Practitioners in trade mark opposition proceedings can rely on the Court's jurisdiction under s 44 of the Trade Marks Act 1905-1948 (as preserved) as a valid exercise of judicial power, and the Court's determination is binding on the Registrar.
Later decisions that cite Farbenfabriken Bayer Aktiengesellschaft v Bayer Pharma Pty Ltd
Decisions cited by Farbenfabriken Bayer Aktiengesellschaft v Bayer Pharma Pty Ltd
FARBENFABRIKEN BAYER AKTIENGESELLSCHAFT v. BAYER PHARMA PTY. LTD. [1959] HCA 32; (1959) 101
CLR 652
Constitutional Law (Cth)
Dixon C.J.(1), McTiernan(2), Kitto(3), Taylor(4), Menzies(5) and Windeyer(6) JJ.
CATCHWORDS
Constitutional Law (Cth) - Judicial power - Statute giving appeal to Court from decision of Registrar of Trade Marks on opposition to registration of mark - Provision that Court should determine whether application ought to be refused or granted with or without modifications or conditions - Nature of judicial power - Whether judicial power conferred - Provision giving right of appeal in similar language from registrar to Law Officer - Validity - Whether grant of judicial power or administrative power - The Constitution (63 & 64 Vict. c. 12), ss. 76 (ii), 77 (iii) - Trade Marks Act 1905-1948, s. 44.
HEARING
Melbourne, 1959, June 8, 9;DECISION
July 23.2. The provision really in question is s. 44 which is as follows: - "(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." The decision of the Law Officer to which s. 44 relates is the latter's determination of an appeal from a decision of the Registrar of Trade Marks upon an opposition. Section 45 provides that if either party so desires and gives written notice of his desire an appeal shall be taken direct from the registrar to the Court without any appeal to the Law Officer. It does no more than provide a procedure for invoking the jurisdiction which s. 44 purports to give. "The Court" is an expression defined by s. 4. It means the High Court or the Supreme Court of the State in which the Trade Marks Office is situate or a Justice thereof. It is s. 43 that gives an appeal to the Law Officer. The section is as follows : - "(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." The expression "Law Officer" is also defined by s. 4. It means the Attorney-General or Crown Solicitor of the Commonwealth. By the Solicitor-General Act 1916, s. 3 (1), however, the Attorney-General is authorized to delegate his powers and functions under an Act to the Solicitor-General and this power to delegate would extend to such a function as that vested in him by s. 43 of the Trade Marks Act 1905-1948 to hear an appeal from the registrar. The result is that an appeal may be made from the registrar to the Law Officer and one or other of these three officers may hear the appeal. Alternatively, under s. 45 an appeal may be taken direct to the Court. (at p657)
3. An attack is made upon s. 44 as an attempt to con'er 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. (at p657)
4. 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. Under s. 38 of the Act of 1905-1948 any person might lodge with the Trade Marks Office a notice of opposition to the registration of a trade mark setting out his grounds. It was the duty of the registrar to send a duplicate of the notice of opposition to the applicant (s. 40). The applicant was required to lodge a counter-statement (s. 41). The registrar then fixed a day for the hearing of the application and on the day so fixed he heard the applicant for the trade mark and the opponent and decided whether the application was to be refused or whether it was to be granted either with or without any modification or conditions (s. 42). It is from that decision that s. 43 gave the party aggrieved an appeal to the Law Officer. From the Law Officer's decision s. 44 conferred a right of appeal to the Court. Clearly enough an opposition involves an assertion on the part of the applicant and a denial on the part of the opponent of a claim of right. And "a claim of right" is the test of a "matter" formulated in In re Judiciary and Navigation Acts [1921] HCA 20; (1921) 29 CLR 257 . (at p658)
5. 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] HCA 34; (1955) 92 CLR 177, at pp 186, 187 ; The Commonwealth v. Anderson [1957] HCA 44; (1957) 97 CLR 345 ; Federal Commissioner of Taxation v. Munro [1926] HCA 58; (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. Section 47 should probably be construed as imposing upon the registrar an imperative duty to register when the Court has decided against an opposition. It is true that in s. 47 the words "unless otherwise prescribed by the regulations" may seem to qualify the duty but these words appear to affect only the date to be given to the registration. A regulation did exist which assumed that these words bore a wider interpretation. It is now repealed. It was reg. 38 of the Trade Marks Regulations 1913-1950. As it is repealed little need be said about it. A comparison of the regulation with s. 47, however, should be enough to show that it exceeded any power that s. 47 could confer. 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. (at p659)
6. 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 p659)
7. We are not concerned on this occasion with the validity of the provision giving an appeal to the Law Officer but there is nothing in what has been said to cast doubt upon the operation of s. 43. The decision of the Privy Council as well as of this Court in the case of the Shell Oil Company named in this Court British Imperial Oil Co. Ltd. v. Federal Commissioner of Taxation [1926] HCA 58; (1926) 38 CLR 153; (1931) AC 275; (1930) 44 CLR 530 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. They must of course be consistent in their content with that construction but that is a condition which s. 43 satisfies. (at p660)
8. For the foregoing reasons the question in the special case should be answered Yes. The respondent should pay the costs of the special case. (at p660)
McTIERNAN J. I agree in the reasons of the Chief Justice. In my opinion the question in the special case should be answered Yes. (at p660)
KITTO J. I agree in the judgment of the Chief Justice. (at p660)
TAYLOR J. The contention that s. 44 of the Trade Marks Act 1905-1948 (as continued in force by s. 5 of the Trade Marks Act 1955-1958) purports to confer upon this Court, and upon the Supreme Courts of the several States, functions which are outside the scope of Chap. III of the Commonwealth Constitution is, in my view, without substance and should be rejected. It seems to me clear that the question whether a so-called applicant has established a right to registration of his mark may properly be made the subject of the exercise of judicial power (cf. Jafferjee v. Scarlett [1937] HCA 36; (1937) 57 CLR, 115, at p 126 ). Accordingly the provisions of s. 44 are justifiable as a law conferring original jurisdiction on the High Court in matters arising under a law made by the Parliament and, at the same time, investing State Courts with the like jurisdiction. (at p660)
MENZIES J. I agree that the power conferred upon the High Court by ss. 44 and 45 of the Trade Marks Act 1905-48 to hear the parties and determine whether an opposed application for a trade mark ought to be granted or refused is judicial power. I do so for the reasons given by the Chief Justice. (at p660)
WINDEYER J. I agree that for the reasons given by the Chief Justice this Court has jurisdiction to hear this appeal. (at p660)
ORDER
Question answered Yes. Order that the respondent pay the costs of the case stated.