Some observations of Mr. Justice Devens, delivering judgment in the Supreme Court of Massachusetts in Weener v. Brayton , are worthy of consideration in this connection. In that case it was sought to protect as a trade mark the use of a union label much the same as the workers' trade mark in this case. He said:?"However disreputable and dishonest it may be falsely to represent goods made by other persons to have been made by members of the union, upon which subject there can be but one opinion, those who do not carry on any business to which the use of the label is incident, who have not applied it to any vendible commodity which has been placed upon the market in which they deal, or of which they are the owners or manufacturers, cannot maintain a bill to restrain the use by the defendant of the label as a trade mark. It wants every essential element of such a mark; it does not indicate by what person articles were made, but only membership in a certain association; there is no exclusive use of it, but many persons not connected in business and unknown to each other may use it; its rightful use is not connected with any business; it cannot be transferred with any business, but such use is dependent only on membership in the association."
The more the matter is examined the plainer does it become that the whole nature and purpose of the workers' trade mark is different from that of the ordinary trade mark as known to the law. The latter originated in its use by traders for trade purposes, and has for its sole object the benefit and interest of the trader in competition with other traders. It has no other purpose to serve, and it has won its recognition as a necessary incident of trade for the benefit and protection of traders and of the purchasing public. The workers' trade mark is not an incident of the business in which it is used; its object is not the benefit of the manufacturer who uses it, nor does the benefit to the workman who has taken part in the manufacture arise directly from the use of the mark in the business?his benefit is the indirect gain which may come to him by advancement of the interest of his union generally. In my opinion, therefore, the workers' trade mark is wanting in the essential characteristics of a trade mark within the meaning of pl. xviii. of sec. 51 of the Constitution, and the Commonwealth Parliament in enacting the provisions of Part VII. of the Trade Marks Act has exceeded the powers conferred upon it by that sub-section.
But it was argued that the legislation complained of is not all void, and that the registration of the workers' trade mark would stand good in respect of such use of it as it was within the power of the legislature to enact. Whether that argument can be allowed to prevail in any instance depends upon the form of the Statute the validity of which is questioned. It may be taken, as I have already pointed out, that the power to make laws in respect of trade and commerce with other countries and amongst the States involves the right of legislating in respect of marks used in that trade and commerce. But the Parliament could validly exercise that power only by an enactment which confined its operations within those limits. The decision of the Supreme Court of the United States in the Trade Mark Cases is exactly in point. The United States Constitution conferred on Congress no special power of legislation in respect of trade marks. But that body, assuming to have the power under the authority which the Constitution has conferred on it of making laws relating to copyrights, passed an Act purporting to regulate trade marks generally. The Court held, assuming that the commerce power included the power to regulate trade marks used in the commerce under the control of Congress, that it could not be exercised except by a Statute which on the face of it confined within those limits the general expressions used in its provisions. Mr. Justice Miller :?"When, therefore, Congress undertakes to enact a law, which can only be valid as a regulation of commerce, it is reasonable to expect to find on the face of the Statute, or from its essential nature, that it is a regulation of commerce with foreign nations, among the several States, or with the Indian Tribes. If it is not so limited, it is in excess of the power of Congress. If its main purpose be to establish a regulation applicable to all trade; to commerce at all points, especially if it is apparent that it is designed to govern the commerce wholly between citizens of the same State, it is obviously the exercise of a power not confided to Congress."
That principle is exactly applicable here. There is nothing in Part VII., the only portion of the Trade Marks Act 1905 brought into question, to confine its operation exclusively to inter-state trade or trade with other countries, and, as there is no way by which the Court could in the Statute separate that which is within from that which is without the powers of the legislature, the whole Part must be declared void.
It was also contended that the Act was at least valid as an exercise of the power to legislate in respect of trade and commerce with other countries inasmuch as the provisions of the Statute in this respect separated that which was within from that which was without the power. Sub-sec. (c) of sec. 24 makes it an offence knowingly to import into Australia any goods not produced in Australia to which there is applied the workers' trade mark, a provision which may be assumed to be within the power of the legislature as a law respecting commerce with other countries, and the argument is that the registration under sec. 75 which is attacked may well stand as being necessarily in aid of that provision. Following that view the Court is asked, in effect, to strike out all the other sections relating to the workers' trade mark, and to turn the enactment into one having for its sole object the making of an offence to import into Australia goods bearing when imported the workers' registered label. But the purpose and object appearing on the face of the Act as passed was to enable goods manufactured in Australia to be so marked, and thus to give the Australian worker the benefits which would follow. Sub-sec. (c) was only ancillary to and in aid of that main purpose. We are thus asked to declare constitutional a provision which is merely ancillary to the main object, which, for the purpose of this argument, is admitted to be ultra vires.
The rule which should guide a Court in determining whether a portion of a Statute may be allowed to stand, although other portions are beyond the powers of the legislature, is well stated by the learned author of Black's Construction and Interpretation of Laws (1896 ed.), p. 96. "In such cases," he says, "it is the duty of the Courts not to pronounce the whole Statute unconstitutional, if that can be avoided, but, rejecting the invalid portions, to give effect and operation to the valid portions. The rule is, that if the invalid portions can be separated from the rest, and if, after their excision, there remains a complete, intelligible, and valid Statute, capable of being executed, and conforming to the general purpose and intent of the legislature, as shown in the Act, it will not be adjudged unconstitutional in toto, but sustained to that extent."
How could it be said that, after striking out the portions of Part VII. that are invalid, there remained, to apply the words just quoted, "a complete, intelligible, and valid Statute, capable of being executed, and conforming to the general purpose and intent of the legislature?" To allow that portion of Part VII. to stand as valid, and to declare the rest of it unconstitutional, would be, in my opinion, to bring into operation a law entirely different in its general purpose and intent from that which the legislature enacted, a result which this Court has no jurisdiction to bring about. For these reasons I am of opinion that the whole of Part VII. must be declared void as being beyond the power of the Commonwealth Parliament. That being so, it would follow that the registration complained of by the plaintiffs is entirely illegal.
But that does not determine the controversy between the parties. There still remains the first ground of objection that the statement of claim, as explained by the particulars, discloses no cause of action maintainable by the plaintiffs or either of them against the defendants or either of them. This Court would not, of course, decide the matter on any mere question of form, and would make any amendments in the designation of the parties or otherwise which might be necessary to determine the question substantially at issue, which I take to be this:?Has the Attorney-General for New South Wales or have the plaintiff breweries on the facts before us any cause of action against the defendants? The defendants put their contention in two ways. First, that the plaintiff breweries have shown no facts entitling them to damages or relief of any kind at the hands of the Court; secondly, that on the facts and circumstances stated in the special case the Attorney-General for New South Wales has shown no right to bring the complaint of the plaintiff breweries as relators before the Court.
Before examining these objections it is necessary to determine what it is that the brewery companies complain of. I take it as established that the Commonwealth Parliament exceeded their powers in enacting Part VII. of the Trade Marks Act 1905. It follows that the establishment of the registry of workers' trade marks is without any authority, and that the Registrar of Trade Marks, a public officer of the Commonwealth, purporting to act under the authority of a Commonwealth Statute, has placed the defendant union trade mark on the register, and that the defendant union threaten and intend to use the trade mark as a workers' trade mark duly registered pursuant to the Act; in other words, that they intend to exercise all the rights which registration of the trade mark purports to give them. The plaintiff breweries complaint is, in substance, that the illegal registration complained of will interfere with their freedom to carry on their business in their own way by compelling them to elect whether they shall use or shall not use the trade mark. They can acquire the right to use the trade mark only by employing in their respective businesses union men exclusively. If they do so they will incur the displeasure of many of their old customers; if they do not, they will displease all union men and their sympathizers. From these considerations they ask the Court to infer, and I think not unreasonably, that whatever course they may take must result in the loss of some of their present business, and they also ask the Court to infer that from this interference with their right to carry on their business in their own way they will suffer pecuniary damage. In addition to that the Attorney-General for New South Wales alleges that the establishment of the registry and the registration of the trade mark, being illegal acts in violation of the Constitution, are an infringement of the rights of the State in the control of its internal trade and commerce, and injurious to the people of the State, and in the circumstances that have arisen are especially so to the relators.
In my opinion, the plaintiffs' contention must be upheld on both grounds. As to the first, In re Powell's Trade Mark is a strong authority in the plaintiffs' favour. In that case the decision of Chitty J. was affirmed by the Court of Appeal and afterwards by the House of Lords. The point there involved was, not whether the applicants had proved or could prove damage by reason of the presence on the register of the trade mark complained of, but whether they were "parties aggrieved" within the meaning of the English Trade Marks Act, and as such entitled to make application under the section which gave a special remedy. Bowen said:?"But then there is the other point made by the appellant, that the respondents to this appeal are not persons who are aggrieved. Persons who are aggrieved are persons who are in some way or other substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained. It is very difficult to frame a nearer definition than that. In the Apollinaris Case it was pointed out, not as a complete or exhaustive definition, that people would be aggrieved if they were in the same trade and dealt in the same article. To my mind, it is equally true that persons would be aggrieved if they are in the same trade, and might reasonably be expected to deal in the same article, though not prepared to prove at the moment that they had formed a clear determination to do so. Supposing that this mark ought not to be on the register, it hampers those who are in the trade and who might wish to consider the question of embarking in another branch of the trade if lawfully entitled to do so. It would be, to my mind, an unbusinesslike construction to place on the term "aggrieved," to say that it could only be applicable to those who actually had formed a fixed and crystallized intention of dealing in the particular article if permitted to do so. If a man is hampered in his arrangements of business matters in the future by the fact that a trade mark is on the register which ought not to be there, he is a person who, to my mind, is sufficiently aggrieved to come within the section."The principle there laid down is, it seems to me, equally applicable to proof of the necessary damage or threatened damage necessary to support a claim to relief before this Court. If there is reasonable ground for supposing, as I think there is, that the registration of the defendant union's workers' trade mark is likely by interfering with the plaintiffs' right to carry on their trade in their own way to result in pecuniary loss in the manner which they ask the Court to infer, it cannot I think be said that damage flowing from such loss would be so remote as to prevent its being the foundation of their right to relief in this Court. The right of the Attorney-General for New South Wales rests, of course, upon a different ground. It is a principle well established in British law that when a corporation or public authority clothed with statutory powers exceeds them by some act which tends in its nature to interfere with public rights and so to injure the public, the Attorney-General for the community in which the cause of complaint arises may institute proceedings in the Courts of that community, with or without a relator, according to circumstances, to protect the public interests, although there may be no evidence of actual injury to the public. Attorney-General v. Shrewsbury (Kingsland) Bridge Co. was a suit for an injunction to restrain a company from constructing a railway bridge. The construction was authorized by a Statute which provided that the powers given under it would lapse if not exercised within five years. Notwithstanding that the period had elapsed, the company was proceeding with the work and was about to apply to Parliament for a renewal of their powers. There was no evidence of any actual injury to the public. Fry . He said:?"One of the earliest cases on the subject is Attorney-General v. Oxford, Worcester, and Wolverhampton Railway Co. . There, at the instance of the Attorney-General, the Court restrained the opening of a railway not authorized by the Board of Trade, and Lord Romilly, M.R., said that "the view he took of the case was this, that undoubtedly the Attorney-General might apply to the Court in cases of nuisance. It was properly said on the other side that in all such cases the Court required that the nuisance should be proved. But he was also of opinion that the Attorney-General, as parens patriæ," (meaning thereby, I conceive, as the representative of the parens patriæ), "might apply to the Court to restrain the execution of an illegal act of a public nature, provided it was established that the act was an illegal act and it affected the public generally." "  he quotes Lord Hatherley as saying in Attorney-General v. Ely, Haddenham, and Sutton Railway Co. :?"The question is, whether what has been done has been done in accordance with the law; if not, the Attorney-General strictly represents the whole of the public in saying that the law shall be observed."