refuse those appeals for the same reasons as he refused the appeals against the denial of registration in Part A. His Honour also indicated that he understood the proceedings before him to have been conducted with reference solely to the Class 16 application, without abandoning the Class 9 application.
As instituted, the present appeal was brought from the decision in respect of both applications, but in opening his case, counsel for the University indicated that the appeal was pressed only in respect of application No. A365,546. He agreed that the appeal should be dismissed insofar as it related to application No. A365,545. The Court thus is concerned only with the application to register "OXFORD" in respect of printed publications. Submissions were directed only to the question of registration in Part A of the Register.
Sub-sections 24 (1) and (2) of the Trade Marks Act provide as follows:

"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 represented in a special or particular manner;

(b) the signature of the applicant for registration or of some predecessor in his business;

(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.

(2) A name, signature or word (not being a name, signature or word described in paragraph (a), (b), (c) or (d) of the last preceding sub-section) is not registrable in Part A of the Register unless it is, by evidence, shown to be distinctive."

A non-verbal device would be eligible only under para (e) of sub-s. 24 (1). A word mark may qualify under paras (a), (b), (c) and (d) and failing that, under para (e). This case is concerned solely with a word mark. Sub-sections 26 (1) and (2) deal further with the concept of distinctiveness. They provide:

"26. (1) For the purposes of this Act, a trade mark is not distinctive of the goods or services of a person unless it is adapted to distinguish goods or services with which that person is or may be connected in the course of trade from goods or services in respect of which no such connexion subsists, either generally or, where the trade mark is sought to be registered, or is registered, subject to conditions or limitations, in relation to use subject to those conditions or limitations.

(2) In determining whether a trade mark is distinctive, regard may be had to the extent to which -

(a) the trade mark is inherently adapted so to distinguish; and

(b) by reason of the use of the trade mark or of any other circumstances, the trade mark does so distinguish."

In Australia for the year ending 30 June 1978, the Press sold 1,348,907 items with a total retail value of $2.8m; for the year ending 30 June 1984, the value of retail sales had risen to $5.4m.
It was conceded by counsel for the Registrar, that in respect of the goods for which registration was sought, namely "printed publications", "Oxford" had acquired "100% actual distinctiveness". This expression appears to have its origin in the (unsuccessful) submissions of counsel for the applicant for registration in Yorkshire Copper Works Limited's Application (1954) 71 RPC 150 at 151, 154, as meaning, in that case, that the word "Yorkshire" used adjectivally in relation to certain copper products had lost its primary geographical significance to everyone concerned with the trade in those goods.
I should add that sub-s. 25 (1) of the Trade Marks Act imposes less stringent requirements in respect of applications for registration in Part B. The sub-section states:

"25. (1) A trade mark is registrable in Part B of the Register if it is distinctive, or is not distinctive but is capable of becoming distinctive, of goods or services in respect of which registration of the trade mark is sought and with which the applicant for registration is or may be connected in the course of trade."

The concept of capacity to become distinctive (for the purposes of Part B registration) and its relation to that of adaption to distinguish (for the purposes of Part A registration) was explained by Gibbs J. in Burger King Corporation v The Registrar of Trade Marks (1973) 128 CLR 417. Part B registration was introduced in Australia with the enactment of the present statute in 1955. In the United Kingdom, provision for Part B registration was first made in 1919.

Counsel for the University submitted that "OXFORD" qualified for registration in Part A, pursuant to para 24 (1) (e) of the Trade Marks Act, as "any other distinctive mark". He did not submit that the mark qualified under para 24 (1) (d), bearing in mind the exclusion from that paragraph of a word being, according to its ordinary meaning, a geographical name. However, he emphasised the well established principle of construction that the paragraphs in provisions such as sub-s. 24 (1) each have an independent operation, such that a word may qualify for registration under para (e), even though it does not also qualify for registration under para (d): The Eastman Photographic Materials Company, Limited v The Comptroller-General of Patents, Designs and Trade-Marks (1898) AC 571; Bayer Pharma Pty Limited v Farbenfabriken Bayer AG (1960) 120 CLR 285 at 291-292.
"OXFORD" will not be registrable in Part A of the Register unless it is, by evidence, shown to be distinctive. That is the effect of sub-s. 24 (2). Counsel for the University pointed to the concession by the Registrar that there is "100% distinctiveness in fact". He emphasised that this was a degree of distinctiveness greater than that necessary to maintain a passing-off action.
Attention then has to be paid to sub-s. 26 (1). It is submitted that "OXFORD" is "adapted to distinguish" printed publications with which the Press is or may be connected in the course of trade from printed publications in respect of which no such connection subsists. However, one then comes to sub-s. 26 (2). This provision, although it does not do so in terms, is to be understood as giving content to the requirement of sub-s. 26 (1) that a trade mark will not be distinctive unless it is "adapted to distinguish".
Senior counsel for the University accepts that the term "may" in sub-s. 26 (2) is mandatory rather than permissive, in the sense that in the present case both paras (a) and (b) of the sub-section should be considered. He submits that by reason of the use of the trade mark in question, it does in fact distinguish, to the degree of "100% distinctiveness", printed publications with which the Press is or may be connected in the course of trade from printed publications in respect of which no such connection subsists. That, he says, of itself is sufficient to enable or require a determination that the trade mark is distinctive. He refers to what was said in The Registrar of Trade Marks v Muller (1980) 144 CLR 37 at 42:

"A mark may be 'adapted to distinguish', and therefore may be distinctive in the relevant sense in three ways: (1) it may be 'inherently adapted so to distinguish'; (2) it may be 'adapted to distinguish' by reason of a combination of inherent adaptation and use or other circumstances; and (3) it may, being 'capable of becoming distinctive', become 'adapted to distinguish' by reason of extensive use or other circumstances. In any event the mark is or becomes registrable in Pt A."

Counsel also relies upon the remarks of O'Higgins C.J. in WATERFORD Trade Mark (Ireland) (1984) FSR 390 at 393-394, for the proposition that extensive use may, of itself, render a geographical name "adapted to distinguish". He submits that the present application falls within category (3) of those described in Muller's Case. Counsel also submits that the word "Oxford" has some inherent adaptability to distinguish, so that the application also falls at least within category (2). It is contended that "Oxford" has at least two important meanings in ordinary parlance, to identify the University and to identify the town in which the University is located; that by reason of the special connection between the University and the word "Oxford" when used in the context of printed publications, the meaning of the word to identify the University and not the town predominates.

However, there is a series of decisions which appear to support the proposition that a trade mark may not be distinctive for the purposes of, for example, para (e) of sub-s. 24 (1) of the Trade Marks Act, even though it is by evidence shown to be "100% distinctive in fact". The decisions were strongly relied upon by counsel for the Registrar. They stem from what was said by Lord Parker in The Registrar of Trade Marks v W. and G. du Cros Ld (1913) 30 RPC 660 at 672, in the context of the Trade Marks Act 1905 (U.K.). His Lordship's remarks have been followed and applied in the United Kingdom in a series of appellate decisions which deal with both Part A and Part B of the Register. They include A. Bailey and Co. Ld v Clark, Son and Morland Ld (1938) 55 RPC 253 (the "Glastonbury" Case) and Yorkshire Copper Works Limited's Application (supra) and culminate in YORK Trade Mark (1984) RPC 231.
Counsel for the University sought to have us hold that at some stage, no later than the decision of the House of Lords in Yorkshire Copper Works Limited's Application, the course of authority in Britain took a wrong turning and has since deviated from the right road; cf. Cook v Southend Borough Council (1990) 1 A11 ER 243 at 254. But it cannot be our task to pass judgment upon that submission. Rather, certain decisions upon the British statutes of 1905 and 1938 have been treated by the High Court as persuasive in the interpretation of the Australian legislation. Thus, it is the course of decision in this country with which we are directly concerned.
In the light of the submissions by counsel for the University, it is necessary to reiterate some basic propositions. A trader who has obtained registration of his trade mark in Part A or Part B of the Register has an incorporeal asset in respect of which the legislation provides procedures for licensing and assignment. Nor is it necessary in infringement proceedings for him to establish distinctiveness in fact as a necessary step in his case. Thus, the legislation gives him rights beyond those he would have at common law. However, the scheme of the trade marks legislation, both in this country and in the United Kingdom, has not been to create a register of common law trade marks. Thus, some trade marks which have not by use acquired distinctiveness sufficient to support a passing off action nevertheless may be registered: Shell Company of Australia Limited v Rohm and Haas Co. (1949) 78 CLR 601 at 625-627 Moorgate Tobacco Company Limited v Philip Morris Limited (No. 1) (1980) 145 CLR 457 at 477-478. (It may be noted that the applicant in Muller's Case (supra) appears to have put forward the word "LESS" as a registrable trade mark in this category.)
On the other hand, a common law mark, even though it would support a passing off action, is not necessarily registrable. This is the theme of Lord Parker's speech in W. and G. du Cros Ld (supra). As I have indicated, Lord Parker's speech was concerned immediately with the Trade Marks Act 1905 (U.K.). Like the Australian Trade Marks Act 1905 s. 16, the 1905 United Kingdom Act (in s. 9) did not in terms speak of "inherent" capacity of adaptation to distinguish and used only the phrase "adapted to distinguish". But in Smith, Kline and French Laboratories Ltd v Sterling-Winthrop Group Ltd (1976) RPC 511 at 538-539, Lord Diplock referred to the appearance of the term "inherent" adaptability to distinguish in sub-s. 9 (3) of the Trade Marks Act 1938 (U.K.) (which resembles sub-s. 26 (2) of the present Australian legislation) and said:

"The reference to inherent adaptability would at first sight appear more apt where the mark has not already been used by the applicant in the course of his trade before the date of the application. However, long before the reference to inherent adaptability had been incorporated in the current statutes dealing with trade marks, it had been held upon grounds of public policy that a trader ought not to be allowed to obtain by registration under the Trade Marks Act a monopoly in what other traders may legitimately desire to use. The classic statement of this doctrine is to be found in the speech of Lord Parker in W. and G. case (1913) 30 RPC 660 at page 672 where he said that the right to registration should

'largely depend on whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods'. The reference to 'inherently adapted' in section 9 (3) of the Consolidation Act of 1938, which was first enacted in 1937, has always been treated as giving statutory expression to the doctrine as previously stated by Lord Parker."

In this country, Lord Parker's speech has been adopted in numerous decisions, including those of the Full High Court, dealing both with the 1905 Act and the present statute. See Thomson v B. Seppelt and Sons Limited (1925) 37 CLR 305 at 312 (the "Great Western" Case); Mangrovite Belting Limited v J.C. Ludowici and Son Limited (1938) 61 CLR 149 at 160-161; Eclipse Sleep Products Incorporated v The Registrar of Trade Marks (1957) 99 CLR 300 at 310-313; Samuel Taylor Proprietary Limited v The Registrar of Trade Marks (1959) 102 CLR 650 at 657-658; F.H. Faulding and Co. Limited v Imperial Chemical Industries of Australia and New Zealand Limited (the "Barrier Cream" Case) (1965) 112 CLR 537 at 555; Bayer Pharma Pty Limited v Farbenfabriken Bayer AG (1965) 120 CLR 285 at 332-333; Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 (the "Michigan" Case); Burger King Corporation v The Registrar of Trade Marks (supra). The last two of these decisions concern unsuccessful attempts to obtain registrations in Part B of the Register; each is a decision of one Justice of the High Court. The others are Full Court decisions, and none is directed to Part B.
The effect of these authorities appears from what was said by Kitto J. (with the concurrence of Barwick C.J. and Windeyer J.) in the Barrier Cream Case, supra at 555:

"(T)he question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use upon or in connexion with their goods."

If a trade mark has the characteristics described by Kitto J., then it will not be "adapted to distinguish" within the sense of the legislation, although it may be distinctive as a common law trade mark. I have already set out s. 26 of the present legislation.
Earlier in his judgment in the Barrier Cream Case (supra at 554), Kitto J. said of the phrase "adapted to distinguish" in sub-s. 26 (1) of the Trade Marks Act:

"Whether (a trade mark) is so adapted is a question upon which regard may of course be had to the extent to which the word has come in fact to distinguish the goods of the appellant from those of other persons: see s. 26 (2) (b) of the present Act; but even if it has acquired distinctiveness by use it is still not distinctive, in the sense which justifies registration, if it is inherently unadapted to distinguish the goods of the proprietor from those of other persons: see s. 16 (2) of the former Act, s. 26

(2) (a) of the present Act, and the Yorkshire Copper Works Case, (1954) 71 RPC 150."

It will be recalled that in the Barrier Cream Case, the trade mark "BARRIER" which had been registered and used for more than twenty years in relation, inter alia, to skin protective creams was removed from the Register as having been wrongly registered and the mark's inherent lack of adaption to distinguish precluded the registered proprietor from relying upon ss. 60 and 61 of the Trade Marks Act as protecting the registration by reason of its duration. protecting the registration by reason of its duration.
In Eclipse Sleep Products Incorporated v The Registrar of Trade Marks (1957) 99 CLR 300, Dixon C.J., Williams, Kitto JJ., after (at 310) setting out a passage from Lord Parker's speech, said (at 313) that it was clearly established "that distinctiveness in fact is not conclusive and that inherent adaptability to distinguish, of which the fact that the mark has proved to be distinctive in use is but evidence, is the true test . . .". Their Honours cited the Yorkshire Copper Case (supra) as authority for that proposition.
The presence of the word "may" in sub-s. 26 (2) has been construed as importing a discretion to disregard the effect of actual use relied upon by the applicant where, for example, the applicant, in trading as it has done, has acted in breach of obligations to another party or otherwise unfairly: Bayer Pharma Pty Limited v Farbenfabriken Bayer AG (supra) at 314, 344. But, in general, the position under s. 26 is that a trade mark is not distinctive unless it is adapted to distinguish and regard will be had "to the extent to which" the trade mark has the two characteristics spelled out in sub-s. 26 (2), that is to say "inherent" adaption to distinguish and distinctiveness in fact. The two factors should be weighed, but even if use has rendered a trade mark distinctive in fact it will fail to obtain registration if the trade mark still does not display inherent adaption to distinguish: Burger King Corporation v The Registrar of Trade Marks (1973) 128 CLR 417 at 426.
The concept, central to s. 26, of adaption to distinguish, is less difficult to grasp once it is appreciated that the statute is looking forward to the consequences of a grant of registration. The point was made by Isaacs J., with reference to sub-s. 16 (3) of the 1905 Act, in Thomson v B. Seppelt and Sons Limited (1925) 37 CLR 305 at 312:

"(T)o be 'distinctive' (the mark) must comply with the statutory definition of distinctiveness in (sub-s. 16 (2) ), namely it must be 'adapted to distinguish the goods of the proprietor of the trade mark from those of other persons'. The statutory criterion looks wholly to the future, and seeks to know 'What will be the effect of the mark after registration?' Is it adapted in future trade to distinguish the proprietor's goods from those of other persons? That, however, does not mean 'is the word adapted to acquire distinctiveness?' but 'is the word instantly adapted to distinguish the proprietor's goods in his future trade?' . . . That must in all fairness be so, because otherwise it would be enlisting registration itself as an aid in making a mark actually distinctive, and so preventing partly by statutory assistance other traders from using the mark if they so desired. (See Lord Parker's judgment in Registrar of Trade Marks v W. and G. du Cros Ltd (1913) AC at page 634). In determining that question (sub-s. 16 (3) ) allows the past effect of actual user to be taken into consideration as an aid in determining the present adaptability of the mark to future. But that is the sole function of the past user."

This passage was approved by Taylor and Owen JJ. in Bayer Pharma Pty Limited v Farbenfabriken Bayer AG (1965) 120 CLR 285 at 332-333; see also Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514 per Kitto J. Section 16 of the 1905 Australian Act (to which Isaacs J. referred) resembled s. 9 of the 1905 British Act. The Australian section stated:

"16. (1.) A registrable trade mark must contain or consist of at least one of the following essential particulars:

(a) The name of a company, individual, or firm represented in a special or particular manner;

(b) The signature of the applicant for registration or some predecessor in his business;

(c) An invented word or invented words;

(d) A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;

(e) Any other distinctive mark, but a name, signature, or word or words, other than such as fall within the descriptions in the above paragraphs (a),

(b), (c) and (d) shall not, except by order of the Registrar, Law Officer, or Court, be deemed a distinctive mark.

(2.) For the purposes of this section "distinctive" means adapted to distinguish the goods of the proprietor of the trade mark from those of other persons.

(3.) In determining whether a trade mark is so adapted, the Registrar, Law Officer, or Court may, in the case of a trade mark in actual use, take into consideration the extent to which such user has rendered such trade mark in fact distinctive for the goods with respect to which it is registered or proposed to be registered."

Thus, as I have said, there was no express reference to "inherent" adaptation to distinguish as there is in sub-s. 26 (2) of the present statute, but the earlier statute was read as if this had been so.

It is plain from the passage quoted from the judgment of Isaacs J. and from the series of later High Court judgments to which I have referred, dealing both with the 1905 Act and the present statute, that the question of whether a particular trade mark is adapted to distinguish in the statutory sense is not to be determined solely by having regard to the past user of the trade mark. I would not regard proposition (3) in the passage which I have set out earlier from Muller's Case (supra at 42) as intended to overthrow this established position. It may be that what is there said has to be understood as concerned with Part B registration, something suggested by the use of the phrase "capable of becoming distinctive". In any event, proposition (3) was not essential to the decision in Muller's Case the thrust of which is to emphasise that distinctiveness of a trade mark is an essential qualification for registration in Part A. The Court was concerned not to relax any requirement of distinctiveness; see, in particular, Muller's Case, (supra at 44).
That is not to deny that the effect of actual user, in some cases, may be essential as an aid in determining the adaptability of a trade mark to serve in the future as a distinguishing symbol of a trader's goods. Sub-section 24 (2) makes the point as regards names, signatures and words not being described in paras. (a), (b), (c) or (d) of sub-s. 24 (1). Bayer Pharma Pty Limited v Farbenfabriken Bayer AG (supra) provides an example. The mark which displayed the word "Bayer" in a particular cross device was put forward as a distinctive trade mark not being a name, signature or word falling within any of the paragraphs (a) to (d) inclusive of sub-s. 16 (1) of the 1905 Act. Barwick C.J. (120 CLR at 320) said:

"In my opinion, the mark was not inherently adapted to distinguish the appellant's goods. But it was a mark in actual use by the appellant at the time of its applications for registration. Consequently, the extent to which its user had rendered the mark distinctive could be taken into consideration when determining whether at the date of those applications it was adapted thenceforth to distinguish the goods of the appellant."

His Honour's conclusion appears at 325:

"The appellant has wholly failed to convince me that in 1949 the mark - the Leverkusen Bayer Cross - was adapted either inherently or because of any user of it which the appellant had made to distinguish the goods of the appellant from the goods of other persons. It was not then distinctive of the goods of the appellant."

Taylor and Owen JJ. (at 333) said:

"To our minds it is impossible to say that the name 'Bayer' is, in the circumstances disclosed by the evidence, inherently adapted to distinguish the appellant's goods and the evidence concerning the actual user of the mark, or name, by the appellant signally fails to establish that at the time of the lodging of the applications the mark had, in fact, become distinctive of the goods in respect of which registration was sought."

Menzies J. (at 342) agreed that the user of the Leverkusen Bayer Cross in Australia in the period from 1939 to 1949 did not render it distinctive in Australia of the respondent's goods. Windeyer J. (at 343) agreed with the judgment of Taylor and Owen JJ.

The judgments in this case, both at first instance, before Kitto J., and on appeal, also illustrate the points that (1) user by an applicant for registration may not have rendered the mark distinctive because of the reputation enjoyed by a rival trader who opposes the grant of registration, and (2) by reason of those very facts, the applicant's user of the mark also will be likely to deceive or cause confusion. That emerges plainly from what was said by Kitto J. (120 CLR at 314), Taylor and Owen JJ. (supra at 335), Menzies J. (supra at 342) and Windeyer J. (supra at 344). Hence, the force of Kitto J.'s observation (supra at 303) that "(t)he questions of distinctiveness and absence of a likelihood of deception tend to run into one another". The observation is one of some significance in trade mark law. In some cases questions of distinctiveness and deceptiveness will be discrete. In others they will over-lap.
The essential point for the present appeal remains, namely that there are some trade marks no amount of user of which can serve to distinguish the goods with which the applicant is connected in the course of trade from those in respect of which no such connection subsists.
So it was that although the word "Michigan" had been extensively used by the applicant for more than twenty years in relation to earthmoving and like equipment such that there was widespread recognition of that word as distinguishing the goods of the applicant from the goods of other persons, nevertheless that was not enough to make the mark "adapted to distinguish" for the purposes of sub-s. 26 (1) of the Trade Marks Act; see Clark Equipment Company v Registrar of Trade Marks (supra at 513).
The essential issue in the present appeal is whether "OXFORD" when used as a trade mark in relation to printed publications falls within this category.
In the Supreme Court, King J. referred to authority which established that in a case such as the present, the burden was on the applicant for registration to show that the mark should be registered, and that if the matter was left in doubt, the application should be refused. See Eclipse Sleep Products Incorporated v The Registrar of Trade Marks (1957) 99 CLR 300 at 314-316. King J. then expressed his conclusions as follows:

"It would have been useful to have had evidence before me as to whether the categories of goods in respect of which registration is sought are produced in the town of Oxford by anyone other than the appellant. As the burden of proof is on the appellant it would be for it to furnish evidence on this point. . . . The further question whether such categories of goods may in the future be produced in the town of Oxford by someone other than the appellant also has not been the subject of evidence. . . . Disregarding the trade mark reputation of the word "OXFORD" I think that the relevant facts are that Oxford is a University town, i.e. it is a complex of town and University, and that the University is of high world-wide repute and is known in Australia to be a place of intensive scholastic activity. Whilst such activity results and is known to result in the creation of learned works and their publication to the world I should not, I think, assume that the University is the only entity in or near the town of Oxford which records such words for publication in the form of printed publications. . . . I see no reason for assuming that the University monopolises or will monopolise such acts of recording information in Oxford, or will be considered in Australia to do so. It may be that organisations have already come into existence in and around Oxford which supplement the activities of the University in this way or that they will come into existence for this purpose. . . . Not only is there no evidence to the contrary, but I think that on the basis of the matters of which I can take notice such possibilities arise to a substantial extent.

My conclusion therefore is that on the face of it persons in Oxford other than the appellant might well be carrying on the industry of producing printed publications . . . and might be expected to do so in the future. They might well also wish to advertise their goods in Australia as originating in Oxford . . ."

Counsel for the University sought to displace this conclusion and the authorities which indicated this was an appropriate approach to the matter, in various ways. He referred to the circumstance that a number of the decisions were concerned with unsuccessful attempts to obtain registration for words which were laudatory or otherwise descriptive of the goods in question. Counsel submitted that as regards geographical names, there were not the same inhibitions upon granting registration. He prayed in aid the observations of Sargant J. in In re Berna Commercial Motors Limited (1915) 1 Ch 414 at 420. His Lordship there said:

"It is quite clear that the Trade Marks Act, 1905, does contemplate the registration of certain geographical names, and I cannot see that geographical names are in themselves put in the same category of qualification or disqualification as laudatory epithets. The latter, in my opinion, are in a totally different class, because necessarily they cannot have acquired a simple secondary signification and also because it must always be open to tradesmen to apply laudatory epithets to their own goods, and it would be monstrous to deprive them of the privilege of so describing their goods in competition with rival traders."

However, in the same passage, his Lordship proceeded to qualify what he had said by adding:

"But I by no means intend to say that all geographical names are necessarily proper to denote goods. For instance, it would be hopeless to apply for the registration of 'Leicester' in connection with boots or of 'Burton' in connection with ales."

Subsequent decisions both in the United Kingdom and in Australia in which effect has been given to the remarks of Lord Parker in the W. and G. Case (1913) 30 RPC 660 at 672, have involved geographical names, surnames and laudatory or descriptive terms. Whilst each case has had to be assessed on its own facts, the decisions do not suggest that the general terms in which Lord Parker expressed his views are to be differently treated in their application to two sub-categories, namely geographical names (and surnames) and descriptive terms. The point appears sufficiently from the passage I have earlier set out from the speech of Lord diplock in Smith Kline and French Laboratories Ltd v Sterling-Winthrop Group Ltd (1976) RPC 511 at 538-539. Nor is there substance in the submission that an applicant who can show "100% distinctiveness in fact" is to be treated more favourably than one who can show sufficient reputation to support a passing-off action but no more. The authorities which I have discussed have not proceeded on this footing.
As Lord Diplock pointed out in the above passage, the question is whether the applicant in a particular case ought not to be allowed to obtain by registration a monopoly in what other traders may "legitimately desire to use". Counsel for the University fixed upon the term "legitimately" in this and other passages and the expression "in the ordinary course of their businesses and without any improper motive", in, for example, the judgment of Kitto J. in the Barrier Cream Case (1965) 112 CLR 537 at 555, set out earlier in these reasons. Counsel then submitted that a trader would be acting with an improper motive and thus would not be acting legitimately, if, in respect of a geographical name for which another trader had achieved "100% distinctiveness", the trader sought to use that geographical name as a trade mark upon goods manufactured at that place. Counsel relied upon what was said by Eve J. in In re H.G. Burford and Co. Limited's Application (1919) 2 Ch 28 at 48-49:

"(T)he word 'Burford' having already become distinctive of the goods manufactured by the applicants, no honest manufacturer - and it is of course only the honest manufacturer who has to be protected - could in the future apply the same appellation to his goods, whether the word is registered or not. It is not therefore by registration, but by the state of things by which the word has already become distinctive of the applicant's goods that the future manufacturer is debarred from adopting the same word for his goods. In short, registration will, in my opinion, put him in no more unfavourable position in this respect than he is in already by reason of the accomplished fact which is the very foundation of the application."

Eve J. had been the trial judge whose decision upholding the refusal of the Comptroller-General barring registration was ultimately upheld by the House of Lords in the W. and G. Case (1913) 30 RPC 660. In In re H.G. Burford and Co. Limited's Application (supra), decided in 1919, Eve J. did not refer to the House of Lords' decision, although the Master of Rolls did so (supra at 38). It also has to be borne in mind that Eve J. was speaking at a time before the series of decisions in the United Kingdom in which registration was refused, even where the applicant had demonstrated "100% distinctiveness in fact". The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration; see Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 515-516.
Counsel for the University then submitted that if registration were permitted, the interests of other traders would be sufficiently protected by para 64 (1) (a) of the Trade Marks Act. This provides that the use in good faith by a person of his own name or the name of his place of business, or the name, or the name of the place of business, of any of his predecessors in business, does not constitute an infringement of a trade mark. Similar provisions are found in Trade Marks Act 1938 (U.K.E s. 8, and Trade Marks Act 1905 (U.K.) s. 44. It was submitted that, on a true construction of the legislation, these provisions would have been unnecessary if, contrary to the University's contention, a geographical name was inherently not adapted to distinguish the applicant's goods in any case where those goods were produced at the place in question, or it was reasonable to suppose that such goods might in the future be produced there. Such a mark would not have been registrable and there would be no call for the operation of any special defence to infringement.
An argument to similar effect, based upon s. 44 of the 1905 British Act, was put to the House of Lords and rejected in the Glastonbury Case (1938) 55 RPC 253. Lord Maugham L.C. said (at 259):

"Section 44 of the Act is by no means a sufficient answer to the argument that a trader, who carries on business in the manufacture and sale of the goods or some of the goods included in the class for which registration has been obtained, is likely to be caused substantial difficulty in carrying on his business if the name of his town is registered as a trade mark, and that confusion is likely to be caused by his use of the name. A number of examples might be given. . . . In short, I am unable to see why the Respondents in the circumstances which exist in this case should be allowed to gain such a monopoly in respect of the word 'Glastonbury' as might place a trader in Glastonbury desirous of making a perfectly honest use of the word in a position of grave difficulty and might cause confusion in the minds of purchasers."

Lord Atkin said (at 260):

"I do not find it necessary to invoke Section 44, the object of which appears to be to give protection to traders in respect of a name which is registered and must be treated as adapted to distinguish, and not to afford a guide as to whether a name should be registered or not."

In Yorkshire Copper Works Limited's Application (1954) 71 RPC 150 at 154, Lord Simonds L.C. spoke to the same effect. Further, para 64 (1) (a) of the Trade Marks Act has its own difficulties of interpretation, as appears from the views expressed in this Court in Angove's Pty Ltd v Johnson (1982) 66 FLR 216 at 224, 229, 243-248.

Counsel for the University referred to various decisions under the 1905 British Act which he said showed that there was no absolute prohibition upon the registration of geographical names. The decisions were In re National Starch Company's Application (1908) 2 Ch 698 (the "Oswego" Case); In the matter of an Application by the Itala Fabbrica Di Automobili (1910) 27 RPC 493 (the "Itala" Case); In re Berna Commercial Motors Limited (1915) 1 Ch 414 (the "Berna" Case) and In the matter of the Application by the Shields Ice and Cold Storage Co. Ltd (1923) 40 RPC 197. It should be observed that the last of these cases involved an application not for the geographical name "Tyne", but for the words "Tyne Brand". Eve J. said (40 RPC at 199) that:

"I think on the whole, notwithstanding that the word 'Tyne' does no doubt denote the place of origin and an important place, the mark is not so essentially geographical to justify me in stopping the registration from proceeding."

The other three decisions all proceeded on the footing that the words in question were not words which according to their ordinary signification were geographical names within the meaning of s. 9 of the 1905 British statute, this being the forerunner of para 16. (1.) (d) of the Australian 1905 Act and of para. 24 (1) (d) of the present legislation. In these cases, the crucial question was whether there was sufficient evidence of distinctiveness so as to satisfy sub-s. 9 (5) of the 1905 British statute.

Further, the line of cases in the United Kingdom and in Australia which apply Lord Parker's reasoning to the Trade Marks legislation as it has existed from time to time, do not support the proposition that geographical names may never be registered. Nor is it the case that no surname may ever be registered; see Cassini v Golden Era Shirt Company Pty Ltd (1985) 82 FLR 236 at 254-257. As to the adaptability of geographical names to distinguish goods of one trader from those of other traders, the answer may lie in the apparent paradox put by Lord Simonds L.C. in the Yorkshire Copper Case, supra at 154, namely that "the more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them: for a word that is apt to describe the goods of A, is likely to be apt to describe the similar goods of B". His Lordship said that it was for this very reason that a geographical name was prima facie denied registrability. The example of a registrable mark "North Pole" for bananas appears to have originated in the submissions of counsel for the respondents in the Glastonbury Case (1938) 55 RPC 253 at 256. This was taken up by Lord Maugham L.C. in his speech (at 257) as an example of the use of a geographical name "dislocated, or disconnected from the origin of the goods . . .". The example was used again by Lord Asquith of Bishopstone in the Yorkshire Copper Case (supra at 156).
Finally, counsel for the University submitted that the line of British cases upon the 1905 Act turned upon the existence of a discretion in the Registrar to refuse registration of marks otherwise satisfying the criteria for registration specified in the legislation. The content of this discretion is not readily apparent: see the discussion in "Kerly's Law of Trade Marks and Trade Names", 10th Ed., 1972; 11th Ed., 1983; and 12th Ed., 1986, paras. 4.07-4.10. In any event, in the Glastonbury Case, supra at 260, Lord Atkin said:

"It matters little whether one says that in the circumstances the word was incapable of being adapted to distinguish, or that in the exercise of his discretion the Registrar should refuse to register. I myself prefer to say that in circumstances like the present where an applicant seeks to

register the name of the town in which

both he and competitors with himself are engaged in manufacturing the same class of goods the name is incapable of being adapted to distinguish. It should at the outset be considered unregistrable."

In my view, the various submissions for the University seek to displace the line of authority which governs the issue in this case. As I have said, if the Court is in doubt as to the likelihood of another trader legitimately wishing to use the mark, within the sense of the authorities, the application should be refused. As King J. held, the University has not established the absence of persons who would or would be likely legitimately to wish to supply publications from Oxford, using the word "OXFORD" upon or in connection with their publications.
In my view, the appeal in its entirety should be dismissed with costs.

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Citations

The Chancellor Master & Scholars of the University of Oxford trade as Oxford University Press & Anor v. The Registrar of Trade Marks [1990] FCA 251 (24 FCR 1)

Most Recent Citation

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Statutory Material Cited

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[1990] FCA 251

01 JUNE 1990