R v Quinn; Ex parte Consolidated Foods Corporation

[1977] HCA 62

HIGH COURT OF AUSTRALIA

Barwick C.J., Gibbs, Stephen, Mason, Jacobs, Murphy and Aickin JJ

THE QUEEN v. QUINN; Ex parte CONSOLIDATED FOOD CORPORATION.

(1977) 138 CLR 1

30 November 1977

Constitutional Law (Cth)

Constitutional Law (Cth)—Judicial power of the Commonwealth—Trade mark—Statute empowering court or registrar to order removal from register—Whether judicial or administrative power—The Constitution (63 &64 Vict. c. 12), ss.76 (ii.), 77 (iii.)—Trade Marks Act 1955 (Cth), s. 23 (1).

Decisions

November 2.
The following written judgments were delivered:-
BARWICK C.J. I have had the advantage in this application of reading the reasons for judgment prepared by my brother Jacobs. The relevant statutory provisions, basic facts and the submissions of the applicant are there set out. (at p6)

2. I agree with the conclusion that the power given to the Registrar of Trade Marks by s. 23 (1) of the Trade Marks Act 1955 (Cth), as amended, to remove a trade mark from the Register of Trade Marks for either of the reasons set out in par. (a) or (b) of that sub-section is not in the hands of the Registrar any part of the judicial power of the Commonwealth. It is, in my opinion, authority of an administrative nature when exercisable or exercised by the Registrar. The determination by the Registrar of such facts which, if they exist, furnish a warrant for the exercise of the power of removal does not involve the Registrar in the exercise of such judicial power however much the Registrar must act judicially in making that determination. The power to remove the mark in the given circumstances is not of a different order or nature, in my opinion to the power given to the Registrar to enter the mark in the register after an unsuccessful opposition. (at p6)

3. Such powers of entering and removing are not of their nature essentially judicial. Indeed, in my opinion, they are essentially administrative. The intention of the Parliament in giving the power to the Registrar is not, in my opinion, a determinant in deciding the nature of the power, though the nature of the body or person to whom it is entrusted is an element in making such a decision. It does not follow that if a like power exercised by a court or by the Appeal Tribunal would be part of the judicial power of the Commonwealth the same power exercisable by the Registrar would be of a like nature. (at p6)

4. It was urged that rights are conferred by registration which are or may be lost by the removal of the mark from the register. Hence it is said a decision to remove, even if made by the Registrar, exhibits essential features of the exercise of judicial power. But, as my brother Jacobs points out, these are not rights of that kind. The rights thus assigned are derived from the very statute which gives the Registrar the power of removal from the register. They are rights given subject to a power of modification or destruction under the provisions of the statute itself. (at p6)

5. In summary, the Registrar's authority, in my opinion, is in his hand of its nature administrative and the rights flowing from registration of the trade mark are statutory, conditioned upon all the provisions of the statute which may affect them. The possession by a court of a like power is not enough to warrant a conclusion that the Registrar's power of removal of the mark should be held to be part of the judicial power of the Commonwealth. (at p6)

6. I agree generally with the reasons given by my brother Jacobs for the conclusion that this application should be refused and the order nisi discharged. (at p6)

GIBBS J. The power which is conferred on the Registrar of Trade Marks by s. 23 of the Trade Marks Act 1955 is not a judicial power, and in legislating so as to invest the Registrar with that power the Parliament has not contravened the Constitution. I have had the advantage of reading the reasons which Jacobs J. has given for reaching this conclusion, and agree with them. I would only add one remark. Jacobs J. has pointed out that it is unnecessary to decide whether the power which s. 23 (1) conferred on the High Court - and now confers on a prescribed court: Trade Marks Amendment Act 1976 - is judicial in character. In Farbenfabriken Bayer A.G. v. Bayer Pharma Pty. Ltd. (1959) 101 CLR 652, at pp 659-660 , Dixon C.J. said:

"The decision of the Privy Council as well as of this Court in the case of the Shell Oil Company (1930) 44 CLR 530; (1931) AC 275 and in this Court British Imperial Oil Co. Ltd. v. Federal Commissioner of Taxation (1926) 38 CLR 153 is enough to show that words which might otherwise be sufficient to confer judicial power may be governed by the context as well as by the character of the body or person upon whom the power is conferred and may be construed as going no further than granting administrative power."

In Reg. v. Joske; Ex parte Australian Building Construction Employees, &Builders' Labourers' Federation (1974) 130 CLR 87, at p 99 I said that the same result might validly be achieved either by the exercise of administrative power or by the exercise of judicial power. The fact that the grant of power is contained in one compendious section does not mean that the nature of the power must remain the same although the character of the functionary called on to exercise it is different. As at present advised, I consider that by s. 23 the Parliament intended to confer judicial power on the court and administrative power on the Registrar and that the section is entirely valid. (at p6)

2. I agree that the order nisi should be discharged. (at p7)

STEPHEN J. I agree that the order nisi should be discharged for the reasons given by Jacobs J. (at p7)

MASON J. I agree that the order nisi should be discharged for the reasons given by Jacobs J. (at p7)

JACOBS J. Section 23 (1) of the Trade Marks Act 1955 (Cth) provides:

"23. (1) Subject to this section and to section ninety-three of this Act, the High Court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods in respect of which it is registered, on the ground - (a) that the trade mark was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those goods by him or, if it was registered under sub-section (1) of section forty-five of this Act, by the body corporate or registered user concerned, and that there has, in fact, been no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being earlier than one month before the application; or

(b) that, up to one month before the date of the application, a continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being." (at p7)

2. The Registrar of Trade Marks, the first respondent, on 15th March 1977, granted an application made to him by the second respondent that a trade mark of which the applicant was the registered proprietor be removed from the register in respect of certain of the goods for which it was registered. The Registrar was satisfied that the ground set out in s. 23 (1) (a) was established. He refused an application for removal based on the ground set out in s. 23 (1) (b). (at p7)

3. This is an application to make absolute an order nisi for prohibition against the Registrar of Trade Marks upon the ground that -

"Section 23 of the Trade Marks Act 1955 is invalid in so far as it purports to authorise the first respondent to order the removal of a trade mark from the Register in respect of any of the goods in respect of which it is registered because the discharge of such a function is an exercise of the judicial power of the Commonwealth and is incapable of exercise by the first respondent having regard to his tenure of office and the nature of his office." (at p8)

4. In Federal Commissioner of Taxation v. Munro Isaacs J. said (1926) 38 CLR 153, at p 175 :

"But there are many functions which are either
inconsistent with strict judicial action, as the arbitral functions in Alexander's Case (1918) 25 CLR 434 , or are consistent with either strict judicial or executive action. If inconsistent with judicial action, the question is at once answered. If consistent with either strictly judicial or executive action, the matter must be examined further."

And (1926) 38 CLR, at p 180 :

"Unless, therefore, it becomes clear beyond reasonable doubt that the legislation in question transgresses the limits laid down by the organic law of the Constitution, it must be allowed to stand as the true expression of the national will."

Both these passages were expressly approved by the Judicial Committee on the appeal. Shell Co. of Australia Ltd. v. Federal Commissioner of Taxation (1930) 44 CLR 530, at p 545; (1931) AC 275, at p 298 . Earlier in his judgment Isaacs J. had said (1926) 38 CLR, at pp 178-179 :

"...some matters so clearly and distinctively appertain to one branch of government as to be incapable of exercise by another. An appropriation of public money, a trial for murder, and the appointment of a Federal Judge are instances. Other matters may be subject to no a priori exclusive delimitation, but may be capable of assignment by Parliament in its discretion to more than one branch of government. Rules of evidence, the determination of the validity of parliamentary elections, or claims to register trade marks would be instances of this class. The latter class is capable of being viewed in different aspects, that is, as incidental to legislation, or to administration, or to judicial action, according to circumstances. Deny that proposition, and you seriously affect the recognized working of representative government."

If one does not deny that proposition and if one assumes that the power under s. 23 is in respect of a matter which cannot, in the words of Isaacs J., be subject to a priori exclusive delimitation (which assumption I shall presently consider) I think that it is plain that Parliament intended the power to be exercised by the Registrar to be an administrative power. Section 23 was passed before the decision in the Boilermakers' Case (1956) 94 CLR 254 (HC); (1957) 95 CLR 529; (1957) AC 288 (PC) . At the time it was well established that no person appointed by the Commonwealth who did not hold appointment for life could exercise a judicial power of the Commonwealth under s. 71 of the Constitution. It was not understood to be the law that the High Court could not exercise any power other than judicial power. In these circumstances I have no doubt that Parliament would have intended rather that this Court should exercise an administrative power than that the Registrar should exercise judicial power. However, it appears likely that on a true construction the intention was severable and distributive in the sense that the Court was to exercise judicial power and the Registrar administrative power. In the present case it is sufficient that the Registrar was intended to exercise no more than an administrative power. (at p9)

5. But what Parliament intended is not conclusive on such a matter. It is still necessary to determine whether the power is of a kind which is capable of being either judicial or administrative. The question whether the Parliament disclosed an intention that the power be administrative and the question whether the power is capable of being administrative, although they are distinct questions, involve a consideration of the legislation, its operation and effect. (at p9)

6. The Parliament has determined that there should be a Trade Marks Office (s. 12) under the chief control of a Registrar of Trade Marks (s. 10) and that at the Trade Marks Office there should be kept a Register of Trade Marks (s. 14). By Pt IV of the Act it is provided what marks are to be registrable in the different parts of the register, and then by Pt V provision is made for "Applications for Registration", and by Pt VI for "Opposition to Registration". Part VIII provides for "Renewal of Registration", Pt IX for "Registered Users", Pt X for "Assignment of Trade Marks" and Pts XI and XII for "Certification Trade Marks" and "Defensive Trade Marks" respectively. (at p9)

7. I entertain no doubt that the Parliament can set up administrative machinery for registration of trade marks and can determine what should be allowed to be entered on the register. It could do this directly by a simple provision for registration by lodgment of particulars or it can do it indirectly by requiring a Commonwealth officer to determine whether the conditions exist which the Parliament has prescribed for a trade mark to be entered on the register. The determination of the facts, the existence of which Parliament has prescribed as a condition of the exercise of the administrative function of registration, is not necessarily the exercise of judicial power. The nature of the determination is not altered by the circumstance that an opportunity is given to others, who are strangers to the application, to be heard on the determination of those facts. (at p10)

8. However, it is said that, even though a determination that a trade mark should be registered may be an exercise of administrative power, a determination that a trade mark should cease to be registered is necessarily an exercise of judicial power. The argument in favour of a view that an exercise of judicial power is involved must depend upon the existence in the legislation of provision for rights in the proprietor springing from registration (Pt VII - Registration and Effect of Registration) and disabilities in other persons as a result of the registration (Pt XIII - Protection of Trade Marks). That, it is said, means that a determination to rectify the register affects existing rights and is a determination of those rights. (at p10)

9. There is no doubt that the determination of these matters can be the subject matter of judicial power if Parliament chooses to make them so (Farbenfabriken Bayer A.G. v. Bayer Pharma Pty. Ltd. (1959) 101 CLR 652 ), as it has done in the nomination of the Appeal Tribunal. But are they necessarily the subject of judicial power, so that they fall within the first class of case in the classification made by Isaacs J.? I do not think so. The rights involved spring from the statute which governs their creation and continuance. The Registrar is given the administration of the statute. It is his administrative duty to keep the register in the state which the legislature has prescribed. In so doing he must make decisions not only upon what should or should not be placed but also upon what should remain on the register in accordance with the statutory prescriptions. (at p10)

10. The applicant has been able to point to many features of the Registrar's function under s. 23 which are commonly features of an exercise of judicial power and submits that the cumulative force of those features compels a conclusion that the power is judicial. Since the power, when exercised on an appeal (so called) under s. 23 (7), is a judicial power, it is to be expected that there will be an accumulation of features which can often be taken to indicate that a power is a judicial power. But the question is whether the features are inconsistent with the power, when it is vested in an administrative officer, being an administrative power; and the answer is that none of the features is exclusively related to judicial power and they are therefore not inconsistent with administrative power. (at p10)

11. The application to the Registrar under s. 23 (1) is initiated by a person "aggrieved" and therefore there will be a dispute on the hearing of the application between that person and the registered proprietor; but many administrative decisions are made after an opportunity is given to opposed interests to appear and be heard. Town planning decisions provide one example, industrial awards another. Next, it is said that the Registrar's order, which he himself carries into effect by alteration of the register, is a final order; but here again many administrative decisions are final in the sense that they have a binding force. Such a feature is not conclusive. And the same may be said of all the other features relied on - the so-called "trappings" of curial decision-making, the nature of the discretion or duty imposed by s. 23 on the Registrar, the complexity of legal and factual questions which may arise, the degree to which rights defined by the statute are affected by the Registrar's decision. They may be suggestive of, but they are not exclusive to, judicial power. (at p10)

12. Then it is said that historically an order for the removal of a trade mark from the register has been regarded as the exercise of judicial power, and for this reason must continue to be so regarded. See Trade Marks Act 1905 (Cth); Trade Marks Act 1890 (Vict.), s. 8; The Designs and Trade Marks Act, 1884 (W.A.), s. 43. See also Trade Marks Registration Act, 1875 (Imp.), s. 5, and the rules made pursuant to s. 7; Patents, Designs, and Trade Marks Act, 1883 (Imp.), s. 90; Trade Marks Act, 1905 (U.K.), ss. 35 and 37. The last-mentioned Act contains the first specific provision for removal of a trade mark for non-use. The Trade Marks Act, 1938 (U.K.) for the first time by ss. 26, 32 and 54 reposed the function of ordering removal in other than a Court. (at p11)

13. The historical approach to the question whether a power is exclusively a judicial power is based upon the recognition that we have inherited and were intended by our Constitution to live under a system of law and government which has traditionally protected the rights of persons by ensuring that those rights are determined by a judiciary independent of the parliament and the executive. But the rights referred to in such an enunciation are the basic rights which traditionally, and therefore historically, are judged by that independent judiciary which is the bulwark of freedom. The governance of a trial for the determination of criminal guilt is the classic example. But there are a multitude of such instances. One of them has been held to be the determination of a status of a person whereby the right to recover money owing by that person is barred: Reg. v. Davison (1954) 90 CLR 353 . (at p11)

14. On the other hand the course of legislation in comparatively recent times does not, in itself, provide a foundation for the historical approach. If the legislation requires the exercise of a power to determine questions the determination of which will affect what are traditionally regarded as basic legal rights, the judicial nature of the power springs from the effect which the exercise of the decision-making function under the legislation will have upon the legal rights rather than from the history of similar legislation reposing the function in a judicial tribunal. (at p12)

15. The right to have a trade mark remain upon a register is not such a right as I have described. It is true that certain consequential rights flow from registration by virtue of the provisions of Pts VII and XIII, but they are of a very limited kind. Registration is not itself conclusive of the right to the exclusive use of a trade mark. The original registration must have been a valid registration before the right to exclusive use can be maintained because the register may be rectified by a court at any time (s. 22); and the primary test of validity is distinctiveness (ss. 24-26). After seven years the registration is conclusive of the validity of the registration, except in certain limited circumstances (s. 61); but such a provision is in substance a provision for limitation of action challenging the validity of the initial registration, particularly the distinctiveness of the mark at the time of first registration. It does not alter the fact that registration is not itself conclusive of validity nor does registration, or lack of registration, itself affect the right of a person in trade or business to distinguish his goods from those of another or others by the use of a particular mark and to prevent others from using such a distinctive mark in their trade or business. The law relating to passing off is not substantively altered. In these circumstances the historical argument has not the necessary foundation. (at p12)

16. I would for these reasons discharge the order nisi. (at p12)

MURPHY J. The fact the judiciary has traditionally exercised a power which would otherwise have been regarded as administrative suggests that the conferring of the power on the federal courts is not inconsistent with the separation of powers in the Constitution. It does not follow that, despite such a tradition, the power cannot constitutionally be conferred on the executive branch of government. I agree with Jacobs J.'s conclusions. In s. 23 of the Trade Marks Act 1955, Parliament has constitutionally conferred power on the Registrar of Trade Marks to order removal of a trade mark from the register. (at p12)

2. The order nisi should be discharged. (at p12)

AICKIN J. This is the return of an order nisi for a writ of prohibition directed to the Assistant Registrar of Trade Marks prohibiting him from proceeding further upon his orders of 15th March 1977 made under s. 23 (1) of the Trade Marks Act 1955-1976 ("the Act") on applications by the respondent Q.U.F. Industries Ltd. for removal of Trade Mark No. A255623 from the Register of Trade Marks. (at p13)

2. The prosecutor, Consolidated Foods Incorporated, had since 1973 been the registered proprietor of Trade Mark No. A255623 in respect of "frozen confections" and "concentrates for making frozen confections". An application was made to the Registrar of Trade Marks under s. 23 of the Act for removal of the mark from the Register of Trade Marks. (at p13)

3. Section 23 (1) is as follows:

"Subject to this section and to section ninety-three of this Act, the High Court or the Registrar may, on application by a person aggrieved, order a trade mark to be removed from the Register in respect of any of the goods in respect of which it is registered, on the ground - (a) that the trade mark was registered without an intention in good faith on the part of the applicant for registration that it should be used in relation to those goods by him or, if it was registered under sub-section (1). of section forty-five of this Act, by the body corporate or registered user concerned, and that there has, in fact, been no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being earlier than one month before the application; or

(b) that, up to one month before the date of the application, a continuous period of not less than three years had elapsed during which the trade mark was a registered trade mark and during which there was no use in good faith of the trade mark in relation to those goods by the registered proprietor or a registered user of the trade mark for the time being." (at p13)

4. On 15th March 1977 the Assistant Registrar dismissed the application made under s. 23 (1) (b) but ordered under s. 23 (1) (a) that the mark be removed from the register in respect of "frozen confections" and that the statement of goods for which it is registered be restricted to "concentrates for making frozen confections". (at p13)

5. The affidavit in support of the order nisi shows that the solicitors acting for the prosecutor had been instructed to institute an appeal to the Supreme Court of New South Wales pursuant to s. 23 (7) of the Trade Marks Act 1976, as well as to apply to this Court for a writ of prohibition. That however is no basis for refusing prohibition where the Registrar's jurisdiction is challenged. (at p14)

6. It was argued for the prosecutor that the functions to be performed by the Registrar under s. 23 were of a strictly judicial character and therefore not capable of being conferred on the Registrar. For this proposition a number of separate grounds were advanced and they may be summarized as follows:
(1) There is involved a dispute between parties, i.e. between the "person aggrieved" and the registered proprietor of the mark, i.e. a lis inter partes properly so called.
(2) The Registrar's order is final in the sense that nothing further remains to establish the status of the mark.
(3) The proceedings have the characteristic pattern of judicial power in the sense that there must be a hearing with provision for the giving of evidence on oath and the production of documents and the Registrar must give his reasons.
(4) Such discretion as the Registrar possesses under s. 23 (1) is either governed by the other sub-sections or is a judicial discretion in the proper sense.
(5) The decision of the Registrar is not subject to collateral attack as a decision under s. 19 might be under s. 22.
(6) Section 23 requires both the Registrar and the Court to ascertain facts and to apply legal criteria to those facts. The Registrar is not free to achieve what he thinks is a correct policy, but must decide exactly the same question upon the same grounds as the Court.
(7) The Registrar's order affects and determines the rights of citizens in at least two ways. The registered proprietor may lose his rights and his property and the applicant may be released from the duty of obeying s. 58. It was said that the Trade Marks Act itself assumes that this change will be achieved by judicial power, see ss. 88 and 94.
(8) Under s. 23 the rights do not originate from the decision of the Registrar or the Court, but are determined by the application of legal criteria to the facts as ascertained.
(9) The history of the section shows that from the inception of the Trade Marks Act in England and in Australia the destruction or the withdrawal of industrial property rights granted by the Crown or by legislation has been treated as a matter for judicial power. In England the Trade Marks Act, 1875 gave the jurisdiction to remove marks from the register to the courts and likewise in the Patents, Trade Marks and Designs Act, 1883 (s. 90). The English Trade Marks Act, 1905 contained the first reference to removal for non-use and this power was given to the Court. It was not until the English Trade Marks Act, 1938 that the jurisdiction was given in the alternative to the equivalent of the Registrar or the Court. The pattern in Australia has been the same and it was not until the Trade Marks Act 1955 that the present s. 23 took the form of giving the power to revoke for nonuse to the Registrar or the Court at the option of the "person aggrieved". The history of the patent law shows that patents are revoked only by the exercise of judicial power though granted by the executive. (at p15)

7. This is a formidable list of factors which if viewed alone would point only in the direction of judicial power. It has proved impossible, at least so far, for any court to define judicial power and in substance all that the courts have been able to say towards a definition has been the formulation of negative propositions by which it has been said that no one of a list of factors is itself conclusive and perhaps the presence of all is not conclusive - see the decision of the Privy Council in Shell Co. of Australia Ltd. v. Federal Commissioner of Taxation (1930) 44 CLR 530, at p 544; (1931) AC 275, at p 297 . (at p15)

8. There are however other factors to be taken into account under the Act which are relevant to this question. The Act contains a number of provisions which give the Registrar or the Court, or sometimes both, the power to decide disputed matters which involve almost all the factors referred to above, other than the power to determine whether proprietary rights have been lost according to the operation of legislatively established criteria. This is exemplified by s. 19 which gives to the Registrar power to amend or alter the Register upon an application by the registered proprietor in a number of specified respects, and from a decision under that section an appeal lies to the Appeal Tribunal. A similar provision is contained in s. 20 which gives an appeal to the Appeal Tribunal from a decision of the Registrar refusing to register an assignment. Section 21 provides for an application to the Registrar for leave to alter a registered trade mark, for the Registrar to hear the applicant and any opponents with an appeal to the Appeal Tribunal from any decision of the Registrar. Section 22 gives to the High Court on application of a person aggrieved or of the Registrar jurisdiction to rectify the register in respect of matters which overlap those dealt with in s. 19. The distinction drawn between the High Court and the Appeal Tribunal was one which originally involved no difference because by s. 111 the High Court was the Appeal Tribunal, and whether by that name or by its own name it exercised its original jurisdiction as it did in the case of appeals under the Trade Marks Act 1905-1948 ("the 1905 Act"). (at p16)

9. The powers given to the Registrar, and to the High Court, by s. 23 certainly fall within the classic statement as to what is judicial power by Griffith C.J. in Huddart Parker &Co. Pty. Ltd. v. Moorehead that (1909) 8 CLR 330, at p 357 :

"... the words 'judicial power' as used in s. 71 of the Constitution mean the power which every sovereign authority must of necessity have to decide controversies between its subjects, or between itself and its subjects, whether the rights relate to life, liberty or property. The exercise of this power does not begin until some tribunal which has power to give a binding and authoritative decision (whether subject to appeal or not) is called upon to take action."

The Privy Council observed in Shell Co. of Australia Ltd. v. Federal Commissioner of Taxation (1930) 44 CLR, at p 542; (1931) AC, at p 295 that Griffith C.J.'s statement was "one of the best definitions" of judicial power, but their Lordships qualified that approval in Labour Relations Board of Saskatchewan v. John East Iron Works Ltd. where they said (1949) AC 134, at p 149 :

"Without attempting to give a comprehensive definition of judicial power, they accept the view that its broad features are accurately stated in that part of the judgment of Griffith

C.J. in Huddart, Parker &Co. Pty. Ltd. v. Moorehead

(1909) 8 CLR 330, at p 357 which was approved by this Board in Shell Co. of Australia Ltd. v. Federal Commissioner of Taxation (1930) 44 CLR, at p 542; (1931) AC, at p 295. Nor do they doubt, as was pointed out in the latter case, that there are many positive features which are essential to the existence of judicial power, yet by themselves are not conclusive of it, or that any combination of such features will fail to establish a judicial power if, as is a common characteristic of so-called administrative tribunals, the ultimate decision may be determined not merely by the application of legal principles to ascertained facts but by considerations of policy also."

Griffith C.J.'s statement has none the less proved to be both too wide and too narrow. Too wide because tribunals performing functions which fall precisely within that description have been held not to be exercising judicial power and too narrow because a proceeding involving only one party may involve an exercise of the judicial power of the Commonwealth. (at p16)

10. In Reg. v. Davison (1954) 90 CLR 353, at p 366 Dixon C.J. and McTiernan J. said: "Many attempts have been made to define judicial power, but it has never been found possible to frame a definition that is at once exclusive and exhaustive." Their Honours then set out the passage just quoted from the reasons of the Privy Council and then quoted other attempted definitions or descriptions as follows (1954) 90 CLR, at pp 368-370 :

"But to say that a thing may be done in the course of the exercise of judicial power is not to say that it may not be done without the exercise of judicial power. The legislature may commit some functions to courts falling within Chapter III although much the same function might be performed administratively. In the judgment of this Court in Queen Victoria Memorial Hospital v. Thornton (1953) 87 CLR 144, at p 151, the observation occurs: - 'Many functions perhaps may be committed to a court which are not themselves exclusively judicial, that is to say which considered independently might belong to an administrator. But that is because they are not independent functions but form incidents in the exercise of strictly judicial powers'. It is this double aspect which some acts or functions may bear that makes it so difficult to define the judicial power. The appointment of a new trustee may be regarded as something to be done in the course of the judicial administration of trusts or assets. But there is no reason why it should not be treated from another point of view and regarded as an act to be done by an administrative body authorized to exercise some governmental control, for example over public charities. An extreme example of a function that may be given to courts as an incident of judicial power or dealt with directly as an exercise of legislative power is that of making procedural rules of court. The proper attribution of this power is a matter that has received much attention in the United States: cf. Wayman v. Southard (1825) 10 Wheat. 1 (6 Law Ed 253); Bank of United States v. Halstead (1825) 10 Wheat. 51 (6 Law Ed 264); United States v. Union Pacific Railroad Co. (1878) 98 US 569, at p 604 (25 Law Ed 143, at p 151) ; Ex parte City Bank (1845) 3 Howard 292, at p 317 (11 Law Ed 603, at p 614); Livingston v. Story (1835) 9 Peters 632, at p 655 (9 Law Ed 255, at p 263)

; Fidelity &Deposit Co. of Maryland v. United States

(1902) 187 US 315 (47 Law Ed 194), and The Rule Making Power, 12 American Bar Ass. 599, by Dean Pound, whose thesis is that historically and even analytically it is the function of the courts to regulate their procedure. ... The truth is that the ascertainment of existing rights by the judicial determination of issues of fact or law falls exclusively within judicial power so that the Parliament cannot confide the function to any person or body but a court constituted under ss. 71 and 72 of the Constitution and this may be true also of some duties or powers hitherto invariably discharged by courts under our system of jurisprudence but not exactly of the foregoing description. But there are many functions or duties that are not necessarily of a judicial character but may be performed judicially, whether because they are incidental to the exercise of judicial power or because they are proper subjects of its exercise. How a particular act or thing of this kind is treated by legislation may determine its character. If the legislature prescribes a judicial process, it may mean that an exercise of the judicial power is indispensable. It is at that point that the character of the proceeding or of the thing to be done becomes all important." (at p18)

11. The task committed to the Registrar by s. 23 of the Act is not wanting in the requirement that it should not depend on consideration of policy. The criteria laid down by the section show that the function is to be exercised by the finding of facts and the application thereto of a standard prescribed by law, and not according to "its own idiosyncratic conceptions and modes of thought" to use the words of Kitto J. in Reg. v. Trade Practices Tribunal; Ex parte Tasmanian Breweries Pty. Ltd. (1970) 123 CLR 361, at p 376 . (at p18)

12. These considerations would have disposed me to the view that the powers given by s. 23 are judicial in the true sense and thus proper to be conferred on the High Court but not on the Registrar, notwithstanding the established doctrine that some functions may, chameleon like, take their colour from their legislative surroundings or their recipient. In my opinion however this course is precluded by the decision of this Court in Farbenfabriken Bayer A.G. v. Bayer Pharma Pty. Ltd. (1959) 101 CLR 652 ("the Bayer Case") which dealt with the provisions of the 1905 Act. That Act contained provisions committing decisions on various matters to the Registrar, the Law Officer (i.e. Attorney-General or the Crown Solicitor, who was later replaced for this purpose by the Solicitor-General) and the High Court. Thus ss. 34 and 35 dealt with appeals from refusals by the Registrar to register a trade mark as follows:

"34. - (1.) An appeal shall lie to the Law Officer from any conditional acceptance or any refusal by the Registrar of the application. (2.) The Law Officer shall hear the applicant and the Registrar, and shall decide whether and subject to what conditions or modifications (if any) the application shall be accepted. (3.) An applicant aggrieved by the decision of the Law Officer may in the time and in the manner prescribed appeal to the Court. (4.) The Court shall hear the applicant and determine whether the application ought to be refused or ought to be accepted with or without any modifications or conditions. 35. If the applicant so desires, he may appeal direct from the Registrar to the Court without any appeal to the Law Officer." (at p19)

13. The 1905 Act dealt in ss. 43, 44 and 45 with appeals from the Registrar on oppositions as follows:

"43. - (1.) Any party aggrieved by the decision of the Registrar may in the time and in the manner prescribed appeal to the Law Officer. (2.) The Law Officer shall hear the applicant and the opponent, and may determine whether the application ought to be refused or ought to be granted with or without any modifications or conditions. 44. - (1.) Any party aggrieved by the decision of the Law Officer may in the time and in the manner prescribed appeal to the Court. (2.) The Court shall hear the applicant and the opponent, and determine whether the application ought to be refused or ought to be granted with or without any modifications or conditions. 45. If either party so desires and gives written notice thereof the appeal shall be taken direct from the Registrar to the Court without any appeal to the Law Officer." (at p19)

14. By s. 71 the 1905 Act placed the power to rectify the register in the High Court and by s. 72 it gave the power to remove a trade mark from the register for non-user to the Court only. (at p19)

15. The Bayer Case dealt with s. 44 of the 1905 Act and held that it validly conferred judicial functions on the High Court and the Supreme Courts of the States. Dixon C.J. dealt with the control question as follows (1959) 101 CLR, at p 657 :

"An attack is made upon s. 44 as an attempt to confer upon this Court functions which lie outside the judicial power of the Commonwealth. It will be seen from the definition of 'Court' that the provision purports also to confer power on the Supreme Court of a State. To confer judicial power on this Court in such a matter it was necessary for the Parliament to exercise the legislative power given by s. 76 (ii.) of the Constitution. To confer it upon the Supreme Court of a State it was necessary to exercise that given by s. 77 (iii.) of the Constitution. Section 76 (ii.) provides that the Parliament may make laws conferring original jurisdiction upon the High Court in any matter arising under any laws made by the Parliament. Section 77 provides that with respect to any of the matters mentioned in s. 76, as well as those covered by s. 75, the Parliament may make laws investing any court of a State with federal jurisdiction. Clearly enough opposition proceedings arise under a law of the Commonwealth. On the one side the applicant claims in such proceedings to be entitled to registration of a trade mark. On the other side the opponent denies his right. There does not seem to be any reason in the nature of things why such an issue of right should not be submitted to the original jurisdiction of this Court or of the Supreme Court of a State for determination. But of course it must be submitted as a judicial matter to be determined by an exercise of the judicial power. The fact that the proceedings, although necessarily belonging to the original jurisdiction, are called an appeal is of little or no importance. What is of importance is whether the jurisdiction which the section purports to confer is not only a jurisdiction with respect to a matter lying within the nine matters referred to in ss. 75 and 76 but is so conferred as to involve the exercise of judicial power. The nature of opposition proceedings in an application for trade mark is well enough known."

He also said (1959) 101 CLR, at pp 658-659 :

"The right to registration of a trade mark depends upon the fulfilment of a number of objective conditions which the Act prescribes both positively and negatively. It is enough to mention the definition of 'trade mark' in s. 4, the essential particulars referred to in ss. 15 and 16, and the disqualifications referred to in s. 25 and in s.114. The statute might have drawn a clear distinction between on the one hand the administrative decision to give effect to an opposition and refuse registration or to overrule an opposition and grant registration and on the other hand a jurisdiction conferred upon the Court to entertain a challenge to the administrative decision and determine judicially that the title to registration did or did not exist and to do so by a binding and enforceable decree. If that had been done no difficulty could be found in treating the provision conferring such a jurisdiction upon the Court as a valid exercise of the legislative power conferred by s. 76 (ii.) or s. 77 (iii.) as the case might be. It would have been but another instance of the kind of thing done by Div. 2 of Pt V of the Income Tax and Social Services Contribution Assessment Act 1936-1957 Cf. Steele v. Defence Forces Retirement Benefits Board (1955) 92 CLR 177; The Commonwealth v. Anderson (1957) 97 CLR 345; Federal Commissioner of Taxation v. Munro (1926) 38 CLR 153 . But the distinction was not maintained in the language which the legislature adopted with reference to the registrar, the Law Officer and the Court in ss. 42 to 45. This is also true with respect to appeals from a refusal to accept an application which are dealt with by ss. 34 and 35. In other words, the contention advanced before us is to be attributed to the use by the legislature of the same or similar terms in describing the administrative power which ss. 42 and 43 purport to confer and the judicial power which ss. 44 and 45 purport to confer. It is not surprising that similarity of expression has given rise to the argument that one or other provision must be bad; and since it is not assumed that judicial power has been conferred on administrative officers the contention is that the truth must be that it was intended to confer an administrative power on the Court. In support of this latter view it is contended that s. 44 does not intend to give a power the exercise of which is definite. It is suggested that although on an appeal by an applicant or an opponent the Court is to determine whether the application ought to be refused or ought to be granted the decision of the Court is not necessarily binding and there is nothing to enforce a decision in favour of the grant of registration or for that matter a decision in favour of the refusal of registration. This argument does not appear to be well founded... Apart from s. 47 there is a clear implication in s. 44 that the exercise of the judicial power that provision purports to confer shall be conclusive upon the registrar as well as upon the parties. The determination of the Court that the application should be refused necessarily means that the application is at an end. In the same way a determination of the Court that the application ought to be granted leaves nothing but the administrative steps necessary to express a grant. There is therefore in s. 44 a provision which is apt to confer judicial power and relates to a fit subject matter for judicial power; the subject involves a matter within the meaning of s. 76 (ii.) of the Constitution; in the character of the provision itself, in the manner in which the power is to be exercised or in the subject no reason can be found for denying that it forms a proper exercise of the constitutional power conferred by that provision and the provision contained in s. 77 (iii.) of the Constitution." (at p21)

16. In my opinion the present case differs from the Bayer Case (1959) 101 CLR 652 only in that the jurisdiction in s. 23 of the Act is conferred by a single expression, i.e. "High Court or the Registrar may...order etc.", upon a judicial body and a non-judicial body in the alternative, whereas the jurisdiction in the 1905 Act is conferred on a judicial body and a non-judicial body by separate sections (ss. 44-45 and ss. 42-43 respectively) but in virtually identical language. In the Bayer Case, as in this case, "it is not surprising that similarity" (identity) "of expression has given rise to the argument that one or other provision must be bad" (1959) 101 CLR, at p 659 , though the attack is made on the power of the Registrar and not the power of the Court. (at p22)

17. I am unable to see any material distinction between the provisions dealt with in the Bayer Case and the provision now in question. The fact that the former dealt with an opposition to registration of a mark and the latter with an application to remove a mark from the register for non-user is not a sound basis for distinguishing them. The provisions, and the nature of the function to be performed, are not materially different. (at p22)

20. It is for those reasons that I am of opinion that this case is concluded by the Bayer Case and that the order nisi should be discharged. (at p22)

Orders

Order nisi discharged.

Prosecutor to pay respondents' costs including reserved costs.