The Shell Co of Australia Ltd v Rohm & Haas

[1948] HCA 27

[HIGH COURT OF AUSTRALIA.]

THE SHELL COMPANY OF AUSTRALIA  LIMITED , Appellant;

Respondent,

AND

ROHM AND HAAS COMPANY AND  ANOTHER,  Respondents,

Applicant and Registrar,

Trade Mark—Rectification of register—Expunging mark—“ Person aggrieved ”—

Registration of mark lodged subsequent to but accepted and registered prior to

acceptance of application previously lodged and then pending for registration of

similar mark in respect of same class—Opposition proceedings—Resemblance

of marks—Likelihood of deception—Proceedings by proprietor of later accepted

mark to expunge from register entry re prior accepted and registered mark—

Registrar—Duty to deal with applications in order of date—“ Already on the

register ”—Date of application or date of registration—Proprietorship of mark 

—Proceedings—Notice to registrar—Joining of registrar as party—Trade Marks

Act 1905-1936 (No. 20 of 1905—No. 75 of 1936), ss. 16, 25, 27-29, 32, 33,

47, 71 (1), (3), 114.1949,

The provisions in s. 47 of the Trade Marks Act 1905-1936, that the date of

lodging an application for the registration of a trade mark shall be deemed

to be the date of registration implies that as between two persons who apply

to register marks proposed to be used upon the same goods or description of

goods which are identical or so nearly resemble one another as to be likely

to deceive, the person who lodges the application which is prior in point of

time is, in the absence of the second applicant having a prior or superior title

to the mark, entitled, before he obtains registration of his alleged mark, to

oppose the other mark being registered, or if it has been registered to have

the mark expunged on the ground that it was wrongly made in the register.

So held by Williams J. and, on appeal, by Rich, Dixon and McTiernan JJ.

and semble by Webb J., Latham C.J. dissenting.

The registrar of trade marks should not be made a party to an application

by a “ person aggrieved,” but notice of such application, as required by s. 71 (3),

of the Trade Marks Act 1905-1936, should be given him.

The meaning of the words “ already on the register ” as used in s. 25, and of the words “ a person aggrieved ” as used in s. 71 of the Trade Marks Act 1905-1936, discussed.

Appeal from Williams J.

An application was made to the High Court by notice of motion on behalf of Rohm & Haas Co., of 222 West Washington Square, Philadelphia, Pennsylvania, United States of America, as a person aggrieved by the entry in the register of trade marks of registered trade mark “ Ditrene ” No. 83906 in class 2 in respect of agricultural and horticultural sprays in the name of the Shell Co. of Australia Ltd., for an order that that entry be expunged, or, alternatively, that that trade mark be removed from the register of trade marks. The grounds of the application were (i) that the entry was wrongly made inasmuch as at the date of the registration thereof on 19th June 1945, the applicant had filed an application No. 83501 under date 20th April 1945 for the registration as a trade mark of the word “Dithane” in class 2 in respect of insecticides, fungicides or disinfectants and was entitled to priority in respect of that application and to the registration of the word “ Dithane ” as a trade mark ; (ii) that the rights of the applicant under application No. 83501 were contravened and prejudiced and were liable to be nullified and defeated if trade mark No. 83906 was allowed to remain on the register; (iii) that the original registration and/or the continued registration of trade mark No. 83906 was and would be oppressive to the applicant ; (iv) that the entry, if allowed to remain on the register would cause confusion and passing-off in contravention of the rights of the applicant by virtue of its application No. 83501 ; (v) that the trade mark was and always had been deceptive and the registered owner had used and intended to use it in an improper and deceptive manner ; (vi) that the trade mark was and always had been deceptive and the owner had used and intended to use it so as to pass off that owner’s goods as the goods of the applicant; (vii) that the entry wrongly remained on the register for the reasons set forth in pars, (i) to (vi) inclusive ; and (viii) that having regard to the facts set forth in par. (i) the trade mark should not have been entered upon the register whilst application No. 83501 had not been determined and should not have been entered upon the register in contravention to the rights of the applicant in application No. 83501.

The motion was heard before Williams J. in whose judgment, and in other judgments hereunder the material facts and relevant statutory provisions are sufficiently set forth.

Dean K.C. (with him Thomas), for the applicant.

Wallace K.C. (with him R. L. Taylor), for the Shell Co. of Australia Ltd.

Henchman, for the Registrar of Trade Marks.

Cur. adv. vult.

Williams J. delivered the following written judgment:—

This is an application under s. 71 of the Trade Marks Act 1905­ 1936 by Rohm & Haas Co., which is incorporated in the United States of America, to rectify the register of trade marks by expunging therefrom the entry of the trade mark “ Ditrene ” No. 83906 registered in the name of the respondent which is incorporated in England in class 2 in respect of agricultural and horticultural sprays. The application of the registration of “ Ditrene ” was lodged on 19th June 1945 accepted on 4th April 1946 and duly advertised. There was no opposition, and the mark was registered on 4th October 1946.

On 21st April 1945 the applicant had lodged an application to register the trade mark “ Dithane ” in class 2 in respect of insecticides, germicides, fungicides and disinfectants. The application was accepted on 17th January 1947 and duly advertised. A notice of opposition to the registration of the mark was lodged by the respondent on 5th August 1947 and a counter-statement by the applicant on 5th February 1948. The application under s. 42 has not yet been heard by the registrar.

Both marks are registrable as invented words and were applied for as marks proposed to be used upon or in connection with goods. Neither of the marks had been used in Australia prior to the respective dates of application. They are proposed to be used in respect of the same goods or description of goods.

Section 25 of the Act provides that subject to this Act the registrar shall not register in respect of goods a trade mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods or so nearly resembling such a trade mark as would be likely to deceive. The section is confined to trade marks already on the register, and does not in terms preclude the registrar from registering a trade mark identical with a mark which is the subject matter of a prior application in respect of the same goods or description of goods or so nearly resembles that mark as to be likely to deceive. Section 33 (2)

provides that when an application is lodged the application shall be forthwith referred to an examiner, who shall ascertain and report whether the trade mark is a registrable trade mark, and whether it is identical with a trade mark already on the register in respect of the same goods or description of goods, or so nearly resembles the latter trade mark as to be likely to deceive, and whether the trade mark or any matter therein is common to the trade. This section is therefore also confined to trade marks already on the register. But s. 47 provides that when an application to register a mark is granted the mark shall be registered as on the date of the lodging of the application, which date shall be deemed to be the date of registration. Accordingly, if the application to register the applicant’s mark is granted, the registration will date back to 21st April 1945, and this date is prior to the registration of the respondent’s mark which dates back to I9th June 1945.

Section 33 (3) provides that subject to this Act the registrar may either accept the application, with or without modifications or conditions, or refuse it. He is not therefore bound to accept the application if the report of the examiner is favourable, and it seems to me that, having regard to the antedating of the registration of trade marks to the date of lodging the application, it must be the duty of the registrar, before accepting an application, to compare the proposed mark not only with marks already on the register but also with other pending applications of prior date. If there is a prior application in respect of the same goods or description of goods, and the proposed mark is identical with the mark proposed in the earlier application or so nearly resembles it as to be likely to deceive, the registrar should not accept the later application until the prior application has been disposed of. In the present case the registrar acted on this basis. Before he decided to accept the application to register “ Ditrene ” he compared this word with “ Dithane ” as a similar mark. The two words are not identical and the registrar must have considered they did not so nearly resemble each other as to be likely to deceive. Before accepting the application to register “ Dithane ” he compared this word with “ Ditrene ” which was then on the register as a similar mark and, consistently with his previous opinion, must have considered that “ Dithane ” did not so nearly resemble “ Ditrene ” as to be likely to deceive.

The tests of similarity were stated by Parker J. in In the Matter of an Application by the Pianotist Co. Ltd. for the Registration of a Trade Mark (1) as follows : “You must take the two words. You

(1) (1906) 23 R.P.C. 775, at p. 777.

must judge of them, both by their look and by their sound.

You  must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances ; and you must consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.” A person who is  familiar  with both words will neither be deceived nor confused. It is the person who only knows the one word, and has perhaps an imperfect recollection of it who is likely to be deceived or confused (Aristoc Ltd. v. Rysta Ltd. (1) ). “ Dithane ” and “ Ditrene ” are words which, if used as trade marks in respect of the same goods or description of goods, would, in my opinion, so nearly resemble one another as to be likely to deceive. The prefix of both words is the same and the suffix very similar. To the eye and ear of such a person there would be a marked resemblance between the two words in appearance and pronunciation. If therefore “ Dithane ” had already been registered it would have been wrong for the registrar to have accepted the application to register “ Ditrene ” or to register it, and if it had been registered the applicant would have been entitled to apply under s. 71 to have the entry expunged from the register.

Section 27 provides that where each of several persons claims to be proprietor of the same trade mark or of nearly identical trade marks in respect of the same goods or description of goods, and to be registered as such proprietor, the registrar may refuse to register any of them until their rights have been determined by the court, or have been settled by agreement. In Innes v. Lincoln Motor Co. (2), it was held that in determining the question whether the marks are nearly identical within the meaning of this section, the inquiry is not whether the marks are likely to be confused with one another or are calculated to deceive, but whether there is claimed by several persons one mark or what the statute treats as one mark. The Court said that the section “ is framed on the footing that two or more persons claim the same thing or things so like that they may rightly be called the same thing ” (3). It may be doubted whether the words “ Dithane ” and “ Ditrene ” are so alike that they may rightly be called the same thing, and it may also be doubted therefore whether the registrar could have properly refused to register either mark until the rights of the applicant and respondent had been determined by the court. But the question of the

(1) (1945) A.C. 68, at p. 86.(3) (1921) 29 C.L.R., at p. 281.

(2) (1921) 29 C.L.R. 277.

applicability of this section need not be pursued since the registrar

under it but registered “ Ditrene.”

If the registrar had refused to accept the application to register “ Dithane ” because “ Ditrene ” was already on the register and the two words so nearly resembled each other as to be likely to deceive, the applicant would clearly have been an aggrieved person within the meaning of s. 71 and could have applied under that section to have “ Ditrene ” expunged from the register so that the application to register “ Dithane ” might proceed. But the registrar has accepted the application and the acceptance has been advertised. The application has however been opposed by the respondent on the ground, inter alia, that it is the registered proprietor of “ Ditrene ” in class 2 in respect of goods of the same description as those in respect of which the applicant seeks registration. Section 25 does not refer to the acceptance of the application but to the registration of the trade mark. The registrar might therefore still refuse to register “ Dithane ” on this ground although he has accepted the application. The applicant would then be entitled to apply for rectification under s. 71. Alternatively the registrar might dismiss the opposition and register “ Dithane.” There would then be on the register two marks in respect of the same goods or description of goods so nearly resembling each other as to be likely to deceive. The applicant as the registered proprietor of the earlier mark would then be entitled to apply for rectification under s. 71. Thus the question of priority must arise at some stage and it is simply a question of when the applicant is entitled to have that priority determined.

The expression “ an aggrieved person ” in s. 71 has been given a wide meaning. In William Powell (Trading as Goodall, Backhouse  & Co.) v . The Birmingham Vinegar Brewery Co. Ltd. (1), Lord

Watson said “ In my opinion, any trader is, in the sense of the statute, ‘ aggrieved ’ whenever the registration of a particular trade­ mark operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must entail a corresponding disadvantage upon a trader who might possibly have had occasion to use the mark in the course of his business. It is implied, of course, that the person aggrieved must manufacture or deal in the same class of goods to which the registered mark applies, and that there shall be a reasonable possibility of his finding occasion to use it.” The notice of motion was filed on 28th March 1948 and in my opinion the applicant was then an aggrieved person within the meaning of s. 71. It was “an applicant whose

(1) (1894) A.C. 8, at p. 12.

application might be hampered by the presence of another mark on the register.” Halsbury's Laws of England, 2nd ed., vol. 32, p. 599 ; In the Matter of the Registered Trade Mark “ Zonophone ” (1) ; Seven Up Co. v. O.T. Ltd. (2). It therefore had a legal right to make the application. The respondent has been using and advertizing “ Ditrene ” as a trade mark since July 1947 but this user cannot affect any priority which the applicant may have acquired by its earlier application. The crucial date is the date of the application to register (In the Matter of Applications by John Taylor Peddie (3) ). Accordingly, I think that I should now decide the question of priority, and in my opinion the provision in s. 47 that the date of lodging the application shall be deemed to be the date of registration necessarily implies that as between two persons who apply to register marks proposed to be used upon the same goods or description of goods which are identical or so nearly resemble one another as to be likely to deceive, the person who lodges the application which is prior in point of time is, in the absence of any other circumstances, entitled to have his mark registered and to oppose the other mark being registered, or if it has been registered to have the entry expunged on the ground that it was wrongly made in the register. For these reasons I am of opinion that the applicant is entitled to succeed and I make an order that the register of trade marks be rectified by expunging therefrom the trade mark “ Ditrene ” No. 83906, and a further order that the respondent, the Shell Co. of Aust. Ltd., pay the costs of the applicant and of the registrar of trade marks including reserved costs and the fees, if any, for obtaining rectification (In the Matter of the Trade Marks of J. Lesquendieu (4) ).

From this decision the Shell Co. of Australia Ltd. appealed to the Full Court.

Spender K.C. (with him Wallace K.C. and R. L. Taylor), for the appellant. Neither the Trade Marks Act 1905-1936, nor the regulations made thereunder, impose upon the registrar of trade marks or his officers an obligation on his or their part to search applications pending of the description then under consideration, nor, in the case of marks likely to be identical or likely to deceive, is there any right conferred upon an applicant prior in point of time to have his application determined first. Implications to the contrary said by the judge of first instance to be deducible from s. 47 of the Act are not so deducible. The judgment appealed from depends upon the

(1) (1903) 20 R.P.C. 450.(3) (1943) 61 R.P.C. 31.

(2) (1947) 75 C.L.R. 203.

(4) (1934) 51 R.P.C. 273, at p. 277.

validity of those propositions. They involve reading out of the statute a legal right conferred upon the prior applicant, and also involve the imposing of correlative duties upon the registrar. They are not supported by ss. 16, 25, 33 or 47, or any other provisions of the Act or regulations thereunder, and are wrong in law. The judge treated the prior application in the nature of a caveat from which sprang certain duties. Even if the Act does not contain any solution of the problem other than that adopted by the judge of first instance, it is not for this Court to legislate but to interpret. Adapting to the words of s. 25 his Honour’s proposition that in the event specified the registrar is under a legal duty to refuse to register a later application before the disposal of a prior application results, in effect, in the insertion of a new sub-section in that section. The judgment cannot be supported except upon reading into s. 25 additional words.  The appellant’s rights are determined by what  the Act and the regulations provide. There cannot be any legal right or duty other than is conferred or imposed by express words in the Act itself: Craies on Statute Law, 3rd ed. (1923), pp. 81, 83. It is not sufficient that a right or duty sought to be imposed should satisfy the test of reasonableness; it must be clearly necessary to give efiect to other provisions of the Act. A mark is not wrongly registered, nor does it wrongly remain on the register within the meaning of s. 71 (1) (6) of the Act unless it, or the manner of its use, can be shown to ofiend against the provisions of (i) the Act, other than s. 71, or (ii) some regulation validly made under the Act. That being so the appellant is entitled to succeed as its mark has not offended or infringed the Act or any regulation made thereunder (In the Matter of Applications by Pan Press Publications, Ltd. for Rectification of the Register (1) ). The observations by the court in that case (2) apply a fortiori to the Act now under consideration as the only authority given to the court in determining whether there has been a wrongful entry ; that must be found in the provisions of the Act itself there not being any other Commonwealth law. James A. Jobling & Co. Ltd. v. James McEwan & Co. Pty. Ltd. ; In re James A. Jobling & Co. Ltd’s Trade Marks (3) was brought within the provisions on the ground that the subsequent user contravened s. 18 of the Act. Section 25 does not refer to the date of application but refers to the act of registration—after acceptance the relevant time is when the act of registration takes place. The court is bound to construe the Act without being influenced by any ideas as to what might be fair or just. The general rule is not to import

(1) (1948) 65 R.P.C. 193.(3) (1933) V.L.R. 168.

(2) (1948) 65 R.P.C., at pp. 197, 201.

into a statute words which are not to be found in it ( Fredericks and London Passenger Transport Board (3) ; Craies on Statute Law, 4th ed. (1936), pp. 71, 72, 104, 110). Statutes are, generally, construed in the same manner as other documents : Halsbury's Laws of England, 2nd ed., vol. 31, p. 479, par. 594. The principles followed as to when implications will be made in written documents are shown in Heimann v. Commonwealth of Australia (4) ; Scanlon’s New Neon Ltd. v. Tooheys Ltd. (5) and Luxor (Eastbourne), Ltd. v. Cooper (6) ). Section 47, upon which the judge of first instance mainly rested his conclusions, does not in any way deal with any question of competing priorities, nor with conferring rights between competing applicants, nor with imposing any duties upon the registrar except as specifically indicated. In the absence of any regulation providing a different date, the date of the application is the date from which the registration dates. It was so dated back to provide protection for the proprietor of the mark in an action for infringement in respect of his application unless otherwise provided. Section 47 applies whether or not there has been opposition and whether or not it comes before the registrar only or before the law officer or a court, so if the judge’s implication is to be made, it must be made in all those circumstances. The fact that opposition to the matter can take place in any one of the three ways provided by Div. 3 and the matter can be litigated certainly before the registrar before registration, is itself a very powerful argument against reading into s. 47 an obligation upon the registrar to deal with the first application before he proceeds to deal with the second. The words “ otherwise prescribed by the regulations ” in s. 47 provide such elasticity as to prevent reading into that section those rights and obligations. The section does not deal at all with the question of competing priorities. If it stood alone the section does not support the judge’s view, but from other sections, particularly ss. 25, 27, 28, 31, 33, 36 and 105, and reg. 42 made under s. 94, it is clear that that view is wrong. Section 25 is limited to comparison with marks already on the register. The words “ shall not register ” and “ already on the register ” in s. 25 refer to the time when the actual registration takes place [In the Matter of a Trade Mark “ Palmolive ” (7) ). Sections 27 and 28 of themselves contemplate concurrent or co-pending applications and they are the only sections

(1) (1862) 1 H. & C. 584, at p. 589  [158 E.R. 1016, at p. 1018].

(2) (1840) 12 Ad.  k  E. 460, at p. 468  [113 E.R. 886, at p. 889].

(3) (1939) 2 All E.R. 421, at p. 423.

(4) (1938) 38 S.R. (N.S.W.) 691, at pp. 695, 696.

(5) (1943) 67 C.L.R. 169, at p. 195.

(6) (1941) A.C. 108, at p. 137.

(7) (1932) 49 R.P.C. 269, at p. 276.

that deal with it.  Those sections apply irrespective of point of  time and negative the inference which has been drawn from s. 47 that the application which is first in point of time must be dealt with first. If the judge’s conclusion be correct then there would not be any need for those sections because each application would have to be dealt with in the order in which it was lodged. Whether or not a mark is registered depends solely upon the terms of the Act. The legislature intended s. 27 to apply to certain types of applications. That section applies although neither claimant may be the proprietor ( In the Matter of Hudson’s Application for a Trade Mark (1) ).

[Rich J. referred to In the Matter of De Maid’s Application to  Register a Trade Mark and In the Matter of Rothschild’s Application to Register a Trade Mark (2).]

So, having deliberately applied itself to the matter of competing claims, s. 27 is what the legislature intended to provide, or it is a casus omissus for which the court has not any remedy.

Section 27 applies even after acceptance of an application under s. .33 ( Innes V. Lincoln Motor Co. (3)). A consideration of s. 105 shows that to imply necessarily from s. 47 the structure of rights and obligations suggested by the judge, would be wholly unreasonable because it would mean that a person who had applied in certain circumstances would never know when his mark was beyond challenge ( R. (on the Prosecution of Waters) v. Registrar of Trade Marks (4) ). There is nothing inconsistent in James A. Jobling & Co. Ltd. v. James McEwan Pty. Ltd. (5) and the argument now put to the Court. In that case : (i) the extent of the jurisdiction was not argued although considered by the judge therein; (ii) deception upon the public was found ; (iii) the registration of the mark sought to be expunged did interfere with the right of a person under s. 53a ; and (iv) it was no longer in that case a registrable trade mark. The judgment in that case did not purport to find authority for the striking-off the register, a test to be found outside the Act itself; and if it did, it should not be followed. The judgment appealed from is not supported by any authority. The Court has discretion under s. 71 as to whether it will or will not rectify the register ( Paine &, Co. v. Daniell & Sons’ Breweries, Ltd. (6) ; In the Matter of the Magneta Time Co. Ltd.’s Trade Mark (7) ; Scott Paper Co. v. Drayton Paper Works Ltd. (8) ; In the Matter of Roskill’s Trade Mark (9)).  The

(1) (1907) 24 R.P.C. 582.(6) (1893) 10 R.P.C. 217, at p. 232.

(2) (1914) 31 R.P.C. 305.(7) (1927) 44 R.P.C. 169.

(3) (1921) 29 C.L.R. 277.(8) (1927) 44 R.P.C. .529.

(4) (1908) 5 C.L.R. 605.(9) (1915) .32 R.P.C. 577.

(5) (1933) V.L.R. 168.

rule in each particular case is as to whether there are circumstances which justify the court in exercising its discretion one way or the other. In all these matters the overriding consideration always is the public interest. This is not a case of a person innocent of trade­ mark law. The provision of trade-mark opposition would be reduced to very much a shadow of what it was intended to be if a company such as the respondent company which has its agents, which has in other parts of the world, as the evidence shows, had conflict between itself and the appellant company as to these respective marks, does not take opposition proceedings open to it. It had its agents here. It might be reasonably assumed that its agents saw that the application had been made by the appellant and it made no opposition whatever. In the meantime the appellant’s mark, through no fault on the part of the appellant, was entered on the register. The appellant complied with the Act, and with ss. 33 and 16, and otherwise satisfied the provisions of the Act. Having the right to oppose, the respondent made no attempt to do so. If the appellant’s mark be expunged it would mean that by the registration of the respondent’s mark the appellant is subject automatically to an action for infringement which would date right back to the date of the application. The Court should not assist the respondent in such circumstances.

[Dixon J. referred to Halsbury's Laws of England, 2nd ed., vol. 32,  p. 569.]

There was nothing wrong with the registration of the lant’s mark, and even though there is nothing to indicate to whom the delay was attributable the onus is on the respondent to show that expunging the appellant’s mark is the right course to pursue. The word “ wrongly ” as used in s. 71 is inapt. It should be construed as meaning in breach of some prohibition, express or implied, in the Act, or, alternatively, some prohibition to be found dehors the Act.

Hardie K.C. (with him Thomas), for the respondent. The respond­ ent is a “person aggrieved” within the meaning of s. 71. The entry of the appellant’s mark in the register was wrongly made because of the conjoint operation of ss. 25 and 47 of the Act. Alternatively, the entry was wrongly made having regard to the conjoint operation of ss. 114 and 47. The delay in deahng with the respondent’s application was, as the evidence shows, due to depart­ mental routine and the pursuing of certain inquiries by officers of the registrar, and was not in any way attributable to the respondent. The registrar compared both marks and came to the erroneous

HIGH COURT

[1948-1949.

conclusion, that they were not deceptively similar. Because of that erroneous conclusion he permitted the appellant’s mark to be registered and having obtained registration of that mark the appellant opposed the registration of the respondent’s mark on the ground that the marks are deceptively similar. The appellant seeks to derive a benefit from the mistake made by the registrar. The conclusion arrived at by the judge of first instance can be justified by construing the phrase “ already on the register ” in ss. 25, 29 (1) and 33 (2) as meaning actually in fact on the register physically at that point of time, or notionally on the register at that date, having regard to subsequent events. The phrase should be construed as meaning “ which is or is not already on the register.” Section 25 is directed to the object that the same mark or deceptively similar marks belonging to different proprietors shall not be on the register at the same time, but it is not a total prohibition. The appellant’s opposition is based solely on facts and matters which occun-ed after the date of the respondent’s application, namely, user after the date of application and the registration of its mark. Section 25 cannot be used to prevent the entry on the register of the respondent’s mark, even though it is actually registered after the appellant’s mark. It was an application prior in point of date and events which took place after the date of application cannot be taken into account as a reason for refusing to register. Sections 27 and 28 disclose an intention that there should never be on the register two identical or similar marks belonging to different people unless there are safeguards imposed to ensure that their areas are in some way defined. This reinforces the construction sought by

the respondent to be placed on s. 25.

It is not contended, nor did

the judge hold, that time was decisive in all cases. Sections 27 and 28, when properly understood do not in any way cut down the principle that there is an obligation on the registrar to refrain from granting a later application until he has disposed of an earlier apphcation. If it be granted the respondent’s mark is deemed to have been on the register as from the date of the application, when considering the appellant’s application the registrar must treat the respondent’s mark as already on the register, as he did, or, in the alternative, he must refrain from accepting the appellant’s application until he has either accepted or refused the respondent’s apphcation. Under s. 25 the registrar would have to regard marks already in fact on the register but otherwise he should deal with each apphcation in relation to marks already on the register but not with any reference to other but later pending applications. The existence of the appellant’s similar mark is not a ground for

refusing registration of the respondent’s mark. In deciding whether a mark should be entered on the register the crucial date to consider is the date of the apphcation that being the date as from which, according to the Act, the mark is deemed to be on the register {Wilson's and Mathieson's Ltd. v. Meynell eg Sons Ltd. (1) ; The Shredded Wheat Co. Ltd. v. Kellogg Co. of Great Britain Ltd. (2) ; In the Matter of Peddie's Applications (3) ; In the Matter of an Application hy Ladislas Jellinek for the Registration of a Trade Mark (4) ). In considering the phrase “ already on the register ” the Court will have regard to the principles that have been apphed in determining the validity or otherwise of a prior trade mark. The existence of the appellant’s mark as a registered mark was a fact which did not exist at the date of the respondent’s appli­ cation. The observations in In the Matter of a Trade Mark “ Palm­ olive " (5), are obiter dicta and are contrary to the principles estab- hshed by the cases referred to above that the crucial date is the date on which the application is lodged. The reasoning for the decision in that case was wrong. Section 25 does deal with the act of the registrar in registering but s. 47 provides that the date of the lodging of the application shall be deemed to be the date of registration and therefore the registrar is presumed to be acting as at the date of registration. So, if he had examined the facts as they existed at that time he would never have seen the appellant’s apphcation. The order appealed from should be upheld on that ground amongst others. The appellant’s application should have been refused because of the provisions of s. 114. In applying that section the registrar is bound to have regard to the operation of s. 47 on then pending applications for the same or a similar mark lodged before the application then being considered. It is implied in the Act that the registrar must deal with applications by refusing or granting them in the order in which they are lodged. The respondent by reason of its invention or selection of the word “ Dithane,” and its apphcation to register that word as proprietor has rights as from the date of the application similar to those which would arise had the respondent used the name as from that date. That being so, the registrar had an obhgation to recognize those rights and had an obhgation to refrain from accepting or granting an apphcation made after the respondent’s apphcation, until the respondent’s apphcation had been disposed of {In re Hudson's

(1) (1929) 46 R.P.C. 80, at p. 91.

(4) (1946) 63 R.P.C. 59, at pp. 61,

(2) (1940) 57 R.P.C. 137, at pp. 139,

62, 68.

148, 150, 155.

(5) (1931) 49 R.P.C. 269, at p. 276.

(3) (1943) 61 R.P.C. 31, at p. 32.

HIGH COURT

[1948-1949.

Trade-Marks (1) ; Kerly on Trade Marks, 6th ed., (1927), p. 73). There are somewhat similar pro\isions in the Patents Act 1903­ 1946 : see ss. 53, 54, 59, 121 ; R. v. Commissioner of Patents ;

parte Reid (2) and Tate v. Haskins (3). The registrar is entitled to have regard to previous refused applications : Halsburifs Laws of England, 2nd ed., vol. 32, p. 564, note (s). The practice in England in respect of these matters, being under a different statute, is not of any assistance to the court. The words “ unless prescribed by the regulations ” in s. 47 were intended for a purpose such as that dealt with in reg. 32, namely, to provide that in certain circum­ stances the registrar need not register a mark even though the earlier portion of s. 47 has been complied with. It is well settled that failure to oppose does not deprive a person of his right to apply for rectification. There is a big distinction between marks being deceptively similar and marks being nearly identical {Innes

Lincoln Motor Co. (4) ). The Court said that notwithstanding the observations of Sargant J. to the contrary in In re Maeder's Trade Mark Application (5), it took the view that the two phrases “ deceptively similar ” and “ nearly identical ” were not the same. The view' expressed by Sargant J. was, subject to some modification, approved in In the Matter of an Application hy Alex. Pirie and Sons Ltd. to Rexjister a Trade Mark (6) and on appeal (7)). If the Court is against the respondent on the other submissions but is satisfied that the two marks are nearly identical marks the Court should come to the conclusion that the order for rectification which has been made should stand because it was based upon a wrong decision of the registrar on this point and on his failure to confine his mind to the provisions of s. 27.

Wright (with him Henchman), for the Registrar of Trade Marks. In the circumstances, his decision being involved, and all the facts being before the Court, the registrar is of opinion that it would not be proper for him to take part in the argument. The registrar does desire to be present to assist the Court both in the public interest and in respect of technical matters which arise in trade mark and patent cases, but he submits that in the absence of any rule or regulation so providing he should not be joined as a party in proceedings of this nature.

(1) (1886) 32 Ch. D. 311, at pp. 317-

(5) (1916) 1 Ch. 304; (1915) 33

R.P.C. 77.

(2) (1915) 20 C.L.R. 261, at p. 265.

(6) (19.32) 49 R.P.C. 195, at pp. 213,

(3) (1935) 53 C.L.R. 594, at p. 610.

21.5, 217.

(4) (1921) 29 C.L.R. 277.

(7) (1933) .50 R.P.C. 147, at p. 159.

Spender K.C., in reply.

The court has jurisdiction under s. 71

to order the rectification of the register but upon an application for rectification it is not competent for the court to give a direction to the registrar under ss. 27, 28 and 29 {Hansman v. Regal Shoe Co. (1) ). It is entirely beside the point whether the registrar, in the behef that he had an obligation, directed himself in respect of that. To ask this Court to construe the words “ already on the register ” in s. 25 as meaning “ notionally on the register ” is to ask this Court to legislate. Section 25 is directed to registered trade marks only {Paine <& Co. v. Daniell & Sons’ Breweries, Ltd. (2) ). The natural meaning of those words is: “subject to this Act the registrar shall not register.” Section 25 and s. 114 refer to the date of registration. Re Peddie’s Applications (3) was wrongly decided. Decisions in respect of the provisions of s. 114 are : In the Matter of an Application by Notox Ltd. for a Trade Mark and In the Matter of an Opposition by Inecto Inc. (4) ; Impex Electrical Ltd. v. Weinbaum and In the Matter of Trade Marks of Impex Electrical Ltd. (5), and In the Matter of an Application by Evans Sons Lescher <&, Webb Ltd. for the Registration of a Trade Mark (6) ). Sections 38 and 42 support the view that the Act does not impose an obligation to dispose of an earlier application before dealing with a later applica­ tion. Sections 41 and 46 of the Patents Act 1903-1946 contain specific provisions for searching prior apphcations but similar provisions do not appear in the Trade Marks Act and should not, in the circumstances, be implied.

Cur. adv. vult.

Trade Marks Act 1905-1936 of the word “ Ditrene ” as a trade mark in respect of insecticides, fungicides or disinfectants. The application for regis­ tration was lodged on 19th June 1945. The documents placed before the Court show that the registrar, in considering whether he would accept the application for the registration of “ Ditrene,” took into consideration an apphcation by the respondent company for the registration of “ Dithane ” which was then pending. The registrar was evidently of opinion that both trade marks could

The following written judgments were dehvered :— directing that the trade mark “ Ditrene ” be expunged from the register of trade marks. The appellant, the Shell Company of Australia Ltd., is the registered proprietor under the

(1) (1912) 15 C.L.R. 529.(4) (1930) 48 R.P.C. 168.

(2) (1893) 10 R.P.C., at p. 232.(5) (1927) 44 R.P.C. 405, at p. 410.

(3) (1943) 61 R.P.C. 31.

(6) (1934) 51 R.P.C. 423.

HIGH COURT

[1948-1949.

properly be registered and that there was not such a resemblance between “ Ditrene ” and “ Dithane ” as to be likely to deceive. The respondent company did not oppose the registration of “ Ditrene.” The application for “ Ditrene ” was accepted on 4th

April 1946.

After advertisement there was no opposition and the

trade mark was registered on 4th October 1946.

The respondent company, Rohm & Haas Co., had applied on 20th April 1945 for registration of the word “ Dithane ” as a trade mark in respect of the same class as that in respect of which “ Ditrene ” has been registered. This application was therefore made before the application of the Shell Co. The application was accepted and advertized and the Shell Co. lodged a notice of opposition. The opposition proceedings have not yet been determined.

On 22nd March 1948, Rohm & Haas Co. instituted proceedings to expunge the entry of “ Ditrene ” from the register. The pro­ ceedings were taken by virtue of s. 71 (1) of the Trade Marks Act 1905-1936, which provides, inter alia, as follows :—“ Subject to this Act, the Court, on the application of any person aggrieved or of the Registrar, may order the rectification of the register by— . . . (h) the expunging of any entry vsTongly made in or remaining on the register ;

Williams J. held that Rohm & Haas Co. was an aggrieved person within the meaning of s. 71 (1) and that the mark “ Ditrene ” did so resemble the mark “ Dithane ” as to be likely to deceive, thus taking upon this matter a different view from that which had commended itself to the registrar. His Honour decided that the registrar was under a duty to deal with applications in the order of their date, and that he should have determined the earlier “ Dithane ” application before determining the later “ Ditrene ” application. It was therefore held that he acted wrongly in granting registration of “ Ditrene ” and that the mark “ Ditrene ” should be removed from the register.

Upon the appeal to this Court the Shell Co. did not challenge either the decision that Rohm & Haas Co. was an aggrieved person within the meaning of s. 71 or the conclusion reached by the learned judge that “ Ditrene ” and “ Dithane ” were so similar that if both were registered and used there would be a likelihood of deception. The appellant, however, relies on what is contended to be a complete compliance with the Act, and argues that there is no ground for erecting upon the basis of the clear provisions of the Act a series of implications as to some duty of the registrar with respect to the order in which he is to deal with applications. The word “ Ditrene ” is admittedly an invented word which is registrable

as a trade mark—the Act, s. 16 (c).

The apphcation for registration

of “ Ditrene ” was regular in all respects.

Section 25 of the Act provides as follows :—“ Subject to this Act, the Registrar shall not register in respect of goods a trade mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods or so nearly xesembhng such a trade mark as to be likely to deceive.”

As already stated, before he registered “ Ditrene,” the registrar looked at and considered the application for the registration of “ Dithane.” He granted registration to “ Ditrene ” because he was of opinion that there was no risk of confusion between the two marks. In this opinion he was wrong for the reasons stated by Williams J. The Shell Co., having succeeded in obtaining registra­ tion in the absence of opposition upon the basis of this opinion, now contends (as it is entitled to do) that there is a danger of confusion between the two marks and that, “ Ditrene ” being on the register, “ Dithane ” should not now be registered.

The Shell Co. contends that the registrar was not entitled to consider the application for the registration of “ Dithane ” when he was reaching a determination upon the application for “ Ditrene ” because “ Dithane ” was not, at the time of registration of “ Dit­ rene,” namely 4th October 1946, a trade mark which was “ already on the register.” Indeed, “Dithane ” is not yet "on the register. There is, it was submitted, nothing in the Act to require the registrar to consider other pending applications before dealing with any particular application.

The appellant refers to ss. 29 and 33, where there are also refer­ ences to trade marks “ already on the register.” Section 29, which deals with associated trade marks, deals with the case where apphcation is made for the registration of a trade mark so nearly resembling a trade mark of the apphcant which is already on the register as to be hkely to deceive or cause confusion. Here the reference is plainly to trade marks which are already on the register. Section 33 (2) provides that apphcations are to be referred by the registrar to an examiner, who shall ascertain and report whether the trade mark is a registrable trade mark, and whether it is “ identical with a trade mark abeady on the register under this Act. . . . ” In this section the words “ already on the regis­ ter ” should, it is argued, be construed as referring to trade marks which were in fact on the register when the examiner was performing his duty.

HIGH COURT

[1948-1949.

So also, it is submitted for the appellant, in s. 25 the provision that the registrar shall not register a trade mark identical with one already on the register must be understood as referring to trade marks which actually are on the register when the registrar is performing the act of registration (in this case on 4th October 1946), and not to applications for trade marks which might or might not be successful. It must be conceded that if the registrar were required to consider all pending applications before he dealt with any particular application he would be considering applications some or all of which might never be granted. If, in order to intro­ duce some practical hmitation, the suggested rule were stated so as to restrict the required consideration of pending applications to those which the registrar thought were applications for somewhat similar marks which he probably would grant, it would mean that he would be considering groups of applications together and deter­ mining their chances of success—sometimes in the absence of evidence which might be adduced later. If, on the other hand, the words in s. 25 are given what is said to be their plain meaning, he compares a trade mark for which application is made vrith, and only with, trade marks which are actually on the register, and he does this (it is contended) at the time when he actually grants (or refuses) registration.

The Act contains no express provision requiring the registrar to deal with applications in order of their date. In my opinion it is difficult to imply such an obligation on the part of the registrar. If such a duty existed there would be a breach of duty if an applica­ tion for a trade mark were dealt with out of turn and the consequence would be that the mark, if registered, would be wrongly registered, so that it should be removed upon an application under s. 71—even though the mark was otherwise entitled to registration. It would not be reasonable to make an absolute implication requiring the registrar to deal with all applications in order of date, even though they related to entiiely different subjects. But, if the rule were not absolute, it would not be easy to specify with precision what applications earlier in date the registrar must take into consideration and what applications he could properly ignore in dealing with any later particular application. The consideration of an early applica­ tion might take a long time. If no later application, or no later application which was more or less in the same field (which would often be matter for argument) could be determined before all, or all relevant, earlier applications had been determined, great delay would often result. The recognition and application of any rule that all or some apphcations must be dealt with in order of date

would, in my opinion, result in delay, confusion and uncertainty of title to trade marks. It is not necessary to make sucli an implication

in order to give effect to any of tke provisions of the Act. I can

see no adequate ground for implying such a rule.

An application for registration of a trade mark may be made by any person claiming to be the proprietor of a trade mark (s. 32) and “ trade mark ” means a mark used “ or proposed to be used ” in connection with goods for the purposes mentioned in the definition of “ trade mark ” in s. 4. There are no provisions in the Common­ wealth Act making registration or application for registration equivalent to user of a trade mark. Thus a mark may be registered as a trade mark though it has never been either actually or notionally used. This will often be the case when the trade mark applied for is an invented word. But, in my opinion, the application for registration in itself gives no rights to the applicant against any other person. If the application is successful, he obtains the rights

of a registered proprietor, but not otherwise.

His application may

be abandoned or refused or successfully opposed. Until he succeeds in obtaining registration he is only a person “ claiming ” to be the proprietor of a mark. When and if he obtains registration, he acquires rights which date back to the date of his application (s. 47) but until he obtains registration he is, if he has not actually used his trade mark and thereby acquired rights, in the same position with respect to the mark as any other member of the public. He carmot prevent any other person using it unless and until he succeeds in an apphcation for registration. If he so succeeds he has a remedy against any person who used it after the date of his apphcation because s. 47 provides that the date of apphcation shall be deemed to be the date of registration. But it is the granting of registration, and not the making of the apphcation, which gives him for the first time a right to the exclusive use of the previously unused mark.

In my opinion s. 47 of the x4ct provides a solution of the difficulties which have arisen in this case. Section 47 is in the following terms :—“ When an apphcation for registration has been accepted and has not been opposed and the time for notice of opposition has expired, or has been opposed and has been granted, the Registrar unless otherwise prescribed by the regulations shall register the trade mark as on the date of the lodging of the apphcation, which date shall be deemed to be the date of the registration, and shah issue to the apphcant a certificate of registration of the trade mark in the prescribed form.”

HIGH COURT

[1948-1949.

It will be observed that the provision is not merely that the registrar shall register the trade mark as on the date of lodging of the application. There is the further positive provision that the date of lodging of the application shall be deemed to be the date of the registration.

Section 25 provides that, subject to the Act, the registrar shall not register a trade mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or so nearly resembling it as to be likely to deceive. To what point of time does the word “ already ” refer ? The act to which reference is made in the section is the act of registration. The appellant in my opinion rightly argues that the section refers only to trade marks which are actually registered at the date of the registration. But s. 47 produces the effect that for all purposes the date of application is the date of registration. Accordingly, when the registrar is determining whether he will grant an applica­ tion and is applying s. 25, he must consider trade marks which at the date of af plication are already on the register. But he is under no obligation to consider other pending applications (whether earlier or later in date) which may or may not be granted.

In the present case the registrar granted the application for “ Ditrene ” on 4th October 1946, but the grant of the trade mark dated back to 19th June 1945 ; s. 47. What were then the trade marks on the register ? “ Dithane ” was not one of them, and, indeed, “ Dithane ” is not yet on the register. It follows that at the date which must be taken to be the date when the application for registration of “ Ditrene ” was determined no obstacle was presented under s. 25 by the pending application for “ Dithane.” Accordingly, as at the date which the Act prescribes to be the date of registration, the application for the registration of “ Ditrene ” was properly granted, it being a registrable mark as an invented word, there being no trade mark already on the register which presented an obstacle to its registration, and there being no opposi­ tion.

But under s. 71 (1) (6) a trade mark can be expunged from the register if, even though it may originally have been rightly registered, it wrongly remains on the register. Accordingly, the next question is whether “ Ditrene ” can rightly remain on the register.

As matters now stand the answer must in my opinion be in the affirmative. There is not on the register any other trade mark which would justify the removal of “ Ditrene ” and no other ground for its removal has been suggested except a ground connected with the pending application for registration of “ Dithane.”

But opposition proceedings to the registration of “ Dithane ” are now pending. Most (but not all) of the grounds of opposition are based upon the fact that “ Ditrene ” is now on the register. But if the word “ already ” in s. 25 by virtue of s. 47 refers to the date of application, then the position is that at that date of application (20th April 1945) “ Ditrene ” was not on the register and therefore cannot under s. 25 be used as the basis of any objection to the registration of “ Dithane.” Thus in considering the opposition proceedings the registrar should leave out of account altogether the registration of “ Ditrene ” and should deal with the application for the registration of “ Dithane ” as if “ Ditrene ” had never been heard of in the registry. The result upon the materials at present before the Court would be that registration should be granted to “ Dithane.”

If this happens, both marks will be registered marks. The owner of “ Dithane ” will then be in a position to apply for the rectification of the register by expunging “ Ditrene ” on the ground that registration was granted as at a time (June 1945) which was subsequent to the placing of “ Dithane ” on the register, which must be considered to have taken place in April 1945. “ Dithane ” being on the register as in April, the registration of “ Ditrene ” in June would be calculated to deceive and therefore it should then be held that “ Ditrene ” was wrongly remaining on the register and should be expunged.

The result is that, at a later stage, if there is no alteration in or addition to the facts as now presented to the Court, the respondent will be able to secure the removal of “ Ditrene ” from the register ; but the application to expunge should, in my opinion, fail at the present stage. Thus the ultimate result will be the same as that reached by Williams J., but that result will be reached as the consequence of different reasoning. In my opinion the strict legal position is that, at the present time, “ Ditrene ” is properly on the register and should not be now expunged, so that the appeal should be allowed.

It might be suggested that, in order to avoid circuity of proceed­ ings, this Court should take a short cut and should now order “ Ditrene ” to be expunged, on the ground that, on the facts as now appearing, it wrongly remains upon the register. But the opposition proceedings to the registration of “ Dithane ” are still pending, and the opponent company is entitled to have its opposition heard upon such evidence as it may be able to produce at the time of hearing. It is possible that relevant evidence (e.g. as to user of marks), in addition to that now before the Court, may be adduced

HIGH COURT

[1948-1949.

in the opposition proceedings. In my opinion the Court should not, before the parties thereto have been heard in those proceedings, make an order which would determine them in favour of the applicant and against the opponent.

Section 71 (1) of the Act provides that the Court, on the applica­ tion of any person aggrieved or of the registrar, may order the rectification of the register. Section 71 (3) provides that “ Notice of every application to the Court pursuant to this section (other than an application by the Registrar) shall be given to the Registrar, who may be heard thereon.” The registrar should not be made a party to an application by a “ person aggrieved ” but notice of such an application should be given to him.

Rich J. In my opinion the order of Williams J. is right. And I approve of the registrar’s suggestion as to the practice to be adopted in similar cases.

The appeal should be dismissed with costs.

Dixon J. This appeal is from an order made in this Court by Williams J. rectifying the Register of Trade Marks by expunging therefrom a trade mark numbered 83906 in class 2 consisting in the word “ Ditrene.” The mark was actually registered on 4th October 1946 but the registration took efiect as from the date of the applica­ tion, which w'as lodged on 19th June 1945. The application was made by the appellants, the Shell Company of Australia Ltd., who claimed to be the proprietors of the mark. The mark was registered in respect of agricultural and horticultural sprays. “ Ditrene ” is

an invented word.

There had been no user of the word in Australia

before the date of the application. But the appellants belong to a group of companies carrying on business in different parts of the world and a few weeks earlier the word had been applied in the United Kingdom by another member of the group to insecticides and sprays there marketed. It must have been a very short time indeed before the lodging of the application in Australia, because all that is deposed to is that from and since the month of May 1945 the mark “ Ditrene ” had been so used. Since that time, however, the word has been used here and in many other parts of the world in the advertisement and sale of the products to which it is applied. Apparently it is applied to preparations based on D.D.T. for use against insect pests in agriculture and horticulture.

The order for the removal of the mark “ Ditrene ” from the register was obtained by the respondents Rohm & Haas Co., a company incorporated in the State of Delaware in the United

States. That company had applied for the registration of another word mark two months before the appellants’ apphcation in respect of “ Ditrene ” was lodged, namely on 20th April 1945. The word mark in respect of which the respondents Rohm & Haas Co. applied is “ Dithane.” The application, which was numbered 83501, was to register “ Dithane ” in class 2 in respect of insecti­ cides, fungicides and disinfectants. “ Dithane ” is an invented word and it too had not been used in Australia before the date of the application to register it as a trade mark. But the word had been registered by the respondents in the United States in October 1944 in Canada in January 1945 and in the United Kingdom in March 1945 and after that it was registered in many other countries. Since 1937 the respondents have been registered in Australia as the proprietors of a trade mark consisting in the word “ Lethane ” in respect of insecticides, fungicides and disinfectants and since apply­ ing for “ Dithane ” they have obtained registration in respect of the same description of goods of another word mark ending in “ thane,” “ Rhothane.” The acceptance of the respondents’ application to register “ Dithane ” was delayed owing to the need arising of satisfying the registrar that the word “ Dithane ” might not be mistaken for the chemical name of an hypnotic drug. It was not until 17th January 1947 that the application for “ Dithane ” was accepted. By that time “ Ditrene ” had been placed upon the register of trade marks. The appellants, the Shell Co. of Australia Ltd., lodged notice of opposition to the registration of “ Dithane ” and they relied, of course, upon s. 25 of the Trade Marks Act 1905­

1936. That section provides that the registrar shall not register in respect of goods a trade mark identical with one belonging to a differ­ ent proprietor which is already on the register in respect of the same goods or description of goods or so nearly resembling such a trade mark as to be likely to deceive. By their counterstatement the respondents Rohm & Haas Co., admitted that the trade marks “ Dithane ” and “ Ditrene ” bear such resemblance to each other as to be calculated to deceive and cause confusion in trade and in the public mind when applied to the same description of goods and they admitted that the goods covered by the two applications are of the same description.

Upon this proposition the parties are agreed. But it is a proposi­ tion at variance with the view upon which the registrar proceeded when he accepted the application of the appellants, the Shell Co. of Australia Ltd., for the registration of “ Ditrene ” as a trade mark. For it appears from the search report of the registrar’s office, which was put in evidence, that application 83501 {scil. for the registration

Segment #3

HIGH COURT

[1948-1949

accrued to it upon the lodging of the application : this was the efjgp ̂Qf granting the subsequent application made by the appellant for the registration of “ Ditrene.”

For a very long time it has been a fundamental principle of the legislation providing for the registration of trade marks that the lodging of an application for registration gives to the applicant certain rights in respect of the user of the trade mark of which registration is sought. Section 76 of the Patents Designs and Trade Marks Act 1883 (Imp.) took registration as the starting point. The section said “ Registration of a trade mark shall be deemed to be equivalent to public use of the trade mark.” In Barlow & Jones V. Jahez Johnson & Co. (1), Chitty J. expounded the reason for the enactment of this section. Section 17 of the Patents Designs and Trade Marks Act 1888 (Imp.) took the application for registration as the starting point. This section was in these terms : “ Applica­ tion for registration of a trade mark shall be deemed to be equivalent to public use of the trade mark, and the date of the application shall for the purposes of this Act be deemed to be, and as from the first day of January 1876 to have been, the date of registration.” The enactment of this section was suggested in par. 33 of the recom­ mendation of the Trade Marks and Designs Inquiry Committee of which Lord Herschell was the President (vol. LXXXI. Accounts and Papers Session, 9th February 1888 to 24th December 1888). In par. 33 they said : “ We think that s. 75 should be amended by inserting before the word ‘ registration ’ the words ‘ appheation for ’ and that it should be provided that registration should date from the application and that the term should run from that date.” The committee added : “ This is at present in effect provided for by rule but doubts have been entertained whether the rule is not ultra vires, and these doubts should be set at rest by legislation. The legislation should be made to cover the past practice.”

In view of the arguments in the present case, it is instructive to refer to the evidence given to the Committee regarding the proposal to amend s. 75. At p. 61, pars. 1136-1138 of the Minutes of Evidence, Edmund Johnson, manager of the Trade­ mark Protection Society and honorary secretary of the London Trade Marks Committee, said : “ Then in s. 75 we come to ‘ effect of registration.’ It says ‘ registration of a trademark shall be deemed to be equivalent to public use of the trademark.’ The interpretation of that I believe is that after the registration has been effected, registration dating from the time of application and not of registration, the public user of the mark will be

.

(1) (1890) 7 R.P.C. 395.

recognized as from that date. I think it would be a very valuable alteration if that could be extended a little further by adding the words at the commencement ‘ application for registration,’ because that would create a user for the applicant as from the date at which he apphes before he gets it registered. Now it is only created as from the same date, but after it is registered. It would make this difference, an application may be pending for a year at the Patent Office. There may be an opposition to it. There may be little difficulties with the office or something which prevents the registra­ tion being completed, and all that time the applicant could never say that he has a user ; and many applicants prefer not to use a mark practically in trade until registered, so that they are at a disadvantage in any opposition if any new man spring up who says he meanwhile has been using the mark while the original applicant has not used it. It dates back to the day of the application, but that is only operative when the registration is completed. Mean­ while, the apphcant has nothing, but if his user were to date from the appheation instead of from the registration by statute, he would have a user as from the date when he first applies, and would be able to claim that user during the progress of the registration.” At p. 123, par. 2116, J. Lawry Whittle, Officer under the Comptroller superintending the administration of the trade marks portion of the Act of 1883, said : “ The next suggestion relates to s. 75 of this Act. Section 75 might be modified to the extent that before the word ‘ registration ’ in the sentence ‘ registration of a trademark shall be deemed to be equivalent to public use of the trademark ’ ‘ appheation for ’ should be inserted. That is a suggestion also, the importance of which I think would be greatly reduced by the improvement in the despatch of business ; as the suggestion stands, it will be somewhat difficult to carry out. If ‘ appheation ’ was made equivalent to user, that would be a sort of quasi title to a lot of marks that the ComptroUer refuses, but the difficulty is that where the mark is not dealt with for a long time, of course the delay creates trouble outside.” At p. 184, pars. 3123-3124, Henry Reader Lack, Comp­ troller of the Patent Office under the Act of 1883, said “ Then as to s. 75, they merely propose instead of putting ‘ registration of a trade mark ’ to put ‘ the appheation for registration of a trade mark shall be deemed to be equivalent to public use of the trade mark.’ It is so really, because the trademark dates from the date of the appheation. It ought to have been put into the Act. It was only because it was originally in the rules that it was continued ; but it might be put into the Act.”

HIGH COURT

[1948-1949.

Neither s. 75 of the Act of 1883 nor s. 17 of the Act of 1888 is repeated in terms in the Trade Marks Act 1905-1936 of the Common­ wealth of Australia. But the principle introduced into the legis­ lation by s. 75 and subsequently by s. 17 is in my opinion funda­ mental to this Act and is embodied in the sections to which I have referred.

It may be deduced I think from some observations by the learned authors of Kerly on Trade Marks (1927) 6th ed., at p. 26, that the English Act of 1905, which repealed the Acts of 1883 and 1888 so far as they related to trade marks, does not abandon the principle embodied in s. 17 of the Act of 1888. They say : “ Actual u.ser is not necessary before registration; this was decided under the Act of 1875 in In re Hudson's Trade-Marks (1). Apart from the Acts user was necessary to constitute a mark to be a trade mark. The definition of ‘ trade mark ’ quoted above includes a mark ‘ proposed to be used ’; this is much simpler than the earlier and somewhat clumsy provision that registration, or, in the Act of 1888, applica­ tion for registration, should be deemed equivalent to public use.” See also Sebastian's Law of Trade Marks, 5th ed. (1911), at p. 9.

It follows that it was contrary to the intention and principle of the Trade Marks Act 1905-1936 to grant registration of the trade mark “ Ditrene ” while the earlier application for the registration of the trade mark “ Dithane ” was pending. Accordingly, it was right to order that the register be rectified by expunging the entry of “ Ditrene.”

In the view which I take it is unnecessary to deal with the argu­ ments based upon s. 25, which were advanced on behalf of the respondent in support of the order.

I agree that it is a better practice to give notice to the registrar of an application under s. 71 than to make him a party to the application.

In my opinion the appeal should be dismissed.

Webb J. I agree with the Chief Justice that when the registrar is dealing with an application for registration of a trade mark he must take into account the state of the register as at the date of the application. But Williams J. held that s. 47 necessarily implies that, as between two persons who ajjply to register marks proposed to be used upon the same goods or description of goods which are identical or so nearly resemble one another as to be likely to deceive, the person who lodges the appheation which is prior in point of time, is, in the absence of any other circumstance, entitled to have

(1) (1886) 32 Cb. D. 311.

his mark registered and to oppose the other mark being registered,

H. C. OF A.

or if it has been registered, to have the entry expunged on the ground

1948-1949.

that it was wrongly made in the register.

Williams J. also held,

Shell

and I agree, that the appellant’s use and advertisement of “ Ditrene ”

Co. OF

Ahstbalia

as a trade mark since July 1947 cannot affect any priority which Ltd.

the applicant may have acquired by its earlier application.

V.

Rohm

and

Prior registration and use of “ Ditrene " are the only grounds of opposition to the registration of the respondent’s trade mark

Haas

Co.

“ Dithane.”

Webb J.

I think the judgment of Williams J. was right, in the result at all

events.

I agree that the registrar should be given notice of an application imder s. 71 and not be made a party thereto.

I would dismiss the appeal.

Appeal dismissed with costs.

Solicitors for the appellant, SI;/ & Russell.

Solicitor for the respondent company, T. J. Purcell.

Solicitor for the Registrar of Trade Marks, H. F. E. Whitlam,

Crown Solicitor for the Commonwealth.

J. B.