Again, Cotton L.J., in delivering judgment in the case of In re Hudson's Trade Marks[58][2] , where a question was raised under the Trade Marks Act of 1875, adverts to the same aspect of the question. He says:?"The mark proposed to be registered had never been used before the application, and accordingly the point, and it is a most important point, which we have to consider is this, whether the Act of 1875 enabled anything to be registered as a trade mark which had not been already used, and there is a very considerable difficulty on that point, because the very essence of a trade mark independently of the Act was user. The right could be gained, and only gained, by use in connection with articles sold by the person claiming to be entitled to the trade mark in such a way as to distinguish those goods as his goods. That was the very essence of a trade mark, and we find that there is a distinction in the Act of 1875 between those things which were used before the Acts as trade marks and those which had not been so used."
Not only was the trader's right to property in his trade mark recognized, but the exclusiveness of his right of user was also recognized. This recognition of the right of one person to use a particular mark to the exclusion of all other persons?a right in the nature of a monopoly?was founded upon public policy. Sebastian on Trade Marks, 4th ed., at p. 5, quoting from the judgment of the Supreme Court of the United States in Manhattan Medicine Co. v. Wood[59] [3], puts the true ground when he says:?"The benefits derivable from the recognition of the exclusive right of a trader to his trade mark are apparent from the consideration that the "trade mark is both a sign of the quality of the article and an assurance to the public that it is the genuine product of his manufacture. It thus often becomes of great value to him, and in its exclusive use the Court will protect him against attempts of others to pass off their products upon the public as his. This protection is afforded, not only as a matter of justice to him, but to prevent imposition upon the public." " The learned author goes on to point out (at p. 9) that on the same ground: "A trade mark cannot exist in gross and unattached to specific articles, for, if that could be so, the mark might come to be an instrument of deception, instead of a guarantee of genuineness." These principles, interwoven with the very origin and growth of the trade mark as recognized by all commercial nations, would seem to indicate those essential characteristics which distinguish it from all other marks used in trade.
All definitions of the term agree on certain essentials founded in the origin and very nature of a trade mark. First, the proprietor of a trade mark must have some trade or business connection with the goods, such as of owner, manufacturer, seller, or as having selected, packed, or performed some other trade or business operation on them, and the mark must be used by him in the course of and in relation to that business connection. Secondly, the mark must be capable of distinguishing the particular goods on which it has been used from other goods of a like character in relation to which other persons have had a business connection of the like kind. These essentials would seem to follow necessarily from the origin of the trade mark, namely, its use by a trader in his business to distinguish his goods from those of other persons. The latter essential is the necessary basis of the right to exclude other persons from the use of the trade mark?the monopoly allowed in the public interest; for it is by virtue of its distinctiveness that the preservation and protection of the trade mark of one person against all the world is in the public interest.
In perhaps the broadest definition to be found in the textbooks, that by a well known American writer on trade marks, Hopkins (Hopkins on Trade Marks, 2nd ed., p. 30), the importance of "distinctiveness" as an essential of a trade mark is emphasized. "A trade mark is a distinctive name, word, mark, emblem, design, symbol, or device used in lawful commerce to indicate or authenticate the source from which has come, or through which has passed the chattel upon and to which it is applied or affixed." In a note on the same page the learned author explains that "distinctive" as used in the definition means that the mark must be something which "shall be capable of distinguishing the particular goods in relation to which it is to be used from other goods of a like character belonging to other people." The part of the explanation in inverted commas is an extract from the judgment of Lord Russell of Killowen C.J. in Rowland v. Mitchell[60][4] .
I take it, therefore, as established that the concept covered by the legal expression "trade mark," as used by the legislature, the Courts, and the commercial community in England and Australia at the time of the passing of the Constitution, necessarily involved the two essentials I have mentioned. It would follow that the power conferred upon the Commonwealth Parliament to make laws in respect of trade marks extends only to trade marks having these essential qualities, and that it cannot extend to any mark used in trade which is wanting in any of those essentials. Nor can the Commonwealth Parliament give itself jurisdiction merely by declaring that a mark created by its authority for use in trade is a trade mark within the meaning of the Constitution. It cannot thus expand its powers by its own legislative act and so assume a larger control over the internal trade of a State than the Constitution has conferred on it.
I come now to the next question, namely, whether the workers' trade mark which is the subject of these proceedings possesses those essential characteristics which the term "trade mark," as used in the Constitution, connotes. In so far as Australia is concerned the mark is entirely the creation of the Commonwealth Trade Marks Act 1905. The Act provides a special register for it, places it in a class by itself, and declares that a large number of the provisions relating to ordinary trade marks in the legal and commercial sense of the term shall not apply to it. Any individual Australian worker, or any association of workers corporate or unincorporate, or any number of associations acting together, may register a worker's trade mark, being a distinctive device, design, symbol or label registered for the purpose of indicating that the articles to which it is applied are the exclusive production of the worker or members of the association or of the association of associations, and then the worker or association or association of associations as the case may be shall be deemed the registered proprietors of the trade mark and may institute legal proceedings to prevent and recover damages for any contravention of the Act in so far as it relates to workers' trade marks. A penalty is imposed on any person who falsely applies the trade mark to any goods for purposes of trade or sale or knowingly exposes for trade or sale goods on which the mark is falsely applied, or who knowingly imports into Australia any goods not produced in Australia to which the mark is falsely applied. The mark shall be deemed to be falsely applied unless the goods to which it is applied are exclusively the products of the workers, or the members of the association of workers, or of the members of the association of associations, and unless it is applied to the goods by the employer for whom they are produced or with his authority by the worker or a member of the association of workers or association of associations.
It is to be observed that the proprietor of the trade mark is the worker who, or the association of workers or the association of associations, as the case may be, which registers it, but it is not to be placed on the goods by the proprietor of the trade mark, but by the employer for whom they are produced, or by the worker or member of the association with the employer's authority. In so far as the individual Australian worker is concerned, it is quite possible that all the conditions may exist necessary to constitute the workers' mark a trade mark in the sense in which I have pointed out the word is used in the Constitution. But that question does not arise at present. We are concerned with the Act in this case only in its application to workers' trade marks registered by associations of workers. Let us apply the test of the two essentials, as I have explained them, necessary to constitute a trade mark within the meaning of the Constitution. The proprietor of the mark is the association. But the association has no business connection with the goods. Individual members of the union may have such a connection as having taken part in one of the processes of manufacturing or handling them. But the individual members are not proprietors of the trade mark, nor can they apply it to the goods except when authorized to do so by the manufacturer. The latter, however, may apply it to his goods whether the members of the union or association consent or not, so long as the goods have been manufactured by union labour. It may be applied to the goods by the manufacturer, or it may be applied with his authority by the workmen who have assisted in the manufacture. But neither the manufacturer nor the workmen are proprietors of the mark. On the other hand, the proprietor of the mark, the association, has no business connection with the goods, nor has it any right to apply the mark to them. So that the ownership of the trade mark is completely divorced from any business connection with the goods, and from any right to use it on them. The mark, therefore, fails in the first essential.
Again, assuming that the manufacturer or the men, members of the association, who have themselves taken part in the manufacture, place the mark on the goods as the association's agent, they do not do so for the purpose of informing the public that either the manufacturer or any individuals or any corporation have had any business connection with the goods, nor that the association has had any business connection with them, but for the purpose of indicating that the persons unnamed who took part in the different processes of manufacture were all members of the employés' union of the trade in question. There is obviously nothing in such a mark or in its application to distinguish the product of one brewery from that of another.
The different breweries of New South Wales, for instance, each selling its own manufacture, are, it must be assumed, in competition for the favour of the public. But the workers' trade mark in no way aids the public to distinguish one set of goods from another. Every brewer employing union labour may use the mark. Its use distinguishes those who do not from those who do employ union labour. But amongst those who employ union labour there is no distinction of goods or of manufacture. Indeed, it is no part of the object of the mark or its application to make any such distinction. Its object simply is to distinguish the breweries in which union labour is employed from those in which union labour is not employed, just as a mark might be used to distinguish goods made in Australia or by white labour from those made abroad or by coloured labour.
But that is not the kind of "distinctiveness" in a mark which enables the public to distinguish the goods with which one person or corporation has had a business connection, using that phrase in the sense which I have explained, from those with which another person or corporation have had a business connection of a like kind. The mark is wanting, therefore, in the second essential, that of "distinctiveness," which is inseparable from the very nature of a trade mark as known to the law at the time when the Constitution was passed. No doubt, the sections under consideration provide that the "device, design," &c., shall be "distinctive," but in the context that can mean nothing more than "distinctive" within the limits fixed by the Statute. And, as I have pointed out, it is impossible that the mark as created can have any "distinctiveness" in the sense in which the law understands that expression.
It may be argued that the failure of the mark in the first essential might, as far as trade unions are concerned, be remedied by State enactments investing those bodies with fuller powers of carrying on business. As far as the present case is concerned there is nothing to show that the defendant union could carry on a business in connection with which the mark in question could be used. And it is difficult to see how any trade union under the laws of the several States could lawfully carry on such a business. But I do not base my judgment on that ground. It is open to the legislature of any State to create trade unions or any other legal entities and to invest them with such powers of trading and business as it may deem necessary. And a trade union or association might be endowed with powers of business and trading which would enable it to use a trade mark of the ordinary commercial kind. But, whatever its powers might be, it would be impossible to make up for the absence in the workers' trade mark of that characteristic of distinctiveness inherent in the very nature of a trade mark in the recognized legal sense, but which is entirely foreign to the nature and purpose of the mark created by Part VII. of the enactment now under consideration.
No comments:
Post a Comment