HIGH COURT OF AUSTRALIA

                                            Attorney General for NSW

                                                           Vs.

                                            Brewery Employees Union

                           (Griffith C.J., Barton, O'Connor, Isaacs and Higgins JJ.)

                                                   8th August 1908

Griffith C.J.

This is an action brought by the Attorney-General for the State of New South Wales at the relation
of four joint stock companies carrying on the business of brewers in that State, the companies being
joined as plaintiffs. The defendants are the Brewery Employés' Union, (which is a trade union
registered as such in New South Wales), and is also an industrial union registered as such under the
Industrial Arbitration Act 1901 N.S.W., their secretary, and the Commonwealth Registrar of Trade
Marks. The plaintiffs claim (1) a declaration that Part VII. of the Trade Marks Act 1905 (relating to
workers' trade marks) and the regulations thereunder are null and void and that the defendant
Registrar has no authority to keep a register of workers' trade marks under it; (2) a declaration that
the registration of a mark or label which has in fact been registered in the register of workers' trade
marks is without lawful power or authority; (3) a declaration that this mark or label is not a trade
mark; (4) an order to cancel the registration; and (5) an injunction to restrain the defendant Registrar
from keeping a register of workers' trade marks. The action is based upon the contention that Part
VII. of the Trade Marks Act 1905 is not within the competency of the Commonwealth Parliament.

The defendants contend that the Act is within the competency of Parliament, and further that, even
if it is not, the plaintiff companies cannot raise the question in the present action, since no injury has
been done to them by the mere registration of the mark, and that the Attorney-General for a State is
in no better position.

The first condition of any litigation in a Court of Justice is that there should be a competent
plaintiff, i.e., a person who has a direct material interest in the determination of the question sought
to be decided. The Court will not decide abstract questions, nor will it decide any question except
when raised by some person entitled by reason of his interest to claim a decision. This doctrine
should certainly not be relaxed for the purpose of bringing in question the validity of Statutes passed
either by the Commonwealth Parliament or by a State legislature. It is, therefore, material to
consider and deal with this point before considering the substantial point of the validity of Part VII.
of the Act. For, if the plaintiffs are not entitled to ask for a decision, any opinion of the Court given
at their instance would be extra-judicial.

For the purpose of dealing with this objection it must be assumed that Part VII. of the Act is invalid,
and that the keeping of the register of workers' trade marks under it is an assertion of authority
unauthorized by law.

Parts III., IV., V. and VI. (secs. 15 to 73) of the Trade Marks Act follow in the main the lines of the
English Trade Marks Act 1905. The definition of a trade mark uses the word "distinctive," but there
is no formal definition of the word itself, as in sec. 9 of the English Act. Provision is made, as in the
English Act, for rectification of the register on the application of any person aggrieved (sec. 71), but
this provision does not apply to the mark in question. Part VII. (secs. 74 to 77) is headed "Workers'
Trade Marks."

Sec. 74 is as follows:" 74 (1). No person shall? (a) falsely apply to any goods for the purpose of
trade or sale; or (b) knowingly sell or expose for sale, or have in his possession for sale or for any
purpose of trade or manufacture, any goods to which there is falsely applied; or (c) knowingly
import into Australia any goods not produced in Australia to which there is applied a mark which is
a distinctive device, design, symbol, or label registered by any individual Australian worker or
association of Australian workers corporate or unincorporate for the purpose of indicating that
articles to which it is applied are the exclusive production of the worker or of members of the
association (and which mark is hereby declared to be a workers' trade mark), or any mark
substantially identical with a registered workers' trade mark, or so nearly resembling it as to be
likely to deceive. (2) The workers' trade mark is falsely applied unless in truth? (a) the goods to
which it is applied are exclusively the production of the worker or of members of the association; or
(b) The goods to which it is applied are in part but not exclusively the production of the worker or
of members of the association, and the mark is applied in such a manner as clearly to indicate that
its application does not refer to, describe, or designate the parts of the goods not being the
production of the worker or of members of the association; and (c) The mark is applied to the goods
(being goods produced in Australia) by the employer for whom they are produced, or, with the
authority of the employer by the worker or a member of the association registering the mark. (3.) In
this section? "Association" includes any number of associations acting together, and in such case the
members of the "association" shall be the members of the associations which are acting together;
"Production" means production, manufacture, workmanship, preparation or product of labour;
"Produced" has a meaning corresponding with "production."

Penalty: Fifty pounds, in addition to any liability to forfeiture provided by law.

"

Sec. 75 provides that:" (1) A worker or association may register a workers' trade mark in the
prescribed manner and shall thereupon be deemed the registered proprietor thereof, and be entitled
to institute legal proceedings to prevent and recover damages for any contravention of this Part in
respect of that trade mark. (2) A workers' trade mark may be removed from the register for the
causes and in the manner prescribed, and subject thereto the registration of the trade mark shall
continue for fourteen years, at the expiration of which it shall cease unless renewed in the manner
prescribed. (3) A workers' trade mark shall not be capable of assignment either by act of the parties
or by operation of law. (4) Parts III., IV., V. and VI. of this Act shall not apply in relation to
workers' trade marks. (5) A workers' trade mark shall not be registered if it is substantially identical
with any registered trade mark within the meaning of this Act or so nearly resembles it as to be
likely to deceive. "

The respondent union, taking advantage of this provision, have obtained the registration of a mark
or label as a workers' trade mark, as to which it is sufficient to say that in form it is such that, but for
its registration, a mark very like it might be registered under the Act as the trade mark of the
plaintiff companies collectively, or by any of them separately. When I say "very like," I mean so like
that, if the defendants' mark is valid, a mark so used by the plaintiffs would be likely to deceive.
The plaintiffs, other than the Attorney-General, contend that under the circumstances they are
aggrieved by the unauthorized registration of such a mark. They support this contention on two
grounds. They say, first, that if provision had been made in this part of the Act for a summary
application for rectification of the register by the removal of an unauthorized mark at the instance of
"persons aggrieved," they would come within that expression as interpreted in the case of Powell v.
Birmingham Vinegar Brewery Co.[1] ; s.c. sub nomine In re Powell's Trade Mark[2] , and that they
are equally aggrieved, and equally entitled to invoke the aid of the Court to redress their grievance,
whether provision is or is not made in the Act for a special and summary remedy. In the second
place they allege in their statement of claim?which is admitted for the purpose of this case?that the
registration and user of the defendant Union's mark will injure and interfere with them in carrying
on their business and in selling their goods and in employing labour. This statement of damage is
amplified in the particulars delivered by the plaintiffs as follows:? (a) It will compel the plaintiffs
(other than the Attorney-General) to allow the use of the mark on their goods or lose business with
members of the said Brewery Employés' Union of New South Wales or persons licensed by it to use
the said mark or in sympathy with the said Union. (b) Many people who now buy the plaintiffs'
(other than the Attorney-General's) goods will refuse so to do if the said mark were used on the said
goods: others if the mark were not used. (c) It will prevent the plaintiffs (other than the Attorney-
General) from or render it difficult for the plaintiffs (other than the Attorney-General) to employ
workmen unless members of the said union or persons licensed by it to use the said mark. (d) It will
prevent the plaintiffs (other than the Attorney-General) using the same or a similar design. (e) It will
render the plaintiffs (other than the Attorney-General) liable to actions and prosecutions for the
infringement of the said mark.

I will deal with these contentions separately. In Powell's Case[3] , in which the question was
whether the appellant was aggrieved by the registration as a trade mark of the words "Yorkshire
Relish," Lord Herschell L.C. said:?"My Lords, the first question raised is whether the respondents
were "persons aggrieved" within the meaning of the 90th section of the Trade Marks Act of 1883.
That section provides that: "The Court may on the application of any person aggrieved ... by any
entry made without sufficient cause in any such register" (that is, a "register kept under this Act" )
"make such order for expunging or varying the entry as the Court thinks fit." The respondents are in
the same trade as the appellant; like the appellant, they deal amongst other things in sauces. The
Courts below have held that the respondents are "persons aggrieved." My Lords, I should be very
unwilling unduly to limit the construction to be placed upon these words, because, although they
were no doubt inserted to prevent officious interference by those who had no interest at all in the
register being correct and to exclude a mere common informer, it is undoubtedly of public interest
that they should not be unduly limited, inasmuch as it is a public mischief that there should remain
upon the register a mark which ought not to be there, and by which many persons may be affected
who nevertheless would not be willing to enter upon the risks and expense of litigation. Whenever it
can be shown, as here, that the applicant is in the same trade as the person who has registered the
trade mark, and whenever the trade mark if remaining on the register would or might limit the legal
rights of the applicant so that by reason of the existence of the entry upon the register he could not
lawfully do that which but for the appearance of the mark upon the register he could lawfully do, it
appears to me that he has a locus standi to be heard as a "person aggrieved." "

In the same case Lord Watson[4] :?"In disposing of the appellant's contention that the respondents
were not "aggrieved persons," it appears to me that the Courts below proceeded on the right
construction of sec. 90 of the Act of 1883. 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 probability of his finding occasion to use it. But the fact that the trader deals in the same
class of goods and could use it, is primâ facie sufficient evidence of his being aggrieved, which can
only be displaced by the person who registered the mark, upon whom the onus lies, showing that
there is no reasonable probability that the objector would have used it, although he were free to do
so. That reading of the Statute appears to me to be in substantial conformity with the construction
adopted by the Court of Appeal in In re Rivière's Trade-mark[5] , and also in In re Apollinaris
Company's Trade-marks[6] ."

In the Court of Appeal Bowen[7] :?"Persons who are aggrieved are persons who in some way or
other are 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[8] , it was pointed out, not as a complete or exhaustive definition,
that people would be aggrieved if they are 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."

These are, in my opinion, authoritative and binding commentaries upon the meaning of the term
"person aggrieved" as used in the English Trade Marks Act. But the word "aggrieved" was not
treated as having a special meaning in that Statute. Whether a person is aggrieved or not by the act
of another depends upon the nature of the act complained of and the manner in which it will affect
the complainant. The form of procedure to be adopted to obtain any relief to which he may be
entitled is quite irrelevant to the question whether he is entitled to any relief. In my opinion,
therefore, the plaintiffs in the present case are persons aggrieved by the registration complained of,
just as in Powell's Case[9] , in the sense that it hampers them in carrying on their business with the
freedom which they are entitled to enjoy in the absence of any valid legislation restraining it. This is
of itself sufficient to give them a locus standi to appeal to a Court of Justice for redress of the
grievance and for prevention of the continuance of the wrongful act which works the grievance;
and, if no other appropriate remedy is provided, the remedy is by action.

With regard to the second ground of the plaintiffs' contention it appears to me that they are free by
the law of the land to carry on their business and offer their goods for sale without publishing to the
world any statement as to the persons whom they have employed in the production, and that any
interference with this freedom which may operate to their prejudice is unlawful unless justified by
Statute.

It is said that the registration of the mark in question and its use by other rival traders would not
have any such prejudicial effect, since the plaintiffs themselves might acquire the right to use it.
But, since they could only do so by the exclusive employment of members of the defendant Union,
it is plain that they are interfered with to this extent?that they are no longer free to compete with
rival traders on the same terms as before. They must either use or abstain from using the mark. The
user or non-user are of equal significance. They are, therefore, obliged to inform their customers
that they do or do not exclusively employ persons who are members of the defendant Union, and
this information may be of great importance in the opinion of a large class of persons to whom they
look for custom. It was suggested that such an interference is so trivial that the Court should
disregard it, which seems a singular argument to use in a case in which the right to the mark has
been so long and so strenuously contested. In my opinion, this interference with freedom is
substantial, and is, unless authorized by some positive law, unlawful and actionable. To use the
words of Holt C.J. in Ashby v. White[10] :?"A damage is not merely pecuniary, but an injury imports
a damage, when a man is thereby hindered of his right" ; of which he gives many illustrations. I
think, further, that the injury is a particular injury to every person whose freedom is so interfered
with, and that every such person may maintain an action for an injunction to restrain the
interference.

Assuming, however, that the individual plaintiffs are not entitled to maintain the action, I will
proceed to consider whether the Attorney-General for the State is entitled to maintain it as against
the defendant Registrar.

It was not contested in argument that if the Commonwealth having no authority at all to deal with
the subject matter of trade marks, had nevertheless purported to set up a register of trade marks, the
office of the Registrar is such that a quo warranto would lie against him. But it was said that in such
a case the quo warranto could only be brought by the Attorney-General of the Commonwealth. Quo
warranto is not the appropriate remedy in the present case, because the appointment of a Registrar
of Trade Marks is admittedly authorized by the Constitution, and the objection is not to the
unwarranted assumption of the office, but to the assumption of functions which do not lawfully
appertain to it. In Mr. Shortt's book on Informations it is said that in such a case the appropriate
remedy is injunction or prohibition (page 132). It is clear that in such a case there must be some way
of preventing, and not merely of punishing, the illegal assumption of authority. It would appear
from Coke's Entries that in ancient times the process of quo warranto was applied in cases of the
assumption by a lawful corporation of functions not within the terms of its franchise. There is no
modern instance of the use of the writ for this purpose, but it is now settled that, in any case when a
public corporation claims to exceed its powers in respect of a subject matter of such a nature that the
excess tends to the injury of the public, the Attorney-General can maintain an action to restrain the
excess: London County Council v. Attorney-General[11] ; Attorney-General v. Shrewsbury
(Kingsland) Bridge Co.[12] ; Attorney-General v. London and North Western Railway Co.[13] . In
my judgment this doctrine applies to any person holding a public office who claims to exercise
functions which are not authorized by law and are in their nature injurious to the public or to
members of the public. As to the contention that the proper Attorney-General to sue is the Attorney-
General of the State by whose law the corporation or officer claims to be authorized, I think it is
founded on a misconception. The ground of the Attorney-General's right to interfere is a common
injury to the public, and it appears to me that, if a person claims to be authorized by law to exercise
some public function which is in fact not authorized by law and is injurious to the public of a State,
the Attorney-General for the State may sue to protect the rights of the public of the State.

For these reasons I am of opinion that this action is properly instituted.

I proceed to consider the much more difficult question whether Part VII. of the Trade Marks Act is
within the competency of the Parliament.
It should not be necessary to point out that the question for our determination is neither whether it is
expedient that an obligation should be laid upon employers to inform their customers that they do or
do not employ any but union labour, nor whether it is expedient that the Federal Parliament should
have power to lay such an obligation upon them. The sole question is whether under the
Constitution the power to lay such an obligation has been conferred upon the Commonwealth or is
retained by the States exclusively. This Court has no concern with the expediency either of granting
such a power to the Commonwealth or of its exercise. Its duty is limited to an examination of the
Constitution and a declaration of its meaning. It would indeed be a lamentable thing if this Court
should allow itself to be guided in the interpretation of the Constitution by its own notions of what it
is expedient that the Constitution should contain or the Parliament should enact. Sec. 51 of the
Constitution authorizes the Parliament "to make laws for the peace, order, and good government of
the Commonwealth with respect to (i.) Trade and commerce with other countries, and among the
States; ... (xviii.) Copyrights, patents of inventions and designs, and trade marks." The Act now in
question purports to be an exercise of the last mentioned power.

The plaintiffs contend that the "workers' trade mark" authorized by Part VII. to be registered by an
association of workers is not a trade mark at all in the sense in which that word is used in the
Constitution. The defendants answer that the mark in question is a mark; that it is to be used in
connection with trade, which includes manufacture and production; and that this is sufficient to
bring the Act within the power. Now, while there is no doubt that within the ambit of its powers the
Parliament is supreme, it has no authority whatever beyond that ambit. It is necessary, therefore, to
consider the nature of the authority conferred by sec. 51 (xviii.). Whatever that authority may be, it
is for the Parliament, and not for the Court, to prescribe the mode of its exercise. But it is for this
Court to determine, when its interposition is sought, whether an asserted authority is or is not
conferred by the Constitution.

The meaning of the terms used in that instrument must be ascertained by their signification in 1900.
The Parliament cannot enlarge its powers by calling a matter with which it is not competent to deal
by the name of something else which is within its competence. On the other hand, it must be
remembered that with advancing civilization new developments, now unthought of, may arise with
respect to many subject matters. So long as those new developments relate to the same subject
matter the powers of the Parliament will continue to extend to them. For instance, I cannot doubt
that the powers of the legislature as to posts and telegraphs extend to wireless telegraphy and to any
future discoveries of a like kind, although in detail they may be very different from posts and
telegraphs and telephones as known in the nineteenth century. An instance of a quite different kind
of subject matter is immigration, the meaning of which term cannot alter, however the methods of
bringing persons within the geographical limits of the Commonwealth may be extended.

We have then to choose between these two conflicting lines of reasoning, and to say whether the
term "trade marks" used as defining a subject matter of legislation is to be taken in the wider or
more limited sense. Apart from any light thrown on the question by the history of the use of the
word in legislation or otherwise, it might be contended with much force that the term means "a
mark used in connection with trade," the term "trade" being, perhaps, limited to the exchange of
vendible articles by way of commerce. If this view is accepted, the Parliament has absolute
authority to prescribe (1) whether any marks may be so used at all; (2) what marks may be so used;
(3) whether certain marks must be so used; (4) by whom any marks may be so used; (5) by whom
any marks must be so used; (6) the signification to be given to any particular mark; (7) the
conditions of the particular trade upon which the right or obligation to use the mark shall depend.
Such authority would undoubtedly involve a very large power of interference with the conditions of
domestic trade, but that is no objection if the authority is given.

If, on the other hand, the term "trade mark" is interpreted strictly according to the definitions which
had been given in English Courts before the year 1900, the result would be that, although new kinds
of marks and new purposes to which marks of the old kind may be applied may be, and indeed have
been, devised since that time, the authority of Parliament is limited to dealing with the particular
kind of trade mark then known, and to the use of trade marks for the particular purposes then
recognized, with the result that all new developments of the subject matter would fall within the
domain of State legislation.

Each of these views appears to lead to consequences which primâ facie could not have been
intended. Our duty is to find, if we can, some construction which is in harmony with the general
scheme of the Constitution.

I proceed to examine the language of the Constitution with this object.

The power to legislate with respect to "trade and commerce" conferred by sec. 51 (i.) is not
unlimited. In the case of United States v. De Witt[14] Chase C.J., delivering the judgment of the
Supreme Court, said:?"That Congress has power to regulate commerce with foreign nations and
among the several States, and with the Indian tribes, the Constitution expressly declares. But this
express power to regulate commerce among the States has always been understood as limited by its
terms, and as a virtual denial of any power to interfere with the internal trade and business of the
separate States; except, indeed, as a necessary and proper means for carrying into execution some
other power expressly granted or vested."

This doctrine has been the foundation of a great number of decisions as to the validity of the
legislation of Congress, and it has never been doubted.

The same doctrine follows from the literal words of sec. 51 (i.) of the Australian Constitution,
which confers the grant of power, not in general terms, but only as to "trade and commerce with
other countries, and among the States." This is, emphatically, an instance in which the rule expressio
unius exclusio alterius must be applied.

It follows that the power does not extend to trade and commerce within a State, and consequently
that the power to legislate as to internal trade and commerce is reserved to the State by the operation
of sec. 107, to the exclusion of the Commonwealth, and this as fully and effectively as if sec. 51 (i.)
had contained negative words prohibiting the exercise of such powers by the Commonwealth
Parliament, except only, in the words of Chase C.J., "as a necessary and proper means for carrying
into execution some other power expressly granted." It follows that, in order to warrant such an
interference with the trade and commerce of a State as would be authorized by the extended
meaning claimed for the words in question, it must be shown that such a power of interference is a
necessary and proper means of carrying into execution the power to legislate as to trade marks. If
such an invasion of the exclusive powers of the States was intended, it is strange that the power
should have been conferred in language which seems at first sight so inadequate for the purpose.

In my opinion, it should be regarded as a fundamental rule in the construction of the Constitution
that when the intention to reserve any subject matter to the States to the exclusion of the
Commonwealth clearly appears, no exception from that reservation can be admitted which is not
expressed in clear and unequivocal words. Otherwise the Constitution will be made to contradict
itself, which upon a proper construction must be impossible.

I turn now to sub-sec. (xviii.), as to which the first observation that occurs is that trade marks are
grouped with copyrights and patents of inventions and designs, the whole forming a class of
property of a special kind, in the nature of monopoly, and as to which before 1900 an International
Convention had been made between Great Britian and other countries, to which Convention three of
the Australian Colonies had become parties. So far as regarded any future Convention it was
obviously necessary that the subject matter should be under the control of the Commonwealth. This,
read with sub-sec. (i.) suggests that the concept of a trade mark as used in sec. 51 had primarily
nothing to do with the details of internal trade and commerce.

In the case of Attorney-General for Quebec v. Queen Insurance Co.[15] in which the question for
consideration was the meaning of the term "direct taxation" under the British North America Act, Sir
G. Jessel M.R., delivering the opinion of the Judicial Committee, said:?"Now, here again we find
words used which have either a technical meaning or a general, or, as it is sometimes called, a
popular meaning. One or other meaning the words must have; and in trying to find out their
meaning we must have recourse to the usual sources of information, whether regarded as technical
words, words of art, or words used in popular language." The learned Master of the Rolls then
proceeded to apply this test, and considered the words first as words of art and then as words used in
popular language. I propose to follow the same course.

First, then, what was the meaning of the term "trade mark" in 1900 regarded as a term of art?

Before the year 1837 very few cases are reported in which this term or any analogous term was
used, and in none of them, so far as I know, was it used as a term of art. In Blanchard v. Hill[16]
Lord Hardwicke L.C., said:?"Every particular trader has some particular mark or stamp; but I do not
know of any instance of granting an injunction here, to restrain one trader from using the same mark
with another." In Motley v. Downman[17] , which was a suit for an injunction to restrain the use by
the defendants of a mark "M C," which the plaintiff was in the habit of using to distinguish tin plates
made at his works, Lord Cottenham L.C. said:?"The case, then, is, that a person who, as tenant of
particular works, had derived the benefit of using the distinguishing mark employed for the purpose
of marking the goods made there, quits the premises, and establishes a similar manufactory
elsewhere, and there, after his lease of the previous works has expired, uses the mark which he had
obtained the right to use, or at least the benefit of using, by being tenant of those works; and then he
says to the landlord of those works, "Not only have I acquired the right to the use of this mark, but
you have lost the right to the use of it." "

It will be noticed that the learned Lord Chancellor used the words "mark" and "distinguishing
mark," but not the term "trade mark." Millington v. Fox[18] , which came before Lord Cottenham in
1838, is the first instance of an injunction being granted to restrain the use of a tradesman's
distinguishing mark. The bill alleged that the steel manufactured by the plaintiffs "had always been
distinguished by certain marks upon the bars or pieces of steel so manufactured" and asked for an
injunction to restrain the defendant from "stamping steel with the before-mentioned names or
marks." The term "trade mark" does not seem to have been used in the pleadings or in the argument.
Up to this time, therefore, it would seem that the term was not known in English law as a term of
art. It had been, as said by Lord Hardwicke, the practice of traders to use their own marks to denote
their goods, and from early times certain marks used in trade had been the subject of legislation in
England, principally with regard to gold and silver plate and cutlery. The main object of this
legislation appears to have been to protect the public by requiring a mark to be used as a warranty of
quality, which, if false, could be traced to the trader responsible for it. It is very likely that these
marks were colloquially spoken of as trade marks, although we are not referred to any instance of
such use. Such legislation was undoubtedly legislation prescribing conditions of internal trade.

The term "trade mark" is found in English legislation for the first time in the Merchandise Marks
Act 1862 (25 & 26 Vict. c. 88). That Act, the preamble of which recited that it was expedient to
amend the law relating to the fraudulent marking of merchandize and to the sale of merchandize
falsely marked for the purpose of fraud, contained various provisions for punishing the fraudulent
use of trade marks. That term was to include "any and every such name, signature, word, letter,
device, emblem, figure, sign, seal, stamp, diagram, label, ticket, or other mark as aforesaid lawfully
used by any person to denote any chattel, or (in Scotland) any article of trade, manufacture, or
merchandize, to be an article or thing of the manufacture, workmanship, production, or merchandize
of such person, or to be an article or thing of any peculiar or particular description made or sold by
such person, and shall also include any name, ... mark, or sign which in pursuance of any Statute or
Statutes for the time being in force relating to registered designs is to be put or placed upon or
attached to any chattel." Up to this time a trade mark had not in England been treated in Courts of
Justice as being itself a substantive subject of property, and the definition given in the Act probably
included any possible mark or sign that had been used to distinguish one trader's goods from
another's. I think that it is not unreasonable to infer that after the passing of this Act the term "trade
mark" came to have in England a meaning substantially the same as, if not identical with, this
definition, but whether the word had come to be regarded as a term of art or not is not easy to say.
The Act of 1862, with or without provisions for registration, was adopted by all the Australian
Colonies except Western Australia. In 1875 the Act 38 & 39 Vict. c. 91 was passed which
established a register of trade marks as defined by the Act, and provided that after 1st July 1876 a
person should not be entitled to institute proceedings for the infringement of a trade mark as defined
by the Act unless such mark was registered. The idea of property in a trade mark is here for the first
time suggested in the Statute book. It had already in the interval been accepted in the Courts, in a
case to which I will directly refer.

Sec. 10 was as follows:?" 10. For the purposes of this Act: A trade mark consists of one or more of
the following essential particulars; that is to say, A name of an individual or firm printed, impressed,
or woven in some particular and distinctive manner; or A written signature or copy of a written
signature of an individual or firm; or A distinctive device, mark, heading, label, or ticket; and there
may be added to any one or more of the said particular any letters, words, or figures, or combination
of letters, words, or figures; also

Any special and distinctive word or words or combination of figures or letters used as a trade mark
before the passing of this Act may be registered as such under this Act.

"

It will be observed that other marks, which were trade marks within the meaning of the Act of 1862,
but were not trade marks within the Act of 1875, and were therefore not capable of registration,
were left with such protection as they had before. I do not think that this Act effected any change in
the general meaning of the term "trade mark," whether regarded as a term of art or as a popular
term.

In 1883 the Patents Designs and Trade Marks Act (46 & 47 Vict. c. 57) was passed. That Act
repealed the Act of 1875 and made other provisions for the registration of trade marks, but
preserved the definition of a trade mark in terms which, for the present purpose, were substantially
the same as in the Act of 1875. By sec. 103 Her Majesty was empowered to make arrangements
with foreign States for the mutual protection of patents, designs, and trade marks on certain
conditions, and by sec. 104 the advantages of sec. 103 might be extended to British Possessions.
This Act was adopted in several of the Australian Colonies before 1900.

In 1884 Her Majesty acceded to an "International Convention for the protection of industrial
property," which had been made in 1883 between several other nations. This convention extended to
trade marks, which were described in the French of the original Convention as marques de fabrique
and marques de commerce. The first paragraph of Article VI., according to the English version,
provided that "every trade mark duly registered in the country of origin shall be admitted for
registration, and protected in the form originally registered in all the other countries of the Union."
The final protocol to the convention declared that par. 1 of Article VI. was "to be understood as
meaning that no trade mark should be excluded from protection in any State of the Union from the
fact alone that it does not satisfy, in regard to the signs composing it, the conditions of the
legislation of that State (scilicet as to registration); provided that on this point it comply with the
legislation of the country of origin, and that it had been properly registered in said country of
origin," and proceeded: "With this exception, which relates only to the form of the mark, and under
reserve of the provisions of the other Articles of the Convention, the internal legislation of each
State remains in force." The Convention applied, therefore, to registered trade marks only. It is to be
observed that it was not thought necessary to define the meaning of the terms marque de fabrique
and marque de commerce, the only declaration made on the subject being that the form of the mark
was not to be material. The substantial character of the thing, or, in other words, the concept
denoted by the term, was not treated as requiring definition. In my judgment this Convention
affords strong, if not conclusive, evidence that by 1884 the term "trade mark" and the corresponding
foreign terms had acquired a definite and accepted meaning in commerce. That meaning, however,
did not include every mark which would be a trade mark within the meaning of the English Act of
1862, for Article VIII. of the Convention provided that a trade name (which was a trade mark for
the purpose of that Act) should be protected in all the countries of the Union without necessity of
registration, whether it did or did not form part of a trade mark.

What then was this meaning? We find, in the first place, that a trade mark was regarded as forming a
kind of property called "industrial property," and that a trade name was regarded in the same way.
There was thus recognized a new kind of incorporeal right, being a right of persons with regard to
articles of commerce, the substance of the right being the advantage to be derived from making
known to possible customers the fact that the articles were articles with which the owner of the
mark was in some way connected. In the Act of 1862 the connection was described in the words
"used by any person to denote any chattel, or (in Scotland) any article of trade, manufacture, or
merchandize, to be an article or thing of the manufacture, workmanship, production or merchandize
of such person." In the dictionary of the French Academy under the word "marque" it is
said:?""Marque." Il se dit particulièrement, dans le Commerce d' un chiffre, d' un caractère, d'une
figure quelconque appliquée par empreinte ou autrement sur différentes sortes de merchandises, soit
pour désigner le lieu où elles ont été fabriquées, le fabricant qui les a faites, ou le marchand qui les
vend; soit pour attester qu' elles ont été visitées par les préposés chargés de leur fair acquitter les
droits. La marque de la fabrique. La marque de la douane. La marque de l' orféore. La marque du
contrôle. La marque du fabricant, du marchand, de l' ouvrier...L' ouvrier a mis sa marque à son
ouvrage."
There were, then, two substantive elements at least involved in the concept of a trade mark at this
time, one, that the mark was itself the subject of a proprietary right, the other, that the owner of that
right must have some connection with the articles upon which the mark was used.

In 1887 the Merchandise Marks Act (50 & 51 Vict. c. 28) was passed, by which the Act of 1862 was
repealed and other provisions were substituted. In this Act the meaning of the term "trade mark" is
limited to marks registered under the Act of 1883 or entitled to protection under a Convention made
under sec. 103 of the latter Act. Other marks used in commerce are grouped under the term "trade
description," the meaning of which is sufficiently wide to include all the marks called trade marks
for the purposes of the Act of 1862.

I think that this Act affords some evidence that the term "trade mark" was no longer in common use
in the wide sense in which it was used in the Act of 1862. I will now refer to some instances in
which the meaning of the word was discussed by the English Courts before 1900.

In the case of the Leather Cloth Co. v. American Leather Cloth Co.[19] Lord Westbury L.C. laid
down for the first time the doctrine that the jurisdiction of the Court in the protection given to trade
marks rests upon property, and that the Court gives relief by injunction because that is the only way
by which such property can be effectively protected. In the same case, on appeal to the House of
Lords, Lord Cranworth[20] :?"The right to a trade mark is a right closely resembling, though not
exactly the same as, copyright. The word "property" when used with respect to an author's right to
the productions of his brain, is used in a sense very different from what is meant by it when applied
to a house or a watch. It means no more than that the author has the sole right of printing or
otherwise multiplying copies of his work. The right which a manufacturer has in his trade mark is
the exclusive right to use it for the purpose of indicating where, or by whom, or at what
manufactory, the articles to which it is affixed was manufactured. If the word "property" is aptly
used with reference to copyright, I see no reason for doubting that it may with equal propriety be
applied to trade marks."

Lord Kingsdown[21] :?"A man may mark his own manufacture, either by his name, or by using for
the purpose any symbol or emblem, however unmeaning in itself, and if such symbol or emblem
comes by use to be recognized in trade as the mark of the goods of a particular person, no other
trader has a right to stamp it upon his goods of a similar description. This is what I apprehend is
usually meant by a trade mark, just as the broad arrow has been adopted to mark Government stores,
a mark having no meaning in itself, but adopted by and appropriated to the Government."

I have already shown that by 1883 the right had come to be generally known as a species of
"industrial property."

In Edwards v. Dennis[22] , a case under the Act of 1875, Cotton LJ. said:?"A trade mark is a mark
used in trade to distinguish the goods of the person who uses it," and again, "The person with whom
the Act is dealing is a person who would have been entitled under the old law to bring an action for
the infringement of his trade mark, that is to say, a trade mark actually used by him. The first
section therefore assumes that it is dealing with a person who is using his trade mark."

In the same case Lindley[23] :?"Pushed to an extreme the argument means this?that a man having no
business at all by simply registering a trade mark acquires the exclusive right to use it. That
construction of the Act seems so irrational that I cannot adopt it. A trade mark has no sense except
in connection with trade. ... The argument is based upon the expression in the 2nd section of the Act
that "a trade mark must be registered as belonging to particular goods, or classes of goods." No
doubt the Act is so expressed; but does it mean that there is to be registration irrespective of the fact
as to whether the person registering manufactures any goods or not? In my opinion it is perfectly
ridiculous to suppose it means that a trade mark is to be registered as belonging to goods which the
man does not manufacture at all. It must mean that the mark is to be registered, not in connection
with nothing, but in connection with the particular trade in respect of which he desires to use it."

In In re Wood's Trade Mark[24] Lindley L.J. said:?"What is meant by a distinctive trade mark? It
must mean some mark which distinguishes the goods to which it is attached as those made or sold
by the person who uses the mark." Fry[25] :?"It appears to me that to satisfy the requirements of
that definition the word or words must be distinctive in this sense, that they distinguish the
manufacture of the person who has registered the trade mark from the manufacture of all other
persons. I say "manufacture," but of course there may be cases in which they distinguish, not the
manufacture, but the selection, or some other operation, upon the goods. But in all cases the word or
words must distinguish the product of the person claiming the trade mark from the product of all
other persons."

In In re Australian Wine Importers, Ltd.[26] Kay J. said:?"It seems to me that in all these cases there
is a most singular ignoring of the meaning of a trade mark. What does a trade mark mean? It means
that the mark under which a particular individual trades, and which indicates the goods to be his
goods?either goods manufactured by him or goods selected by him, or goods which, in some way or
other, pass through his hands in the course of trade. That is the meaning of a trade mark. It is a
mode of designating goods as being the goods which have been, in some way or other, dealt with by
A.B., the person who owns the trade mark."

The learned Judge there uses the words "dealt with" to express the connection between the goods
and the owner of the mark to which I have already referred.

In Re Sykes & Co.'s Trade Marks[27] , Hall V.C. held (indeed the point does not seem to have been
contested) that a person who carried on the business of a bleacher in Scotland was entitled to have a
trade mark registered. As I understand the case, the applicant carried on a separate and independent
business of bleaching the goods of other persons. In Richards v. Butcher[28] the actual question for
decision was whether the words "Monopole" and "Dry Monopole" had been used as trade marks
before the passing of the Act of 1875. But the language of the learned Lords Justices shows the
sense in which the word trade mark was used at that time. Lord Esher[29] :?"Now, what constitutes
the use of anything "as a trade mark?" Not the mere use of it, but the use of it in a particular way,
and with a particular result. You use the thing "as a trade mark," if you use it in business, or, as is
often said, in the market, as a mark to denote your goods, and to distinguish them from the goods of
anyone else. You use it, not merely as a writing, but as a mark in the market, and you must show
that you used it in the market for the purpose of distinguishing your goods, and, I think, you must
also show that the market accepted it as a distinguishing mark of your goods?then you use it as your
"trade mark." "

In my opinion it follows, from a consideration both of the Statute law of England and the Australian
Colonies up to 1900 and of the authoritative expositions of the law with respect to trade marks in
British Courts of Justice, that, whether the term "trade mark" as used in sec. 51 (xviii.) of the
Constitution is to be regarded as a term of art or as a word used in popular language, it did not in
that year denote every kind of mark which might be used in trade or in connection with articles of
trade and commerce, but meant a mark which is the visible symbol of a particular kind of
incorporeal or industrial property consisting in the right of a person engaged in trade to distinguish
by a special mark goods in which he deals, or with which he has dealt, from the goods of other
persons.

This concept includes in my opinion five distinct elements:? (1) A right which is in the nature of
property; (2) The owner of the right must be a person, natural or artificial, engaged in trade; (3) The
right is appurtenant or incident to the dealing with goods in the course of his trade; (4) The owner
has such an independant dominion over the goods to which the mark is to be affixed as to entitle
him to affix it to them; (It is not material whether this right is incident to his possession of the goods
or arises under an agreement with the owner of them.) (5) The mark distinguishes the goods as
having been dealt with by some particular person or persons engaged in trade; (I use the word
"particular" not as meaning that the person in question is indicated nominatim, but as indicating that
he is a person who has an independent individual right with respect to the goods in question, and
who is capable of ascertainment upon inquiry).

With regard to this species of property the power of the Parliament is absolute. They can prescribe
the conditions on which it may be acquired, retained, or enjoyed; they may possibly even prohibit
its enjoyment altogether; but they cannot, by calling something else by the name of "trade mark,"
create a new and different kind of industrial property.

In the ordinary course of events, and in the absence of legislation, it might easily happen that the
same mark had been adopted by more persons than one, so that such a mark would not be absolutely
distinctive. But this contingency does not affect the quality of distinctiveness involved in the
concept of a trade mark, any more than the fact that there are more persons than one bearing the
name of John Smith deprives that name of the quality of distinctiveness. The circumstance,
therefore, that the same mark was allowed in some cases (e.g. Manchester Cotton Marks) to be
registered by more than one person did not affect in any way the nature of the concept.

We were pressed with the fact that in some of the States of the American Union Statutes had been
passed before 1900 by which workers' marks had been recognized by law. The earliest of these Acts,
which was passed in 1889 in the State of California, authorized trade unions to adopt a "trade
mark," to register it, and to affix it to any goods made, produced, or manufactured by members of
the union. In most of the States the words used were "a label, trade mark, or form of advertisement."
Contemporaneously, however, with these Statutes, a number of decisions were given in the Supreme
Courts of several of the States to the effect that such a mark was not a trade mark in the ordinary
acceptation of the word. The legislation referred to was, of course, within the competence of the
legislatures, who were free to call the label by any name they thought fit. In my opinion, this
legislation cannot be relied upon as showing any change in the meaning of the term "trade mark" in
the British Empire, either regarded as a technical term or word of art, or in its popular sense. If
knowledge of it is to be imputed to the framers of the Constitution, it must be taken that they also
know that the great weight of American authority was adverse to the view that the workers' labels
were trade marks.

The plaintiffs contend that the "workers' trade mark" described in Part VII. of the Trade Marks Act
is not a species of industrial property such as I have described, but something quite different; that it
is in the nature of an abstract right, or right in gross, not appurtenant to any right of property in, or
control over, the goods for which it is to be used; that in substance it does not indicate that the goods
to which it is affixed have been dealt with by any particular person or persons so as to distinguish
them from goods dealt with by other persons; that, if the right, if any, thus created can be regarded
as a species of industrial property, it is not the same kind of property as that mentioned in sec. 51
(xviii.); that, if it cannot be so regarded, this part of the Trade Marks Act is an ineffectual attempt to
regulate and control the internal trade and commerce of the States, just as if it had been enacted that
any manufacturer of goods shall affix to his products a mark indicating the persons employed in the
manufacture, or the rate of wages paid to them, or any other particular regarding the conditions of
manufacture.

The defendants, on the other hand, contend that any individual worker is entitled to acquire a right
to a trade mark as a proprietary right, and is free to use the mark or not to use it upon goods upon
which he works, as he thinks fit, subject to any express contract between him and the owner of the
goods; that the same rule applies to partnerships; that the number of the members of a partnership is
immaterial unless limited by positive law; that the rule also applies to a joint stock company; and
that, according to modern notions, a trade union is entitled to enjoy the same rights with respect to
this kind of industrial property as a joint stock company.

So far as regards an individual worker or a partnership or joint stock company, I do not see any
answer to this last argument. But so far as regards trade unions or industrial unions or associations
of workers, corporate or unincorporate, other considerations arise. It is not within the competence of
the Commonwealth Parliament to create new forms of property, or new forms of associations or
partnerships for domestic trading purposes, or to confer upon existing partnerships or associations
any capacity beyond those which they possess under the laws of the States, except, in either case, as
incidental to the execution of some other express power. If Part VII. of the Trade Marks Act merely
provided that any body, corporate or unincorporate, which by the law of a State may lawfully hold
property, may be the owner of a trade mark (which would not be necessary if the mark in question is
property) no objection could be offered on that score. The Act, however, purports to create new
kinds of associations or bodies politic and to confer upon them the capacity of owning a worker's
trade mark, which it calls property.

The defendant Union is a trade union, and also an industrial union, under the law of New South
Wales, and, if the only objection to Part VII. of the Act were that based on the creation of new and
unauthorized associations, it might be contended that the provisions relating to such associations are
severable from the rest. Without expressing any opinion on that point I proceed to consider how far
the workers' trade mark conforms to the concept of a trade mark as I understand it.

(1) Is the right, if any, created by the Act in respect of the workers' trade mark a right of property?
The mere prohibition of the use of a thing appertains to the criminal law, and does not create a right
of property in that thing. For instance, a prohibition, such as exists in some semi-civilized countries,
of the wearing of a particular garb by any but married women does not confer a right of property in
the exclusive use of that garb on married women collectively. I do not think that the bald enactment
in sec. 75 that the association shall be deemed the registered proprietor of the workers' trade mark is
effectual to create a new sort of property. The effect of the Act is to draw a distinction between
members of certain unions and the rest of the community, and to enact that the rest of the
community may not say that any member of the unions has dealt with the goods in question. This is
quite a different idea from the right of an individual to publish the fact that he has dealt with them.
(2) Does the workers' trade mark denote that the owners of it are persons engaged in trade? In my
opinion a trade union cannot be regarded as an artificial person engaged in trade, although the
individual members of it may be so engaged.

The term "trade union" is defined by the New South Wales Trade Unions Act 1881 (45 Vict. No. 12),
sec. 31, as meaning"any combination whether temporary or permanent for regulating the relations
between workmen and employers or between workmen and workmen or between employers and
employers or for imposing restrictive conditions on the conduct of any trade or business whether
such combination would or would not if this Act had not been passed have been deemed to have
been an unlawful combination by reason of some one or more of its purposes being in restraint of
trade Provided that this Act shall not affect (1) Any agreement between partners as to their own
business; (2) Any agreement between an employer and those employed by him as to such
employment. (3) Any agreement in consideration of the sale of the goodwill of a business or of
instruction in any profession trade or handicraft. "

If a trade union should, without authority, enter into the business of trading, there is no doubt that it
could be restrained at the suit of a member: Yorkshire Miners' Association v. Howden[30] , or, I
apprehend, at the suit of the Attorney-General for the State. The same consequences would follow
similar action by an industrial union, not being a joint stock company or trade union. It is not
suggested that the respondent union is in fact a trading body. It has never been decided that a trade
union can engage in trade. In the case of Linaker v. Pilcher[31] it was contended that the funds of a
trade union were not liable to satisfy a judgment for damages in respect of a libel published in a
newspaper issued by the union for union purposes, on the ground that the publication of the paper
was trading and therefore ultra vires of the union. It was held by Mathew J. that the funds were
liable, not, however, on the ground that trading was intra vires, but on the ground that the
publication of that particular newspaper was not trading.

(3) For the same reason it follows that the alleged right is not appurtenant or incident to any dealing
with goods in the way of trade by the owner of the mark. (4) Has the union such an independent
dominion over the articles to which it is to be affixed that they may lawfully affix it to them while
they are in their hands? The union might perhaps stipulate that no persons other than members of
the union should be employed in the production, and that the mark should be put by the owners
upon the articles before sale. But this is an entirely different concept from the right of dominion
involved in the concept of a trade mark. (5) The workers' trade mark does not in fact purport to
distinguish the articles to which it is affixed by identifying any workmen engaged in the production
of them as individual persons or as members of a corporation or partnership engaged in trade, but
merely indicates that certain members of the community, i.e., non-unionists, have not been engaged
in their production, just as a mark might indicate that no Asiatics or coloured persons had been so
engaged. Such a distinction, however desirable in itself, could not have been effected by a trade
mark, as the term was understood in 1900. If the right to make such a distinction were conferred by
law and could be regarded as property, it would be property of a very different kind from a trade
mark as then understood.

In my opinion, therefore, the workers' trade mark does not conform in any respect to the concept of
a trade mark as used in the Constitution.

Since, then, the Parliament has no power either to create new kinds of property, or new kinds of
bodies politic, except as incidental to some express power, or to create new offences, except by way
of sanction to a law already passed under some express power, (Lyons v. Smart[32] ) there is nothing
left upon which Part VII. of the Act can validly operate except the mark of an individual worker.

In my judgment this Part of the Act is an attempt to regulate the internal trade of the States. It does
not fall within, and is not incidental to, any of the express powers conferred on the Parliament to
regulate that trade, and, except so far as those powers extend, the power of the States is exclusive.
I think, further, that the whole of the provisions of Part VII. are so bound up together that it is
impossible to say that the Parliament would have enacted the provisions relating to individual
workers without the rest. In my opinion, therefore, the whole of Part VII. is invalid.

It follows that the plaintiffs are entitled to a declaration: (1) that the defendant Registrar has no
authority to keep a register of workers' trade marks, and (2) that the defendant Union's mark is not a
trade mark within the meaning of the Constitution, and also to an order to cancel the registration,
and an injunction to restrain the Registrar from continuing to keep such a register.

Barton J.

The defendants contend that the question of the validity of Part VII. of the Trade Marks Act 1905
cannot be dealt with by proceedings such as these, inasmuch as the plaintiff companies have no such
interest as to justify them in claiming the removal of the disputed mark from the register. They
further say that an Attorney-General is not here a competent plaintiff; that this is not a case in which
an Attorney-General can lawfully be set in motion; and that, even if that were so, the Attorney-
General for New South Wales is not a competent plaintiff, and only the Attorney-General for the
Commonwealth can institute proceedings. In effect, they argue that this action is brought for the
purpose of obtaining a pronouncement which the Court has no right to give, since it would not be a
decision between the conflicting interests of the parties, but a mere opinion as to the powers of
Parliament. It is needless to say that this Court will not entertain a question brought before it merely
to satisfy those whose political views prompt them to struggle to remove an enactment that offends
them. Nor will it lend itself to an endeavour to protect business interests when there is not in law a
grievance to be redressed.

But when a plaintiff says to a defendant, "You are injuring my trade by registering this label as to
the very article in which I trade. Its continuance on the register hampers and embarrasses me in my
business and must be injurious to it," it seems to me that, if he can establish the truth of these
propositions, he has a right to the assistance of the Court, and therefore is a competent plaintiff to be
allowed to endeavour to establish it. If that is so as to wrongful registrations in general, why is it not
to be so where it is claimed that the registration is wrongful, not merely because of some defect in
the mark itself or the procedure, but on the ground that there was no right to registration because the
assumed authority of the Statute under which it was claimed or granted is not a real or lawful
statutory authority?

Now, these brewing companies are embarrassed in their trade by the registration impeached. It is not
describing the position quite accurately to say that all that will happen will be that, by choosing to
use or not to use the mark, they will have to choose one class of customers or the other?those to
whom it will or those to whom it will not be a recommendation. Have they not to say which class
they prefer to lose? Presumably their present customers are such of the public as approve of their
beer. If they adopt the mark they are likely to lose many customers to whom the mark will be a
repellent. If they do not adopt it, they are likely to lose many customers who will not deal except
with those who use it. There is no certainty, in either event, of any corresponding gain of trade.
Thus they are in a dilemma, and it is out of the question to say that they are not embarrassed in their
trade by the situation so created.

Bowen L.J., in In re Powell's Trade Mark[33] said:?"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." And again, "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."

We are not dealing with that particular section here, but the reason of the thing is the same.

In In re The Apollinaris Co.'s Trade Marks[34] , Fry L.J. in delivering the judgment of the Court of
Appeal, said:?"We are of opinion that whenever one trader, by means of his wrongly registered trade
mark, narrows the area of business open to his rivals, and thereby either immediately excludes, or
with reasonable probability will in the future exclude, a rival from a portion of that trade into which
he desires to enter, that rival is an "aggrieved person." " Here again I think that, though the
circumstances are not identical, the reason of the thing is the same.

I therefore think that the four plaintiff companies are entitled to bring this matter into suit.

As to the position of the Attorney-General for New South Wales in the matter, the point seems to me
a doubtful one, but on the whole I am of opinion that, as the relators are public companies
belonging to the State, and the complaint is of a federal Statute wch, if the relators are right, is an
invasion of the purely State field of legislation, such as are the fields of industrial matters and of
domestic trade, the Attorney-General for the State may rightly sue.

The main question really turns upon the meaning of the term "trade marks" as used in sec. 51
(xviii.), of the Constitution?that is to say, the extent and limits of the "power to make laws for the
peace, order, and good government of the Commonwealth with respect to ... trade marks." Are
marks or labels such as that in question included in the expression "trade marks," so that the framers
of the Constitution meant to empower the Parliament to make laws with respect to them? If the
ordinary or technical sense of the term in 1900 included them, or if it was used as a term which had
acquired such an inclusive meaning in any legislation which we must take to have been in the minds
of the makers of the Constitution at its making, then, but only then, the answer must be in the
affirmative. In either case it is to the meaning in 1900 that we must look, for the plain reason that
the Constitution previously framed in Australia became law in that year, and the framers cannot, of
course, have had in their minds meanings which had not then come into existence. I do not say that
any new meanings have been shown, but even if that be so, they are not within the purview of the
sub-section. "The Act must be construed as if one were interpreting it the day after it was passed" :
per Lord Esher M.R. in The Longford[35] . And see his judgments in Gaslight and Coke Co. v.
Hardy[36] , and Sharpe v. Wakefield[37] . Of course no subsequent Statute of the Commonwealth,
assuming to enlarge the meaning of the term in question as here used, could effect such a purpose
unless it were an amendment of the Constitution passed by the method prescribed by sec. 128 of that
instrument. For the Federal Parliament is not, like that which sits at St. Stephens, a sovereign
Parliament. Legislative powers given by a written Constitution may be exercised to the full, but only
as they stand. To attempt to give them a larger meaning is to attempt to alter the Constitution, which
cannot be done validly by a Parliament to which it gives life and which is not itself empowered to
amend it. On the other hand, if the language of a Statute includes a whole genus, a species of that
genus, unknown when the Act was passed and only afterwards coming into existence, is still within
the language. But in the case of the Constitution that rule of construction cannot be extended so as
to bring what is not in essence a species within the language of the legislative powers, for in doing
this the Parliament would be including fresh subjects amongst its powers, and that would amount to
an attempt to amend the Constitution by a process not sanctioned by the Charter. If the thing is not
of itself within the meaning, an Act of Parliament cannot make it so. The powers remain the same
though their application may extend as the subjects within the power increase. Is then the label or
mark described in this case a trade mark in the ordinary or in any technical sense of the term as used
in 1900, or is it a trade mark in any sense given to the term by Statutes before then, that is to say,
such Statutes as we must take the framers of the Constitution to have kept in view in defining the
power?

First as to the ordinary meaning of the term. It does not seem to have been in general use in the
early years of the 19th century, for it cannot be found in such dictionaries as Johnson's of 1831 and
Webster's of 1837, although in 1838, in the case of Millington v. Fox[38] , which was clearly about
trade marks, the term is used in the side note but not once in the report. In the report of Motley v.
Downman[39] , decided in the previous year, we find the marks there in question described as
"brand marks," "peculiar marks," "distinguishing marks," "tradesmen's marks" and "traders' marks."
And the term "trade marks" is used once to denote the same thing, the question being of the marks
branded by rival manufacturers upon tin plates made and sold by them. In the earlier case of Sykes v.
Sykes[40] decided in 1824, the subject of dispute was the use of the words "Sykes Patent" as a mark
on goods (a patent to protect them having been held to be invalid). The mark, we are told, was
placed on the articles by the makers "in order ... to distinguish them from articles of the same
description manufactured by other persons." The mark is not designated as a trade mark anywhere
in the report, nor have I been able to trace the use of the term to an earlier date than 1837. But it is
clear that the thing now known by that name had come into existence, and that certain legal rights
had attached to it before that time. The concept of a trade mark was, of course, in existence before
the name itself was applied to connote it. If the case of Southern v. How[41] is correctly reported,
traders' marks were known and used, and damages would be given for their fraudulent use, in the
time of James I., though the name trade mark was not yet given them. These marks were evidently
used by traders, those who manufactured for sale as well as those who merely sold, to denote that
the goods on which they were placed were made or sold by that trader who affixed them. And
before any legislation took place on the subject, the common law protected the use of such marks by
granting a right of action, first for the fraudulent use or imitation of them, and afterwards for their
use or imitation in such manner as probably to deceive an unwary customer, even in the absence of
fraud (compare Southern v. How[42] and Sykes v. Sykes[43] with Millington v. Fox[44] . It did so on
the principle that the marks were used to distinguish the goods of the maker or seller from those of
other makers or sellers, and that those others had no right to represent their goods as made or sold
by those who had by user of their own marks established that very distinctiveness. The effect,
whether intended or not, was to disturb him in the exercise of a right. And so, when we hear that it
is in law essential that the trade mark should be distinctive, we must remember that the law says
this, not as itself assigning that quality to a trader's mark, but because the thing cannot be or become
a trader's mark at all without that quality of distinctiveness. To distinguish the trader's goods from
those of others it must first be affixed in some way to the goods. And, apart from Statute law, it is
essential to the same purpose of its becoming distinctive that it should be used in the trade?that is, in
the market. For thus only are the others who are interested in that commerce?that is, the
buyers?enabled to discriminate between the goods of one trader, be he manufacturer or merchant,
and those of another, who might otherwise pass off the goods made or sold by himself as those of a
trader who has nothing to do with them. The mark to become distinctive must be the subject of an
exclusive right of user, otherwise it would be used to confuse and not to distinguish. Thus we arrive
at property in the mark itself: Leather Cloth Co. v. American Leather Cloth Co.[45] , where Lord
Cranworth says:?"The right which a manufacturer has in his trade mark is the exclusive right to use
it for the purpose of indicating where, or by whom, or at what manufactory, the article to which it is
affixed was manufactured. If the word "property" is aptly used with reference to copyright, I see no
reason for doubting that it may with equal propriety be applied to trade marks." And the property in
the mark must be coupled with property, absolute or at least special, in the thing made or sold, in the
sense of independent dominion or control of it. The freedom of the owner of the trade mark to affix
it to particular goods must obviously involve a negation of the right of any other person to prevent
his affixing it. I must be pardoned for saying things that seem to go without saying, for most, if not
all, of these propositions seem to be denied or ignored in the present case. The right of a person not
the actual owner of the goods to affix his mark?that is, the limited or special property that I have
mentioned?may be gained contractually from the absolute owner by some person who is to be
entitled to deal with them commercially. I see nothing to prevent that, it seems to be involved in the
case of Re Sykes & Co's. Trade Marks[46] , where a firm of bleachers were allowed to register a
trade mark. But, in the absence of some such contractual right, the right is that of a man to use his
own mark on his own goods to show that they are his make or his stock, and not another's. All the
characters which seem to me to be of the essence of a trade mark, leaving out purely legal attributes,
are tersely summed up by Kay J. in the case of In re Australian Wine Importers Ltd.[47] in these
words:?"What does a trade mark mean? It means the mark under which a particular individual
trades, and which indicates the goods to be his goods?either goods manufactured by him or goods
selected by him, or goods which, in some way or other, pass through his hands in the course of
trade. That is the meaning of a trade mark. It is a mode of designating goods as being the goods
which have been, in some way or other, dealt with by A.B., the person who owns the trade mark."

Now, it seems to me that the ordinary concept of a trade mark as above expressed and the legal
meaning?that is the common law meaning, as it is sometimes called?have only this difference
between them, that the legal meaning by way of expansion connotes the rights which of necessity
are implied in or flow from the ordinary concept. The "mark under which a particular individual
trades" indicates user of the mark. That it "indicates the goods to be his goods" implies that he is
using it by reason of an actual or special property in the goods on which he puts his mark. That it
designates "goods which have been, in some way or other, dealt with by A.B., the person who owns
the trade mark" implies that it is distinctive of the man's absolute or special property in or dominion
over the goods?without which he must not mark them?as coupled with a proprietary right in the
mark. It seems to me, therefore, that there is nothing in the use of the term "trade mark" at common
law that carries with it more than is meant by the term in its ordinary use, whether that be called
commercial or colloquial. Without the essential attributes which are called legal, neither
distinctiveness nor absolute or special property in the thing, nor the right to the mark and its trade
use, could begin or continue. And I come to the conclusion that a trade mark, as spoken of apart
from Statute law by Judges and other legal authorities, is nothing but the thing connoted by the
same term in ordinary or commercial intendment.

What I take a trade mark to be then, using my own words, is this: A mark which is placed on goods
(1) to distinguish them as the goods of the person who uses the mark; (2) exercising dominion over
the goods, whether he has absolute ownership or only a contractual right to the possession; (3) in the
course of his trade; and (4) exercising a right to the exclusive use of the mark.

Now, it is not seriously contended that, if this or anything like it is the meaning of the term in the
Constitution, the provisions of sec. 74 of the Trade Marks Act 1905 are within the power conveyed
by the use of the term.

The owner of a trade mark needs no authority from his workmen or anyone else to apply his mark.
Nor does the owner of a trade mark need the authority of his employer to apply his mark to the
goods to which it "belongs" (to use the word of the Act of 1875). He applies his own trade mark in
virtue of his own right to it as coupled with the dominion he is entitled to exercise over the goods.
Here the owner of the goods is necessarily not the owner of the so-called trade mark, and the owners
of the so-called trade mark have no right to a particle of the goods. The person who uses the mark
has no right to its exclusive use. A hundred rivals of his in trade may be equally entitled to use it. It
is not distinctive in the true sense, the sense of "distinguishing a particular person's goods from
somebody else's goods" : Lord Halsbury L.C., Perry Davis & Son v. Harbord[48] . Distinctiveness
in this sense was not only essential before any enactment on the subject; it is so apart from Statute,
and is exacted as an essential even by the Registration Acts. But it is a waste of words to heap up
reasons why the thing described in Part VII. is not and cannot be a trade mark as a trade mark has
been known from the first concept of it till it acquired that name, and from then till now.

I am of opinion, then, that the term "trade mark" is not employed in the Constitution in any sense
which, apart from Statute, can include the workers' trade mark, and therefore that there is no power
to turn that mark from what it is into a trade mark.

I come now to the second branch of the question as to the validity of Part VII., namely, whether the
term "trade mark" as used in sec. 51 (xviii.) of the Constitution had in 1900, in any legislation which
we must take to have been then in the minds of the framers of the Constitution, acquired a meaning
which included a mark or label such as that which is here attacked.

I pass over for the present the question whether the legislation to be considered in this connection is
that of the Parliament of the United Kingdom or that of the several Australian States, or both. I will
deal with both, and will afterwards consider whether any other legislation can be held to have been
in contemplation. The first Imperial Statute is the Merchandise Marks Act 1862, which made no
provision for registration. In sec. 1 it gives a definition of a trade mark which does not vary
materially from the definition of Kay[49] . The definition is to be used "in the construction of" the
Act, which is for the prevention of the fraudulent use of merchandize marks. The definition
enumerates a large number of things as "marks," and the term "trade mark" is to include them all as
"lawfully used by any person to denote any chattel or (in Scotland) any article of trade,
manufacture, or merchandize, to be an article or thing of the manufacture, workmanship,
production, or merchandize of such person, or to be an article or thing of any peculiar or particular
descriptions made or sold by such person." The term was also to include any indicium which under
the Statutes as to registered designs is to be put on any article during the existence of any copyright,
&c. The whole definition is limited by the words "in the construction of this Act," with which it
begins. This Statute was repealed by the Merchandise Marks Act 1887. Passing over some minor
amendments, the other material Statutes passed before 1890 were the Trade Marks Registration Act
1875, the Patents, Designs, and Trade Marks Act 1883, the Merchandise Marks Act 1887, and the
Patents, Designs and Trade Marks Act 1888. The Patents, Designs and Trade Marks Act 1883
repealed the Trade Marks Registration Act 1875, and made fresh provision for registration and
otherwise. (The 103rd section will receive attention presently). It prescribed certain essential
particulars that a trade mark must at least contain for the purposes of the Act. The Merchandise
Marks Act 1887, besides repealing that of 1862 and making substituted provision, has in sec. 3 a
fresh definition, restricted so as to mean only trade marks entered in the register kept under the
Patents, Designs and Trade Marks Act 1883. The term is to include any trade mark which, with or
without registration, is protected by law in any British possession or foreign State to which sec. 103
of the last mentioned Act is under Order in Council for the time being applicable. (See sec. 104 of
the same Act). The provisions of sec. 103 have not, so far as we are told, been so made applicable to
the Commonwealth, and I may say at this stage that, in my opinion, any meaning which a trade
mark has, or has acquired in foreign States, has not, by virtue of any International Convention
followed by Statutes applying it, become a statutory meaning which we can take to have been in the
contemplation of the framers of the Australian Constitution. The remaining British Statute is the
Patents, Designs, and Trade Marks Act 1888, amending the Act of 1883. It substitutes a new clause
64 for that so numbered in the Act of 1883, stating certain "essential particulars" one at least of
which a trade mark must contain "for the purpose of this Act," that is, in order to be registrable.
These are: "(a) A name of an individual or firm printed, impressed, or woven in some particular and
distinctive manner; or (b) a written signature or copy of a written signature of the individual or firm
applying for registration thereof as a trade mark; or (c) a distinctive device, mark, brand, heading,
label, or ticket; or (d) an invented word in invented words; or (e) a word or words having no
reference to the character or quality of the goods, and not being a geographical name." (a), (b) and
(c) are in the definition section of the Act of 1883; (d) and (e) are new. Sub-sec. (2) provides that
"There may be added to any one or more of the essential particulars mentioned in this section any
letters, words, or figures ... but the applicant for registration of any such additional matter must
state in his application the essential particulars of the trade mark, and must disclaim in his
application any right to the exclusive use of the added matter," &c. I omit the proviso.

Now, the effect of the statements in the Registration Acts of the requirements for registration is not
in any way to define a trade mark, though they do, as Kerly on Trade Marks, 2nd ed., p. 24, puts it,
"contain enumerations of the classes of symbols which are capable of registration under them as
trade marks." And it has been held that trade marks, whether capable of registration or not, may be
acquired apart from registration: Sen Sen Co. v. Britten[50] , although registration may be a prior
condition to an action for infringement in the cases falling within the section. It is only the
registered owners of the trade mark or their assignees who can sue for an infringement of it; but
there is nothing to prevent a trader from bringing a passing off action. I venture to think it clear that
there is nothing in all this English legislation to give a trade mark, except for the purpose of any
Statute providing for registration, a meaning other than that which it had before these Statutes. See
per Baggallay L.J., in In re J. B. Palmer's Trade Mark[51] .

It remains to consider the Acts of the various Colonies, for such they were when legislation took
place.

Of these it is enough to say (1) that the Merchandise Marks Act of 1862 was adopted more or less
completely in five of them at different times up to 1865, in three instances with the addition of
registration provisions, in two without them. In one of the States the Acts of 1875, 1883 and 1887
have since been, in effect, adopted; in another only those of 1883 and 1887; in a third, that of 1883;
in a fourth, that of 1883 in respect of registration, and that of 1887 in respect of protection; in a
fifth, that of 1887; in the sixth, virtually nothing more: While as to international matters, two
Colonies have provided means for the adoption, if desired, of any Convention into which the United
Kingdom may enter with any foreign Government.

In none of these Statutes has any new general meaning or extension been given to the term "trade
mark" apart from the mere purpose of registration, nor is there reason to suppose that the term has in
Australia ceased to carry any of its original meaning, while it is impossible to select any of the
meanings which separate Statutes had given it for limited purposes only, and to say of that one
meaning, "this is the sense in which the constitution-makers used the term: this is the meaning that
in 1900 the term "trade mark" had for all Australia."

Statutes of many States of the American Union were cited to us to show that in those States the
legislatures had passed laws in which workers' labels of the kind now in question were termed trade
marks. Many decisions of American Courts were also cited, on the other hand, in most of which
such labels were held not to be in fact trade marks, whatever mere name might be assigned to them.
The Statutes in question, though of no importance for present purposes, are interesting because
legislation as to trade marks is a power reserved to the several States which have retained their
general legislative powers save so far as the federal Constitution has assigned them to Congress.
That body has not been armed by the Constitution with power to legislate as to trade marks. So that,
whatever legislation can do to turn into a trade mark a thing that is not one in essence, the States can
do. But the American cases are not of much assistance in this instance, because they are to be
considered only on the question of the meaning of the State legislation, and that legislation, in my
opinion, cannot, even apart from its many variances, be supposed to have been known to and to
have been in the minds of the framers of the Australian Constitution. Where a part of the
Constitution of the United States has been judicially interpreted and an identical or manifestly
equivalent form of expression has been adopted in the Australian Constitution, the words of the
former and the meaning judicially given them are of much importance, at any rate in weighing the
reasons for the interpretations cited. But this is a different matter. The United States Constitution
contains no provision similar to that of our sec. 51 (xviii.) Besides, if the framers of the Constitution
knew of the Statutes, they knew of the decisions, and knew that the great bulk of American
authority was to the effect that trade marks do not include union labels.

For the reasons given I am of opinion that the Constitution uses the expression "trade mark" in the
sense it bore both in the United Kingdom and here, apart from Statute, in 1900, and that the power
of legislation is co-extensive with that meaning, which does not cover the "workers' trade mark." It
is plain that the sections comprised in Part VII. of the Act are not severable from each other or in
themselves, and I add nothing to what the Chief Justice has said on that score. On the whole case
then I am of opinion that the plaintiffs are entitled in substance to the relief they seek.

O'Connor J.

Two separate questions of law have been submitted for our consideration. I propose to deal at once
with that which, though second in order, is first in importance, namely, whether the Parliament of
the Commonwealth has power to enact Part VII. of the Trade Marks Act 1905. The whole
controversy turns upon the construction of pl. xviii. of sec. 51 of the Constitution which enables
Parliament to make laws for the peace, order, and good government of the Commonwealth with
respect to "copyrights, patents of inventions and designs, and trade marks." The question to be
determined is whether the subject matter upon which Parliament is thus empowered to legislate
under the heading "trade marks" can include what is called the workers' trade mark created,
regulated, and protected, by secs. 74 to 77 of the Trade Marks Act 1905.

The meaning of the expression "trade mark" is plain enough taking the words in their ordinary
signification. So used the expression would include any mark used in trade or commerce, and would
undoubtedly cover the kind of mark described as the "workers' trade mark" in the provisions now
under consideration.

It cannot however be denied that the words taken together have acquired a meaning as a legal term.
The expression "trade mark" has long been used to describe a special kind of mark used in trade,
recognized as property, having well known legal incidents, and which had been for many years
before the passing of the Constitution a subject of international agreement in Europe, America, and
the different portions of the British Empire, and a subject of legislation in Great Britain and the
several Colonies of Australia. The ambiguity, therefore, which meets us at the outset is this: has the
Constitution used the expression in the sense which the words convey in their ordinary meaning, or
has it used it as a legal term carrying its acquired signification with it?

The rule of interpretation to be applied in such a case is well known. Where words have been used
which have acquired a legal meaning it will be taken, primâ facie, that the legislature has intended
to use them with that meaning unless a contrary intention clearly appears from the context. To use
the words of Denman J. in R. v. Slator[52] :?"But it always requires the strong compulsion of other
words in an Act to induce the Court to alter the ordinary meaning of a well known legal term." I
have been unable to find either in the sub-section itself, or in any other part of the Constitution, any
indication of the intention of the legislature to use the expression "trade mark" in any other than its
recognized legal meaning. On the contrary, the more the matter is considered the more clearly it will
appear that the expression cannot, consistently with the rest of the Constitution, have been used with
any other meaning. I shall take one illustration. The effect of the commerce clause (pl. i. of sec. 51),
read with the rest of the Constitution, is to leave under the exclusive control of the State all
operations of trade and commerce carried on wholly within its own territory. The express words of
the sub-section invest the Commonwealth with control of all trade and commerce other than that
carried on wholly within the limits of a State.

The regulation of marks used in trade and commerce is a necessary part of the control of trade and
commerce itself, and the exclusive right of the State to regulate all marks used in trade and
commerce carried on wholly within its boundaries, and of the Commonwealth to regulate all marks
used in other trade and commerce, would necessarily be included within their respective powers.
But it became obviously essential in the distribution of powers between Commonwealth and State to
deal in some special way with the kind of mark generally known and described by the legal term
"trade mark," internationally recognized as property, carrying with it universally acknowledged
rights, used both in the trade and commerce controlled by the State and in that controlled by the
Commonwealth, and which was, at the time of the passing of the Constitution, a subject of
agreement between the Colonies themselves and between the several Colonies and Great Britain.
That species of mark could not in the nature of things be controlled by the States. It stood in the
same position as copyrights, patents of inventions and designs, and could be dealt with effectively
only by the national power of Australia. It was therefore specifically mentioned by the sub-section
as amongst the subjects under Commonwealth control. And, interpreting the expression in its legal
sense, the Commonwealth is thus empowered to legislate with respect to the trade and commerce of
a State in so far as may be essential for the effective exercise of that control. If, however, the
expression is to be taken in the ordinary sense of the words, as including every mark used in trade
and commerce, it is difficult to see what limit can be placed on the power of the Commonwealth
legislature to interfere in the control and regulation of the purely internal trade of a State. It would
include the power to establish a registry, to direct what marks shall be registered, under what
conditions they shall be applied for and used, and to what extent failure to comply with the
conditions shall involve the restriction of any particular class of trade. There is hardly any operation
of trade within a State that would not be subject to Commonwealth interference by virtue of such a
power.

Under these circumstances not only is there no reason why the legal meaning of the expression
should not be adopted, but it is clear that any other meaning would be entirely inconsistent with the
whole scheme of distribution of the commerce powers of Australia which the Constitution has
enacted.

What, then, is included within the legal term "trade mark" as used in the Constitution? In entering
upon that inquiry some general principles of interpretation may well be kept in view. The
Constitution, it must be remembered, is an instrument of government which from its nature must
express its meaning in general terms. It is not only a law in itself, but an authority for making laws,
and was intended by means of its broad general terms to adapt itself as far as possible to the
changing conditions of trade and commerce, and to the new conceptions of legal rights and
obligations which might in the ordinary course of things be expected to be evolved in the
development of Australia. On the other hand it must always be remembered, as this Court has on
several occasions pointed out, that the Constitution is something more than an instrument of
government. It embodies the terms on which the people of the several States agreed for the sake of
union to surrender their autonomy in certain respects. Keeping both these aspects of the Constitution
in view, the true rule of interpretation would appear to be that there should be given to all legal and
technical expressions the widest meaning that is consistent with the terms of the contract of union.

In the case of South Carolina v. United States[53] Mr. Justice Brewer, in delivering the judgment of
the Court, says, in reference to construing the words of the American Constitution in the sense in
which they are used by its framers:?"The Constitution is a written instrument. As such its meaning
does not alter. That which it meant when adopted, it means now. Being a grant of powers to a
government, its language is general; and, as changes come in social and political life, it embraces in
its grasp all new conditions which are within the scope of the powers in terms conferred. In other
words, while the powers granted do not change, they apply from generation to generation to all
things to which they are in their nature applicable. This is no manner abridges the fact of its
changeless nature and meaning. Those things which are within its grants of power, as those grants
were understood when made, are still within them; and those things not within them remain still
excluded. As said by Mr. Chief Justice Taney in Dred Scott v. Sandford[54] :?"It is not only the same
in words, but the same in meaning, and delegates the same powers to the government, and reserves
and secures the same rights and privileges to the citizens; and as long as it continues to exist in its
present form, it speaks not only in the same words, but with the same meaning and intent with
which it spoke when it came from the hands of its framers, and was voted on and adopted by the
people of the United States. Any other rule of construction would abrogate the judicial character of
this Court, and make it the mere reflex of the popular opinion or passion of the day." "

When, by the terms of this instrument of government and of union, the people of the several
Colonies of Australia gave up to the Commonwealth the power to make laws in respect of trade
marks?a power which when once exercised by the enacting of a law was to become exclusive within
the area covered by that law?what was the subject matter of legislation which they thereby
surrendered? I agree with Dr. Cullen that in ascertaining what that was we must remember that the
power is "to make laws with respect to trade marks," that the power is not to be confined by mere
conditions or qualifications attached by law to the use of trade marks at the time the Constitution
was passed, except in so far as those conditions and qualifications were of the essence of the legal
concept of trade mark as generally understood at that period. As Mr. Justice Brewer observes in the
passage last quoted:?"while the powers granted do not change, they apply from generation to
generation to all things to which they are in their nature applicable." Those words seem to suggest
that the true line of inquiry is first to ascertain what were the essential characteristics of a "trade
mark" in Australia at the time when the Constitution was passed, disregarding all conditions,
qualifications, and attributes, which were not of its very nature and essence, and then to ascertain
whether those characteristics are to be found in the "workers' trade mark" now under consideration.

In 1900 there were in force in all the Australian Colonies enactments relating to trade marks. There
were also in Great Britain and other parts of the British Empire bodies of Statute law on the same
subject. The English Courts and the Courts of the several Colonies had before then on many
occasions expounded the law on the subject. If there were at that time any difference between the
meaning of "trade mark" in English law and in the laws of the Australian Colonies we would be
bound, I think, to assume that the Constitution used the expression in the sense known and
recognized in Australia. But that question does not arise here because there was no such difference.
On the contrary, there was and is universal agreement in the laws of every part of the British Empire
as to what is included in the expression, and that universal agreement extends to the mercantile and
business community as well as to lawyers and legislatures. In the course of argument some
distinction was attempted to be drawn between the meaning of the expression in the lawyer's sense
of the word and in that adopted by ordinary citizens. But there is no such distinction. The mercantile
and business communities naturally use legal expressions with the meaning which the Courts and
the legislature have attached to them.

Counsel on both sides brought under our consideration many American Statutes in force in 1900
and many decisions of the American Courts pronounced before that period. If it were necessary now
to decide the matter, I would have no hesitation in holding that in 1900 the legal concept of a trade
mark in that country was identical with that obtaining in Australia and in the British Empire
generally. That view is strongly supported by the reasoning of the American Judges in many cases.
In Weener v. Brayton[55] the question for decision was whether a union label, similar in all respects
to that in question here, was a "trade mark." The Court held that it was not, that it was entirely
wanting in the essential characteristics of a "trade mark" as that expression was understood in its
ordinary legal meaning. For that reason, apparently, it was deemed necessary in many of the States
of America to pass special legislation for the purpose of constituting the union label a trade mark
and so bring it within the protection of the ordinary law of trade marks. The value therefore of
illustrations from American legislation and American decisions in this controversy is that they
would appear to demonstrate that the legal concept of a trade mark in that country was identical
with that which obtained throughout the British Empire in 1900.

In inquiring what was included in the term "trade mark" in Australia in that year it is very important
to consider the common law. The concept of a trade mark is the product of the common law, and in
England, long before there was any legislation on the subject, trade marks as they now are had been
established and recognized by the Courts. That had also been the case in America, and the
observations of Mr. Justice Miller on their origin in that country are equally applicable here. In the
Trade Mark Cases[56] he says:?"The right to adopt and use a symbol or a device to distinguish the
goods or property made or sold by the person whose mark it is, the exclusion of use by all other
persons, has been long recognized by the Common Law and the Chancery Courts of England and of
this country, and by the Statutes of some of the States. It is a property right for the violation of
which damages may be recovered in an action at law, and the continued violation of it will be
enjoined by a Court of Equity, with compensation for past infringement. This exclusive right was
not created by the Act of Congress, and does not now depend upon it for its enforcement. The whole
system of trade mark property and the civil remedies for its protection existed long anterior to that
Act and have remained in force since its passage."

After this species of right had been long recognized by the English Courts it was adopted and
regulated by the English Statute law, and afterwards by Statutes in the several Colonies of Australia,
which in substance followed the English legislation.

In the course of the very able argument addressed to us on both sides an exhaustive examination was
made of the English Statute law relating to trade marks and of the Statutes in force in the several
Colonies of Australia at the time when the Constitution was passed. But I have been unable to see
that Statutes, either in England or in Australia, except the special English enactments which I shall
next mention, have done more than adopt, regulate, and protect "trade marks" as recognized at
common law.

Some reliance was placed by the defendants' counsel on a series of English Statutes relating to
workers' marks known as cutlery marks, Sheffield marks, and to gold and silver plate marks or hall
marks, and other marks of the same kind which it is unnecessary to enumerate; some of them, the
gold and silver plate marks for instance, dating as far back as 2 Henry VI. c. 17. Speaking generally,
their purpose was to protect the public against fraud in the sale of goods, and that object was
accomplished by making it compulsory on manufacturers to impress or stamp on those goods a
company mark, guild mark, or individual workmen's marks, as the case might be. In later years the
interests connected with such marks became so numerous and important that their acquisition and
use were regulated by Statute. Later still many of these special registers were incorporated with the
ordinary trade mark registers under the Trade Marks Acts, and they became registered "trade
marks." The marks thus dealt with, however, having their origin in local conditions or relating only
to special trades, are in their nature and incidents entirely different from ordinary trade marks, and it
appears plainly from the context in which the expression occurs in sub-section XVIII., and from a
consideration of the Constitution as a whole, that its framers had in mind when the sub-clause was
enacted "trade marks" as generally known and recognized in commerce, and protected by the
Conventions of all mercantile nations, and not some special and local variety of mark used only in
England.

After a careful consideration, therefore, of all the Statute law on the subject, I am of opinion that no
useful purpose would be served by further reference to it, and I proceed at once to consider what
was in 1900 the nature of the group of rights created at common law and recognized in England and
in Australia by Statute law and by the commercial and business world under the designation "trade
mark."

Trade marks were first judicially recognized in England in 1838, when the Courts of Chancery gave
protection to the rights of property of traders in trade marks used by them in their business to
distinguish their goods from those of other traders. In Ransome v. Graham[57] Bacon V.C. thus
explains the origin of trade marks:?"A manufacturer who produces an article of merchandise which
he announces as one of public utility, and who places upon it a mark, by which it is distinguished
from all other articles of a similar kind, with the intention that it may be known to be of his
manufacture, becomes the exclusive owner of that which is thenceforth called his trade mark.

By the law of this country, and the like law prevails in most other civilized countries, he obtains a
property in the mark which he so affixes to his goods. The property thus acquired by the
manufacturer, like all other property, is under the protection of the law, and for the invasion of the
right of the owner of such property the law affords a remedy similar in all respects to that by which
the possession and enjoyment of all property is secured to the owners.

"

Again, Cotton L.J., in delivering judgment in the case of In re Hudson's Trade Marks[58] , 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] , 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.

Many definitions were cited in argument before us, but I shall not refer to them in detail. I propose
to state only the conclusions at which I have arrived as to the general effect of them after very
careful consideration. 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] .

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.

Some observations of Mr. Justice Devens, delivering judgment in the Supreme Court of
Massachusetts in Weener v. Brayton[61] , 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[62] 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[63]
:?"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[64] 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[65] 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[66] 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.[67] 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[68] . He said:?"One of the earliest cases on the subject is Attorney-General v. Oxford, Worcester,
and Wolverhampton Railway Co.[69] . 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." "

[70] he quotes Lord Hatherley as saying in Attorney-General v. Ely, Haddenham, and Sutton
Railway Co.[71] :?"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."

Again, in London County Council v. Attorney-General[72] , the same principle is recognized. The
London County Council, purporting to act under their statutory powers to purchase and work
tramways, were working lines of omnibuses in connection with their tramways. The Court of
Appeal, in a suit by the Attorney-General on the relation of other omnibus proprietors, being
ratepayers of the City of London, and carrying on lines of omnibuses in opposition to those of the
County Council, granted an injunction against the further carrying on of the omnibus business. The
decision was affirmed by the House of Lords. Lord Halsbury[73] :?"If there is excess of power
claimed by a particular public body, and it is a matter that concerns the public it seems to me that it
is for the Attorney-General and not for the Courts to determine whether he ought to initiate
litigation in that respect or not."

In a unitary form of government, as there is only one community and one public which the
Attorney-General represents, the question which has now been raised cannot arise. It is impossible,
therefore, that there can be any decision either in England or in any of the Australian Colonies
before Federation exactly in point. But it seems to me that in the working out of the federal system
established by the Australian Constitution an extension of the principle is essential. The Constitution
recognizes that in respect of the exercise of State powers each State is under the Crown an
independent and autonomous community. Similarly the States must recognize that in respect of the
exercise of Commonwealth powers all State boundaries disappear and there is but one community,
the people of the Commonwealth. The proper representative in Court of each of these communities
is its Attorney-General. That principle is in substance recognized by secs. 61 and 62 of the Judiciary
Act 1903, enacted by virtue of sec. 78 of the Constitution, which provides that suits on behalf of the
Commonwealth may be brought in the name of the Attorney-General of the Commonwealth, and
suits on behalf of the State may be brought in the name of the Attorney-General of the State. Where,
therefore, the complaint is, not that the State or the Commonwealth as legal entities, but that the
people generally of either State or Commonwealth have been injuriously affected by some illegal
exercise of State or Commonwealth power, as the case may be, it would seem to follow that the
Commonwealth Court must recognize the State Attorney-General as being entitled to represent the
State in any claim for relief against an illegal act so affecting the people of the State. That being so,
there can be no question that the establishment of a registry purporting to be by public authority of
the Commonwealth, but really in excess of its powers, which may hamper the freedom of citizens of
the State in the carrying on of their businesses?for this Act may apply to any business?is an Act
injuriously affecting the people of the State. For these reasons I am of opinion that the Attorney-
General for New South Wales is entitled to be heard in this Court as representing the public of New
South Wales in such a case as this, where the illegal act is of such a nature as to affect not only the
relator but the whole trading community of the State, and that in such a case it is not necessary that
any actual injury to the public should be proved. Both grounds of objection to the plaintiffs' right to
proceed therefore fail, and I hold that they have established a good cause of action. It follows that
on both questions of law submitted the answers of the Court should be in the plaintiffs' favour, and
they are entitled to the declarations and orders and the injunction asked for in their statement of
claim.

Isaacs J.

The plaintiffs contend that Part VII. of the Trade Marks Act 1905 is unconstitutional and void as
being beyond the power of the Federal Parliament to enact.

They cannot succeed without establishing two things, first, their right to challenge the validity of the
Act, and then its invalidity.

As to the first, the Court cannot be called on, or with propriety assume, to question the legality of
what Parliament has enacted as the will of the nation unless such a determination is absolutely
necessary. It is a duty that has to be discharged when necessity arises as fearlessly and fully as the
lightest that presents itself, and is in one respect the special function of this Court, but the
interference must be essential. The paramount law of the Constitution must be upheld whenever a
judicial controversy in which it is involved comes properly before the Court, but this exercise of
judicial power is only legitimate in the last resort: See Bruce v. Commonwealth Trade Marks Label
Association[74] ; Chicago and Grand Trunk Railway Co. v. Wellman[75] ; and the learned Editor's
note in the report of Webb v. Outtrim[76] .

Unless, therefore, the plaintiffs, or one of them, can show some legal cause of complaint, the
infringement actual or contemplated of some private right (see per Lord Cairns L.C. in Singer
Machine Manufacturers v. Wilson[77] ), or, in the case of the Attorney-General for New South
Wales, some interference with the general community he represents, the Court should not proceed to
determine the main question. If in the absence of such circumstances it expressed its view as to the
legality of the Act, it would be overstepping its own constitutional functions, and offering an extra-
judicial opinion as to the conduct of a co-ordinate branch of the Government.

Learned counsel for the plaintiffs have stated that they would be content with a mere declaration
under Order III.r.1 of the High Court Procedure Rules. With a slight, but not unimportant,
modification, it is in the form which the present English corresponding rule has assumed. But the
declaration referred to in the rule even in its extended form presupposes the establishment of an
existing right. Its present form was designed to meet such cases as were in Jackson v. Turnley[78]
and Rooke v. Lord Kensington[79] pointed out as beyond the ambit of the older rule: See also Privy
Council in Rajah Nilmony Singh v. Kally Churn Battacharjee[80] and Sardut Ali Khan v. Khageh
Abdool Gunnee[81] and per Lord Collins M.R. in Williams v. North's Navigation Collieries (1889),
Ltd.[82] . If a present and complete right is shown, or if facts supporting such a right are alleged as
existing as between the parties though its enjoyment or enforcement may be deferred, a declaration
may in a proper case be made whether the right be contractual: Société Maritime v. Venus Steam
Shipping Co.[83] ; or non-contractual: London Association of Shipowners and Brokers v. London
and India Docks Joint Committee[84] . But the right must not be dependent for its existence on
possible events in the future, for in that case how could the Court declare it? Possible breaches of
existing rights are different.

The individual plaintiffs assert a locus standi in two ways. First, they set up a business right, that is,
the right to carry on their business of making and selling beer unmolested and free from dictation,
or, in other words, free from compulsion to employ union labour or lose custom if they do not. If
compulsion existed I should think their claim good. But how does registration amount to or
authorize compulsion? The fact that the defendants register their mark in a book in the Trade Marks
Office, does not induce or deter a consumer as to the beer he drinks. The use by other persons of a
union mark on their beer might affect plaintiffs' custom, but that can be done independently of
registration, and registration gives no further right of user than exists without it; as Buckley L.J. said
In re Application of Lyle and Kinahan Ltd.[85] , the registration of a trade mark confers no right of
user but only that of restraining others from using that trade mark.

The only contingency in which registration could possibly affect the plaintiffs prejudicially is this:
should they attempt to deceive the public by affixing the mark so as to represent as union made any
beer that is not so made, they would be at once exposed to statutory correction. To honest brewers,
such as I assume the plaintiffs to be, that could be no possible ground for objection; a dishonest
brewer intending to apply the mark untruly has no right to claim protection for his dishonesty. Ex
turpi causâ non oritur actio. No right can form the basis of a cause of action if it rests on public
deception: Ford v. Foster[86] . Therefore the plaintiffs' claim to protect a business right fails.

The second right they assert is a right, should they ever desire to exercise it, of selecting a trade
mark resembling the one sought to be registered by the defendants. I do not understand a claim to
something which is non-existent and may never exist, which is yet unconceived and may never even
be desired; which, if ever conceived, desired, and brought into existence by anybody, may come into
existence as the exclusive property of some Australian brewer other than the plaintiffs. They might
with even more reason assert an exclusive claim to fish still in the sea, because there, at least, the
things already exist.

The case of Powell v. Birmingham Vinegar Brewery Co.[87] does not advance the plaintiffs' case.
What was established there both in the Court of Appeal and the House of Lords, and formed the
basis of the judgments, was this: that "Yorkshire Relish" was the name of the article itself, and no
trader can validly assert an exclusive right to call articles of merchandise by their true names, for
that would amount to a virtual monopoly in the sale of the things themselves. The objectors relied
on an existing business right to sell the sauce. This view of Powell's Case[88] , is fully borne out by
the later case of In re Trade Mark of Wright, Crossley & Co.[89] .

Neither does Paine & Co. v. Daniells and Sons' Breweries[90] carry the plaintiffs any further. That
case was a decision with regard to "a party aggrieved" for the purpose of special statutory
application, but is no authority for a right of action depending purely on the principles of the
common law. Registration alone could not produce injury to business. It is not a condition of user,
and therefore no component part of it. If mere distant possibility of impediment dependent on
conjectural occurrences be enough to entitle a plaintiff to challenge the validity of an Act of
Parliament, I do not see why any person in the community could not, immediately an Act was
passed relating say to the incorporation of Banks, raise the question of its constitutionality, because
he already has the legal power of associating with others to form a banking corporation, and if he
should choose to exercise it at some date, however distant, the Act stands in his way.

So far as the individual plaintiffs are concerned I think they have shown no case whatever.

I next consider the position of the Attorney-General for New South Wales. The fact that he acts on
the relation of another is not material. If a public right is infringed, and the whole community is
thereby affected, the Attorney-General may protect the public interests by appropriate action. If the
public interests involved are State interests, the State Attorney-General may sue; if Commonwealth
interests are involved, then the Commonwealth Attorney-General, representing the larger
community, may sue.

As determined recently in the steel rail and wire netting cases, it is a fundamental truth that
Commonwealth legislation looks to the Commonwealth as a whole and draws no distinction
between States. So far as the claim of the Attorney-General for New South Wales rests on the right
of individuals to register trade marks, I am of opinion it should fail for want of interest, because
under a valid Commonwealth Act the right to register is a right which they can only enjoy as
Australians, that is, as members of the larger and not the smaller community.

But if under the assumed powers of a federal Statute?in fact invalid?some usurpation of State
administration or judicial authority is attempted in the State, it would be a trespass on State territory,
and the Attorney-General for the State, as representing the King, could apply to restrain it. His
rights in this respect could not be lessened merely because a similar usurpation was asserted over the
territory of other States. And if there is a legislative usurpation, if an Act of the Commonwealth
Parliament unauthorized by the federal Constitution, occupies part of the legislative field
exclusively reserved for the State of New South Wales, and by its commands, operative in all parts
of Australia, prescribes to the citizens of that State the rules of conduct they must follow under
penalty, I am of opinion that the case is parallel with that of administrative and judicial intrusion
upon State territory. The Attorney-General for a State in such case does not depend upon the
infringement of rights possessed by individuals as Australians under a federal Statute, but protects
on behalf of the Crown those rights and functions with which the King, guided solely by his State
representatives and advisers, is invested in respect of the State.

The fact that his rights and functions in other States are similarly affected is immaterial

If, therefore, Part VII. of the Act is beyond the power of the Parliament, its provisions constantly
operating in New South Wales, and assuming to govern the conduct of residents of that State in
relation to rights existing independently of Commonwealth legislation, the Attorney-General may
protect the Royal powers from usurpation by obtaining a declaration that the legislation is
unauthorized.

A question was raised during the argument, and may appropriately be dealt with here, whether sub-
sec. (c) of sec. 74 and the provisions for registration were not sustainable under the trade and
commerce power, even if other portions of Part VII. were ultra vires, as not being referable to that
power, and not within the power as to trade marks.

Doubtless a good deal may be said for the validity of sec. 74 (c), which is decidedly severable in
words, sense, and operation, from the rest of the Part, except mere registration, and that might be
regarded as auxiliary to sec. 74 (c).

Protective provisions of this nature find a place in English and American legislation; and so in secs.
88 and 90 of the Act now under consideration.

The Court could, it is true, give perfect effect to every word of sub-sec. (c) without adding a word,
or straining a word, and without calling in aid any power other than the trade and commerce power
and its incidental powers. Therefore such cases as the Trade Mark Cases[91] are not applicable,
because, as Miller J. pointed out, the Court was there asked, not to disregard words that had been
used, but to insert into general words other words of limitation that had not been used. So in all the
cases that have followed that decision?viz., United States v. Ju Toy[92] and the precedents cited by
Holmes J.: Illinois Central Railroad Co. v. McKendree[93] , and The Employers Liability Cases[94]
. Consequently those cases are not relevant. But another principle comes into play. Though sub-sec.
(c) is separate from sub-secs. (a) and (b), as one branch of a tree is separate from another, it is not an
independent enactment. The same trunk, the same main purpose and idea, unites and supports them
all. Sub-sec. (c) is a very important enactment, but it is clearly intended to guard against evasion of
the proprietary rights in a trade mark, and would not have been enacted if it were thought the main
purpose was unlawful. If the principal fails, its accessory, I conclude, cannot stand.

The Court is therefore bound to consider the validity of the provisions for registration of workers'
trade marks. They are challenged on the ground that the marks are not and cannot under any
circumstances be brought within the meaning of the expression "trade marks" as found in pl. xviii.
of sec. 51 of the Constitution. If that is so, the objection is valid, for, the Commonwealth being a
Government of enumerated powers, unless those powers are large enough of themselves to authorize
such provisions, the legislation must fall. The Federal Parliament, in my opinion, based upon
decisions of the Privy Council? The Queen v. Burah[95] and Hodge v. The Queen[96] ?has within
the limits of its conferred powers authority as great as the Imperial Parliament. I have expounded
this view at length in the Excise Cases, and do not repeat my reasons. I adhere to them. But the
Commonwealth Parliament cannot extend its powers; that would be breaking through the
Constitution, and invading the domain reserved to the States. And no considerations of expediency
or desirability springing from any source whatever are permissible to the Court in determining the
limits of an express and substantive power. It is a mere question of dry law as to the extent of the
power granted, to be determined on ordinary legal principles. Those principles have been plainly
stated by Lord Selborne in The Queen v. Burah[97] , and I still accept them as my guide here.

The burden of establishing illegality is on the plaintiffs, and they endeavour to discharge it by
denying to these marks certain characteristics which, it is contended, are essential to the
fundamental concept of a trade mark. The essentials of a trade mark, according to the plaintiffs,
are:? (1) Ownership of the goods must co-exist with ownership of the mark used in connection with
them. (2) Personal identification of the proprietor of the trade mark. (3) Exclusive ownership of the
trade mark by the registered proprietor. (4) An existing business actually carried on at the time the
mark is acquired, the acquisition being possible only by user of the mark in the business; or, what is
substantially the same thing, by means of preliminary registration followed by immediate business
user of the mark. (5) The business must be an independent commercial business. (6) The proprietor
must be a person or association capable by State law of owning a trade mark.

If these grounds of objection to the legislation are found not to be substantiated there is no reason
for treating it as invalid.

There is one governing principle which ought to be made clear at this point. To ascertain the really
essential characteristics of a trade mark it is necessary to distinguish what is merely occasional,
though frequent, and to strip the expression of everything that is not absolutely fundamental. If we
find some attribute universally attaching to the idea in all circumstances, that attribute is probably
indispensable; but if any feature, however usual its presence may be, is not invariably existent, if
trade marks, well recognized and established and enforceable by English law, can be found without
that feature, it cannot, I apprehend, be asserted that the fundamental concept includes the variable
feature. The power of legislation is with respect to trade marks?that is, trade marks in the fullest
sense, and not merely usual or ordinary trade marks. The fundamental concept once ascertained, the
power is unlimited. I shall consider the various points in order, one by one.

(1) Ownership of the goods. Some of the cases?more particularly some of the American cases?do
undoubtedly lead to the supposition that a trade mark cannot be owned except in conjunction with
the ownership of the goods to which it is applied. Most of the English decisions cited were cases
where the two facts co-existed. But during the course of the case this argument for the plaintiffs
weakened, in view of instances that were suggested, and in the face of a decision such as that of Re
Sykes and Co.'s Trade Marks[98] . That case, which was not and cannot be impeached, is decisive of
the position that ownership of the goods is not essential to proprietorship in a trade mark. The
material facts were:?Sykes and Co. were calico bleachers, who neither made bought nor sold
calicoes, but merely bleached them for manufacturers or merchants. It was the custom in the
bleaching trade to stamp the bleacher's mark in blue color inside the first fold of each parcel of
calico, which was then stitched up, the trade mark of the manufacturer or merchant being stamped
on the outside of the parcel. The bleacher's mark was looked for, not by the public, but by skilled
wholesale buyers, as a guarantee that the calico was bleached by a particular house, and that the
length of calico contained in the parcel was measured by them. The report says:?"Thus they differ
from ordinary trade marks, and convey a meaning only to skilled persons, who can readily
distinguish the difference between marks closely resembling one another." Points of importance may
be noted:? (1) The bleachers had no ownership in the property. (2) Their contribution to its
production was labour only, viz., bleaching and measuring. (3) The marks indicated bleaching and
measuring by the applicants, and were looked upon as a guarantee in those respects. (4) The only
right of bleachers to use the marks on other people's goods was custom, that is, a generally
recognized permission.

Hall V.C. decided that they should be registered as trade marks, the limitation as to user being
immaterial for present purposes. This case is a clear instance of what the law regards as the "lawful
user" of a mark upon goods?a very material point when statutory definitions come presently under
review.

Apart from the recognized authority of that decision, it must, on reflection, be admitted that, in the
known circumstances of trade and commerce, to deny to persons engaged in business the right to
protect themselves by means of trade marks indicating their skill, whether of manufacture or
otherwise, exerted upon goods passing through their hands, would be to ignore the necessities and
facts of daily commercial intercourse.

It is, however, desirable, and having regard to the elucidation of others of the objections raised,
essential to thoroughly examine this branch of the argument, because a clear comprehension of what
is meant by "the goods of the proprietor of the trade mark" is I believe most helpful to a proper
understanding of the rest. I go at once to the recent English Trade Marks Act 1905, and point to the
definition of a trade mark in that Act.

In sec. 3, the definition section, we find that for the purpose of the Act:?"A "Trade Mark" shall
mean a mark used or proposed to be used upon or in connexion with goods for the purpose of
indicating that they are the goods of the proprietor of such trade mark by virtue of manufacture,
selection, certification, dealing with, or offering for sale."

It has been said that this Act, being later than the Commonwealth Constitution Act, is not to be taken
as a reliable guide to discover the meaning of the term "trade mark" in the Constitution. In some
respects that may be true, but for the present I think the definition I have quoted is a substantially
accurate definition of a trade mark as it has always been known, that is to say in its essentials. The
questions as to what persons can own a trade mark, how it can be created, its assignability, or
method of assignment, and all other incidents, which may or may not attach to it, are entirely beside
that which is here the primary and controlling problem, namely, "what is the thing itself, which is
called a trade mark?" To any suggestion that the definition I have quoted is new, in the sense that it
enlarges the former conception of a trade mark, I would refer to the opinion, none the less reliable
for being stated under circumstances of more than ordinary responsibility, given by the learned
principal promoter of the Bill which has now become the English Act. Lord Justice Fletcher
Moulton (then a member of the House of Commons), was a member of the Select Committee
appointed by the House to examine and report upon the Bill, and he himself gave evidence before
the Committee. His statements I refer to only as those of an eminent lawyer upon a subject with
which he is conspicuously conversant. At that time, as the Bill stood, the definition was precisely as
it stands now except that the word "certification" was not yet inserted. Mr. Fletcher Moulton was
asked this question:?"Take trade mark, does that in your opinion introduce an alteration in the law as
regards what is meant by trade mark?" The answer was "No, excepting this; it puts clearly what I
think has not been always clear to the Courts that it is not merely manufacture that entitles a man to
a trade mark in goods. Take the case of the trade mark of Whiteley, the universal provider; I think
he has as his trade mark two hemispheres with a map of the world. Probably nothing on which this
trade mark appears is his manufacture, but he offers it for sale, and he selects it and he is perfectly
entitled to have a trade mark for that purpose. So that the only way in which the definition of trade
mark possibly enlarges?but I should rather say ascertains?the meaning of trade mark is that I have
formally used the words: "manufacture, selection, dealing with, or offering for sale." I may say that
I put in "dealing with" because it was pointed out to me that in some of our very large export trades,
the export agent has a trade mark which he puts on goods that pass through his hands. The large
export houses that work on indent from abroad, have marks of their own, which they use in this way
and it was suggested that "manufacture, selection, or offering for sale," might not include that mode
of use, so in order to meet the point I put in the words "dealing with." "

Further on Mr. Fletcher Moulton says of the expression "selection" that it might come under
"offering for sale," but it might be that a person buys on indent for other people. "Selection," he
adds, "has always been considered to be a very important part of the handling of goods." He
says:?"It is a new expression, but it is a valuable one in that way." He was then pointedly asked,
"How far, according to your view, is there any extension of the subject of trade mark by this
definition beyond what the Courts have already decided under the existing law?" The reply was:?"I
do not think that there is any real extension, but I think it recognizes the extension which the Courts
have, when necessary, put upon it." Again the learned witness said:?"May I explain ... why I have
used the words "they are the goods of the proprietor of such trade mark." What I want to guard
against is appearing to mean that they are the property of that man; they are his goods, not in the
sense of their being his property" ; in fact a man may put his trade mark on goods worth thousands
of pounds without having a penny of interest in them.

The case of Major Bros. v. Franklin & Son[99] is a judicial decision that property in the goods as
ordinarily understood is not essential to a trade mark. It perhaps will be convenient to state Lord
Justice Moulton's concentrated view on the nature of a trade mark. He said: "A trade mark is almost
a concept: it is a thing capriciously chosen for the purpose of indicating origin, and therefore it must
have a distinctive character, but it need have nothing else."

I think, therefore, it is clear that ownership of the goods is no necessary part of the concept of a
trade mark.

2. Personal identification of the trade mark proprietor.?This objection is that, in order to be a trade
mark, the mark must point to some particular person or persons of whose workmanship the goods
are. If by this is meant that the workmen are to be personally identifiable by means of the trade
mark the authorities are overwhelming against it. It is sufficient to refer to Birmingham Vinegar
Brewing Co. v. Powell[100] . If it means "a particular manufacture," as Lord Herschell in that case
said it did, then I cannot see the point of the objection. The distinctiveness required by the
Commonwealth Act is that the mark shall indicate that the articles to which it is applied are the
exclusive production of the workers or of members of the association registering the trade mark.
That is distinctive.

The degree of distinctiveness is immaterial. Once the position is grasped that the expression "the
goods of the proprietor of the trade mark" does not mean the ownership of the goods or anything
more than that the goods have in some way been "dealt with" by them?I leave out of consideration
for the present who can be the owners of the mark?then it cannot be necessary that the mark should
point to any particular individuals composing the proprietors of the mark as being the specific
persons handling the specific articles. That would not be necessary in the case of a trading firm
having branches, members and servants in various parts of the world. I am, of course, not now
considering the actual mark tendered for registration in this case, for, on the point of
constitutionality of the section, that is beside the question, and on that point of constitutionality it is
the provisions of the Act alone that are to be regarded. We have to assume a worker or members of
an association of workers who can possibly be considered the producers of goods in whole or in
part. Whether a given mark or a given association answers the necessary requirement of the Act is
quite another question. I see no reason for differentiating between the case of members of an
association of workers, working for wages for an employer producing articles and indicating by a
mark that the goods are the product of members of the association, and the case of the same persons
being members of the same association of workers, but working by independent contracts for the
same employer. Looking to the definitions already quoted there is as much distinctiveness of origin
in the one case as in the other. If there were some special method of preparing or treating an article
of merchandise, a method only known or practised by a particular association of wage earners, why
would not a mark indicating that the article is prepared or treated by some member of the
association be distinctive, and a most excellent guarantee to the public, and of the same character in
all respects as if the association were in independent business?

(3) Exclusive proprietorship of mark. The next objection is that in order to be a trade mark the right
to apply it must be exclusive. Lord Cranworth said in the Leather Cloth Co. v. American Leather
Cloth Co.[101] :?"The right which a manufacturer has in his trade mark is the exclusive right to use
it for the purpose of indicating where, and by whom, or at what manufactory, the article to which it
is affixed was manufactured." This view is as a general rule, but not invariably, carried out in the
Trade Marks Registration Acts. But the truth is that the Courts in restraining by injunction the use of
another's trade mark as such?that is, without regard to passing off?required proof that the mark
belonged to the plaintiff, in other words, that it was his exclusively, in the sense that its use was not
of common right. I do not now specifically deal with the Three Mark Rule, which I shall more
particularly refer to presently, but of the generality of cases. The word "exclusive" in Lord
Cranworth's dictum requires some limitation of its literal meaning. If it be material, I deny that the
exclusive right of one person or one firm to use a particular mark is essential to its character of trade
mark at common law, if exclusive be understood in the strictest sense. In the vast majority of cases
the right is exclusive, because the mark has been originated by the particular trader using it. And if a
trade mark has been so employed in the market as to indicate that goods come from one particular
firm to the exclusion of all others, that firm has what is termed exclusive property in the mark for
the goods: Somerville v. Schembri[102] . But circumstances can easily be conceived where, by
acquiescence or concurrent user, the mark has either been allowed to be copied or is used as a trade
mark by another or others, so that no Court could restrain the use of it. This seems to be assumed by
the Privy Council in Somerville v. Schembri[103] . Still it could not be truly said that it has ceased to
be a trade mark of its own originator, though it had ceased to be his trade mark exclusively, or that it
was not a trade mark of any of the persons concurrently using it. A valuable illustration bearing on
this point is afforded by the written précis of the evidence to be offered by Mr. Chas. Bailey to the
Select Committee, which is worth quoting in his own words. On p. 54 of the report appears a
reference to the difficulties attending the registration of trade marks on goods belonging to the
Manchester cotton classes. He there says:?" 28. When the Act of 1875 became law, and all trade
marks then in use were called in, deposits were made in Manchester and London of upwards of
44,000 marks upon Manchester cotton pieces goods and yarn. 29. Many of these marks had been
originated by bleachers who placed them in their stamp books, from which their Manchester
customers could select marks appropriate for the goods which they gave to the bleachers to bleach,
finish, and make up. Thus the same mark might be used by more than one merchant for more than
one market, and they could not in the majority of cases be considered the exclusive marks of any
particular merchant. 30. Many other marks, however, had been originated by export merchants and
were confined by them to particular goods, or to particular customers abroad, and until the 44,000
marks had been called in it was not discovered that the same, or very similar, marks had been used
by several traders unknown to each other, with the result that these traders could not claim such
marks as their exclusive property. 31. As large numbers of these marks were of a very valuable
character, and had been used upon goods, exported to various markets, without clashing with one
another, it was felt that protection ought to be given to such of them as had not been in too general
use in the trade. 32. Accordingly the Commissioners of Patents, with whom rested the duty of
drawing up rules for the application of the Patents Act of 1875, drew up what is known as "the
Three Mark Rule" under which three, or fewer, owners of the same, or very similar marks, were
allowed to register such marks as had been in use prior to the 13th August 1875. 33. When there
were more than three owners of the same, or very similar, marks, actual registration was withheld;
but all such marks received quasi-registration by being placed in a separate list known at the
Manchester office as the "B list," and the comptroller was authorized to grant to the owners of such
marks "certificates of refusal to register" in case such owners had occasion to take legal proceedings
against infringers. "

Mr. Bailey's précis affords much more information of an interesting character bearing on the
question, but I have quoted sufficient to elucidate the matter in hand.

It seems clear, then, that in a department of trade of great proportions there existed before the first
Registration Act in England a large number of trade marks, including in its three classes, as appears
in the documents before the English committee, more than one-third of all the effective trade marks
in all the 50 classes put together, and recognized commercially as trade marks, though not
exclusively the property of any one person or firm. These marks would have been protected as trade
marks within the meaning of the English Act of 1862, and, if that Act had provided for registration,
might have been registered under it. That being so, it at once establishes the point that exclusive
ownership, however usual, is not an invariable characteristic of a trade mark, and not being
invariable is no essential part of the concept. It is plain, too, that instead of adopting the Three Mark
Rule, which was an arbitrarily selected number, the limit might have been fixed at any higher
number without affecting the principle. Before the English Act of 1883 it was held by Jessell M.R.,
In re Jelly, Son and Jones's Application[104] , that different persons up to three might register
identical old trade marks in respect of the same goods, but if more than three were entitled to the
mark then by "the rule of the Court" they could not be registered, since they came under the
classification of common property. But a rule of the Court does not affect a legislature having
plenary powers so as to constitute the rule a fundamental part of the concept of a trade mark.

Indeed, Lord Justice Moulton in his evidence spoke of a special difficulty in connection with
registration, which was largely a difficulty arising out of historical considerations; in other words, as
he said, "from the fact that trade marks existed long before there was any thought of registering
them. That difficulty is the case of identical trade marks; trade marks so nearly resembling one
another that if there were no special circumstances you would not allow them to be in different
hands." And he continues: "The most common source of such trade marks is that before the first
Act, 1875, there were no means by which one person could learn the trade marks adopted by
another, so that a perfectly honest, independent concurrent user of the same trade mark was not
uncommon." The learned witness pointed out that the difficulty was endeavoured to be met in the
Bill, and in secs. 18 and 21 of the Act of 1905 the Imperial Parliament has made certain provisions
for the registration of identical marks (sec. 10), and of the same trade mark or nearly identical trade
marks for the same goods or description of goods by more than one proprietor. Though the
legislation is new, it is apparent from what has been said that the all important fact of concurrent
rights to the same mark is of very old standing.
The English Act of 1862 was, with the addition of registration, copied in New South Wales by the
Act of 1865. The English Act of 1883 recognizes this, because in sec. 72 it provided that?"Except
where the Court has decided that two or more persons are entitled to be registered as proprietors of
the same trade mark, the comptroller shall not register in respect of the same goods or description of
goods a trade mark identical with one already in the register with respect to such goods or
description of goods." This was followed by Queensland in 1884, Act No. 13, sec. 70; Western
Australia in 1884, No. 7, sec. 29; Victoria in 1890, No. 1183, sec. 16; South Australia in 1892, sec.
16; and Tasmania in 1893, sec. 80.

Were it not for the desirability of dealing with these objections fully I should have under this third
head contented myself with saying that, granting for the sake of the argument that exclusiveness was
essential, it is obvious that the mark referred to in this Act as the adopted mark of any particular
worker or association must in its nature be exclusive to the worker or to the members of the
association as the case may be.

(5) Independent commercial business. This objection is that the applicants do not carry on an
independent or commercial business, and are therefore not capable of owning a trade mark. This
seems an appropriate point at which to refer to the various statutory definitions of a trade mark
before 1905. In 1862 the English Parliament in the Merchandise Marks Act defined trade mark as
follows:?"The expression "trade mark" shall include any and every such name, signature, word,
letter, device, emblem, figure, sign, seal, stamp, diagram, label, ticket, or other mark as aforesaid
lawfully used by any person to denote any chattel ... to be an article or thing of the manufacture,
workmanship, production, or merchandise of such person, or to be an article or thing of any peculiar
or particular description made or sold by such person" : the rest of the definition may be omitted.
This was said by Vice-Chancellor Chatterton in Wheeler v. Johnston[105] to be the best definition
he could adopt.

Similar definitions were provided in various Australian Acts relating to trade marks and fraudulent
marks on merchandise. Thus in 1863 South Australia, in 1864 Victoria, Queensland and Tasmania,
and in 1865 New South Wales passed Statutes of this nature. That of New South Wales remained
unaltered until after the passing of the Federal Constitution.

From time to time, and more or less following the lead of English legislation on the subject, the
Colonies except New South Wales, and except also, until 1884, Western Australia, passed prior to
federation amending Statutes as to trade marks and their registration. Broadly speaking the
definitions accorded with the English definitions.

It will be seen that the statutory definition was on its face equally applicable to a workman as to an
employer, provided the workman could "lawfully use" it by applying it to goods to indicate his
workmanship, and would, I apprehend, have protected in England any of the Cutler's Company
marks. The question resolves itself into what is meant by "lawful user?" Is it impossible for a
worker who is an employé to "lawfully use" a trade mark to indicate "his goods" in the sense
established?

One of the principal points?if not the principal point?made for the plaintiffs was that a trade mark is
property, but property of such a nature as to be inseparable from goodwill, not assignable apart from
it, inconceivable without it, and, therefore, that the trade mark of a worker, an employé who has no
goodwill, was impossible because outside the fundamental concept of a trade mark.
Many cases may be found to bear out the argument of learned counsel that assignment of goodwill
carries with it a right to trade marks used in the business. But it does not follow that the rule is
universal or a necessary part of the fundamental concept. Indeed, it is clear that, if the trade mark is
one indicating personal acts or skill of the individual using it in his business, it is not recognized by
common law as assignable at all, because it would be deceptive if used by the assignee, and so, in
that case at least, it is not deemed part of the goodwill. See Bury v. Bedford[106] ; Pinto v.
Badman[107] ; Leather Cloth Co. v. American Leather Cloth Co.[108] ; Thorneloe v. Hill[109] .
The English and Australian States Trade Marks Acts forbade assignment of a registered trade mark
at all, except in connection with goodwill. So far it is established that, generally speaking, a trade
mark is assignable with goodwill; in the cases of registered trade marks it is not assignable at all
without the goodwill; in certain cases, by reason of possibilities of deception, it is not assignable
even with goodwill. But still it is said that does not establish the assignability of a trade mark in any
case without goodwill. Even that position is not, however, tenable. This, I repeat, is not a question
of rule and exception; not a case of a majority of instances. One instance standing clear and well
established of a class of trade marks assignable independently of goodwill, that is independently of a
business, is sufficient to dispose of the argument that incapability of assignment apart from goodwill
is proof that an independent business is indispensable to the existence of a trade mark. Under the
Cutlers' Company Act marks granted were the assignable personal property of the grantee?at least of
non-freemen, and where assignment would not deceive. See per Turner L.J. in Bury v. Bedford[110]
. Kerly on Trade Marks, 2nd ed., p. 103, says:?"In this respect they differed from ordinary trade
marks, which are, and always have been, assignable or capable of transmission only in connection
with the business in which they are used." As already pointed out, the Constitution gives power to
legislate with respect to "trade marks," not merely ordinary "trade marks." The Cutlers' Company
Acts (I quote them from Sebastian on Trade Marks, the only source available to me) have been in
existence since 1623, and have been recognized in all English legislation for the registration of trade
marks down to the present time. I would here observe that I attach more importance to a well
established English trade mark than to foreign definitions, there being as yet no international
agreement as to what constitutes a trade mark. (See Lord Justice Moulton's evidence in the English
Committee's report, at p. 9.) Foreign definitions vary greatly in scope. In passing, too, I may
observe that in Victoria and Western Australia the legislature for some purposes went so far as to
expressly include within the term "trade mark" even trade descriptions. So that it cannot be said
there was any universally recognized and defined limit of "trade mark" in Australia so as to cut
down whatever fundamental notion appertained to the expression under ordinary English law.
Turning then to the Cutlers' Company Acts, one of them, 41 Geo. III. c. 97 (1801), afterwards
amended but not materially for this purpose, we find that it empowered a freeman of the company
to give his mark by will to any person, in the same manner as his other personalty, subject to his
widow's life estate, and which she might sell; and in default of a will the mark passed like the
owner's other personalty, subject to the widow's life estate.

The condition of assignability along with goodwill therefore fails as a universal element of a trade
mark. But, apart from assignability, it remains to be seen whether a trade mark can be lawfully
possessed by anyone not yet engaged in an independent business.

Again, the Cutlers' Company Acts afford an answer to this question. An Act of 1791 (31 Geo. III. c.
58), by sec. 7, provided that apprentices, who had served seven years, were to have at 21 years of
age their freedom of the company and a mark assigned to them.

The Act of 1801 before referred to enacted by sec. 5 that parish apprentices, who proved to the
satisfaction of a justice that they had regularly served a freeman for seven years, were to be entitled
to their freedom and a mark.

There can be no doubt that the marks referred to were trade marks in the strictest sense, and if the
workmen ever set up in business they would have been protected as such, and further that no
independent business was requisite to entitle the apprentice to an assignment of the mark. As
already pointed out, once assigned, the mark was transmissible even apart from any business, that is,
it was assignable in gross (see Encyclopædia of English Law, 1st ed., p. 234).

The mere assignment by the Cutlers' Company conferred the property in the trade mark (see per Fry
L.J., in In re Hudson's Trade Marks[111] ), and the widow or the legatee under the will, or the
beneficiary in intestacy of the owner of a cutler's trade mark may not have had any business at all.

No English case, so far as I know, excludes from the common law conception of the trade mark the
possible notion of a paid workman owning one to indicate his workmanship. In Leather Cloth
Company v. American Leather Cloth Co.[112] , Lord Kingsdown says:?"If an artist or an artisan has
acquired by his personal skill and ability a reputation which gives to his works in the market a
higher value than those of other artists or artisans, he cannot give to any other persons the right to
affix his name or mark to their goods, because he cannot give them the right to practice a fraud on
the public." Apparently his Lordship was thinking of an artisan who placed his works on the market,
but it is the personal skill and ability and reputation of the artisan which form the point of the
observation.

This passage was quoted in Pinto v. Badman[113] , by Lord Esher M.R., who added "There is the
rule and the reason of it."

In Burgess v. Burgess[114] , Turner L.J. says:?"No man can have any right to represent his goods as
the goods of another person." Recollecting that the term "his goods" means not necessarily his
property, but goods in respect of which he has performed some labour or in respect of which he is in
some way identified, there seems to me no inherent objection to a paid workman being included in
the very general terms used by the learned Judges. If Stradivarius had been a paid servant of some
vendor of violins and working for a stipulated salary, but with the contractual or customary right of
specially marking violins made by him, why should he not have the same right to the mark as if he
were carrying on an independent business of making violins and remunerated by way of a fixed
price, but under an engagement to work for no one else than the one merchant who employed him?

Why should these general principles be restricted to persons who carry on business independently?
"Independently," though best expressing the contention, is a wrong word; for an employer
manufacturer is no more independent of his workmen than his workmen of him. They are equally
engaged in business in the large sense of the word, and the product is the product of their joint
contributions. Lindley L.J. in Rolls v. Miller[115] , speaking of the word "business" in a restrictive
covenant, said:?"The word means almost anything which is an occupation, as distinguished from a
pleasure?anything which is an occupation or duty which requires attention is a business?I do not
think we can get much aid from the dictionary."

In Cigar Makers' Protective Union v. Conhaim[116] , one of the cases most strongly relied on by the
plaintiffs, even the majority of the divided Court admitted that the members of the union were all
engaged "in the same kind of business, to wit, the making of cigars." The distinction drawn
was:?"But they are not engaged in business together. The business and business interests of one are
as distinct from those of another as though they followed entirely different kinds of business." I
shall revert to that case in another connection, and only desire at this point to emphasize the fact of
recognition that workers have a business.

In Hetterman v. Powers[117] the Court also recognized that the working men were engaged in the
"business" of working for wages: and so with other cases.

In Schmalz v. Wooley[118] the Court, in words which seem to place the matter upon a perfectly
satisfactory legal basis, says:?"The public object sought in the protection of trade marks is to bring
upon the market a better class of commodities, and the means for attaining that object is by securing
to those who are instrumental in supplying the market whatever reputation they gain by their efforts
toward that end. The workmen by whose handicraft the commodity is made is one of these
instruments, just as is his employer who furnishes the raw material and owns and sells the finished
product; and if the former is permitted by the owner to place upon the commodity a mark to indicate
whose workmanship it is and thereby commend his workmanship to other employers, this licence
from the owner should be deemed a right against everybody else." I pause there for a moment to
observe that user of such a mark under such a licence would constitute a lawful user, and would
satisfy every condition of a trade mark under the English Act of 1862 or the New South Wales Act
of 1865. The Court proceeds to say:?"His aptitude in his trade is his property, and if by a mark he
can have it identified as his in the market, he may enhance its saleable value and thus secure the
same sort of advantage as his employer by similar means. No reason exists why this advantage
should not be protected by the Courts in the same manner and to the same extent as is the like
advantage of the employer. The mere fact that one rather than the other of these persons has placed
the product upon the market has no rational bearing upon the matter, for both alike have had the
market in view in the efforts they have made and through those efforts the market is supplied."

The lawfulness of application of the workers' trade mark to any articles made by the owner of the
mark would depend entirely upon circumstances. A commission agent or a bleacher might be
restricted by the prohibition of the owner of the goods from placing his mark upon them; or he
might be permitted to do so. In the one case his application of the mark would be unlawful; in the
other lawful?other conditions of lawfulness being observed, such as absence of imitation of
another's mark.

4. Existing business and prior user, or the equivalent. Probably at common law prior user is
essential to confer ownership of a trade mark. The English Act of 1875 allowed ownership by
registration: See In re Hudson's Trade Marks[119] , though, as decided by the House of Lords in
John Batt & Co. v. Dunnett[120] , unless the person registering the mark either deals in the goods
for which the mark is registered or bonâ fide intends to deal in them, the registration is
unauthorized. This case is relied on to support the objection now under consideration. The Lord
Chancellor referred to "the trade which he (the appellant) had either begun or intended to begin." It
was held that the Act, properly construed, conferred no right to register a trade mark under the
circumstances of the case because on the facts the appellant at the time of registration had not and
did not intend to have any trade whatever in the goods. The Act did not apply to such a case at all.
But that was merely construing a piece of legislation, as to the extent to which, by the terms of the
Statute, registration apart from user conferred the right of ownership of the mark. Once the stage is
reached that registration can and does to any extent?independently of any actual present user, and
actual present business?confer rights of ownership, it displaces the argument that prior user is
inherently indispensable to the creation of a trade mark. The extent to which such a legislative
provision may go is for the discretion of Parliament and not of the Courts to lay down.
6. Capacity of an association to own a trade mark. We are at last brought face to face with the final
problem whether there is anything so inherently repugnant to the conception of a trade mark, in an
association of workers possessing one for the purpose of distinguishing their productions from
similar articles of other persons, that the federal legislature cannot confer any right to such
proprietorship; or whether if not inherently repugnant, the capacity to hold trade marks must be
given, if at all, by State law.

It may be useful to recall the steps by which we have reached this point. It has been shown by
instances that cannot be disputed that none of the features specifically mentioned and dealt with
above can be considered essential, that is to say:? (1) Ownership of the goods; (2) Personal
identification of the trade mark proprietor; (3) Exclusive ownership of trade mark; (4) Independent
commercial business; (5) Existing business or prior user of mark. These points once established, it is
difficult to understand how the provisions attacked are illegal.

In the case of an association of workers, it is plain that it is possible to clearly identify the
membership at any particular moment?the method of entry into the association and qualifications
are immaterial?and if so, why is the law that permits such an association to register a trade mark
unconstitutional?

As regards the single workman, I am happy to think I have the support of the learned Chief Justice
in the view I take. But I see no difference in principle between a law enabling an association to
register, and one permitting a single workman to register.

Suppose that not merely a Stradivarius himself, but also nine others of his family possess and
exercise the secret of an unrivalled method of manufacturing or varnishing violins, it is plain on
precedents already cited?such as the concurrent cotton marks, that, equally with Stradivarius, each
person separately, even though working for wages, may use, and if the law so provides, may register
the same trade marks for violins. It would indicate, not the particular member of the family that
produced or finished the instrument, but that it was one of the Stradivarius family. And if they may
separately register, I do not see why a law may not permit them to jointly own and register the
mark, for registration by an unincorporated association is nothing more than a joint registration by
all the persons associated. Can it be truly said that such a law is inherently repugnant to the
fundamental conception of a trade mark? An association of merchants might jointly use and register
such a mark because each one might, and if so I cannot see why a difference in this respect should
exist with regard to an association of workmen, if each one may adopt the mark selected. The
doctrine said to be extracted from American cases, to the effect that at common law trades unions
cannot have a trade mark, seems to me either irrelevant or fallacious if put forward as English law.

Conhaim's Case[121] held that a mark adopted by a cigar makers' union was not a legal trade
mark?(1) "because it is not adopted nor used to indicate by what person the articles were made; (2)
because its use is not enjoyed as an incident to any business, and the right to use it cannot be
transferred, even with the transfer of the business in which it might have been employed; ... and (3)
because there is no exclusiveness in the use, or right to use" it. The first reason is opposed to the
highest English authority above cited; the second reason was partly founded on the Court's opinion
already noticed, that, though each workman had a business, the union as such had none, and the rest
of that reason assumed that, unless the right to use a mark was transferable with the business, the
mark could not ever be a trade mark?which is shown to be clearly against English law; and the third
reason, as we have seen, is not universal. The decision may have been right or wrong in the State of
Minnesota; I do not pretend to offer any opinion as to that.
Another case much pressed was McVey v. Brendel[122] , in which the Court held that an
unincorporated association, the Cigar Makers' International Union, formed "for promoting the
mental, moral, and physical welfare of its members," but which is neither a manufacturer nor a
dealer, cannot acquire a trade mark in a label adopted by it, distinguishing and discriminating
between the work of union and non-union workmen. The Court rested its decision as to trade mark
upon the ground that the union was not a business organization engaged in making cigars for sale,
and was not a trader within the meaning of the common law or within the purview of the Act of
Congress, and therefore could not have a distinctive label. That principle would deny such a right to
a single workman equally with an association, and if unsustainable in the one case is equally so in
the other. The ultimate decision may have been unassailable, but the reasoning upon which it is
based is all that is of importance here. The rest of the case is immaterial. As opposed to these
decisions there are others cited by the defendants, chiefly Hetterman v. Powers[123] and Schmalz v.
Wooley[124] . In Hetterman's Case[125] the Court says that they may admit that the label is not
used as a trade mark in the ordinary[126] ?"But we cannot agree on that account that it does not
represent a valuable right which may be the subject of legal protection. Why may not those engaged
in skilful employment so designate the result of their labour as to entitle them to the fruits of their
skill when it is admittedly a source of pecuniary profit to them? And this, though they may not own
the property itself?"

They are not, it is true, "in business" for themselves in the ordinary sense, but they have property
rights nevertheless. They may not select a label and be protected in its use apart from its connection
with some commodity; but they not only select it in this instance, they apply it to property, and it
does not at all matter that the tangible property is that of another. So far it seems to me the Court
was in perfect accord with the words quoted from the evidence of Lord Justice Moulton.

The judgment proceeds:?"In order to get the benefit of the superior reputation of cigars made by
them, the appellees select and apply this label as a distinguishing brand or mark. And it would be
strange if this thing of value, this certificate of good workmanship, and which makes the goods
made by them sell and thus increases demand for their work, be entitled to no protection, because
those making the selection and application are not business men, engaged in selling cigars of their
own. The man who is employed for wages is as much a business man as his employer in that larger
sense in which the word "business" has come to be used by statesmen and legislators."

Further on the Court says:?"The learned Chancellor below, in an exhaustive opinion reviewing all
the authorities, among other things, said, and we can say it no more clearly, that "the known
reputation of a particular kind of skilled labour employed in the development of a particular product
or class of products determines to a large degree the value or price of such products when put on the
markets. To stamp or label a commodity as the product of a particular kind or class of skilled labour
determines the demand for and the price of such product or commodity. The marketable price of a
commodity influences the scale of wages paid for its manufacture. The higher the price, the higher
the wages paid; hence it is indisputable that the employé whose skilled labour, in the production of a
particular commodity, creates a demand for the same that secures for him higher remunerative
wages, has as definite a property right to the exclusive use of a particular label, sign, symbol,
brand, or device, adopted by him to distinguish and characterize said commodity as the product of
his skilled labour, as the merchant or owner has to the exclusive use of his adopted trade mark on its
goods." "

In Schmalz's Case[127] , after stating the principles previously adverted to upon which a workman
may be considered entitled to protection in respect of his skill, the Court proceeded to point out how
Weener v. Brayton[128] was faulty in its ratio decidendi, and thereby answered one of the objections
in this case, viz., that the trade union mark did not indicate the particular persons by whom the
articles labelled were made, but merely persons who were not connected with each other in any
business. The Court said: "The first clause of this objection would unduly restrict the law of trade
marks as everywhere recognized, for it is established that, whatever be the quality indicated by a
trade mark, the mark need not point out the particular person from whom that quality is derived.
The law has placed no limit upon the number of persons who may unite for business purposes and
jointly acquire property in a trade mark, and yet it is evident that, if there be many, some of them
may have no personal share in producing the article identified by the mark."

In this, the Court was in exact line with the House of Lords in Powell's Case[129] above cited.

It continued:?"The second clause in the objection assumes what does not appear to be true in the
case before us. We understand from the bill that the members of the association represented by the
complainant are connected together as journeymen hatters; that their skill in this trade and their
mutual assistance in profiting by its practice form the motive and chief aim of their association. This
connection is as clearly one for business purposes as is that of members in a partnership or of
stockholders in a corporation. Although it is a comparatively novel species of relationship, it has
become an established one, and therefore calls for the application of those general principles of law
and equity which are applied to other species of business associations. According to these principles,
we think a workman or a number of workmen engaged in the same branch of industry and banded
together for their mutual profit in the pursuit of their common vocation, may acquire a right of
property in a trade mark designed to distinguish their workmanship from that of other persons, and
that a trade mark so owned is entitled to the same protection as other trade marks."

In Weener v. Brayton[130] , and, as I think, properly criticized in Schmalz's Case[131] , the Court
admitted that "Upon the question whether labels of this character are valid trade marks there has
been some contrariety of opinion. In People v. Fisher" [132] , said the Court, "under the New York
Penal Code, which does not define a trade mark in essential particulars differently from the
definition usually adopted independently of the Statute, it was held that the label was a valid trade
mark." The Massachusetts Court however proceeded to declare its inability to agree with that view.
It appears from the judgment in State v. Bishop[133] that People v. Fisher[134] was decided by the
New York Court on very much the same lines as Schmalz's Case[135] .

See also per Folger J. in the New York Appeal Court in Congress and Empire Spring Co. v. High
Rock Congress Spring Co[136] .

In my opinion, the views presented in Hetterman's Case[137] and Schmalz's Case[138] are correct,
and amply sustain the constitutionality of the enactment so far as it permits associations of workmen
to register a trade mark which they, independently altogether of the Statute, have adopted.

In the report of the Select Committee upon the English Bill of 1905, Mr. Griffin, who under Mr.
Dalton acts, as I understand, as Registrar of Designs and Trade Marks, stated that there are frequent
applications from trade unions to register a mark which is going to be used upon all goods made by
the trade union, and he added:?"Of course it is not a trade mark in any sense; it is only a kind of hall
mark, but at the same time there is no reason why it should not be protected. It would mislead the
public just as much if it were forged or misstated as if it was a real trade mark." He calls it a "quasi-
trade mark," and explains that neither it nor the Fisheries Board Mark had the ordinary
qualifications of a trade mark, because it would not be put on by a trader to distinguish his goods
from those of another.

Apparently, Mr. Griffin is stating the ordinary understanding of a trade mark arising from the
working of the Acts, and the practice of the Courts.

It is because the practice of the Courts, to which text-writers have mainly turned their attention
when considering the nature of the thing protected, has obscured the central notion of a trade mark
that the present difficulty has arisen. The Common Law Courts gave a remedy by way of damages
for deceit, then chancery first aided common law, and next undertook independently to enjoin on the
ground of property. Property, in the sense of the right of applying the mark to certain goods and so
guarding the trade in their goods, was?at all events till lately?almost always asserted where the same
person owned both mark and goods. At times a case like Re Sykes and Co.'s Trade Marks[139]
appeared, but the general case seemed to press itself forward as the only one, until the foundations
of the matter come to be examined. The growing requirements of commercial and industrial life
constantly demand the more extensive application by the Courts of well established principles. As
Lord Cottenham L.C. in Millington v. Fox[140] applied an old principle, viz., the protection of
property by injunction, to a somewhat new phase of human affairs, viz., the increased importance of
trade marks as such, so the same principle seems to me to be capable of application in the later
developments of industrial rights. The Courts might or might not prove equal to the occasion in the
absence of legislation; but if legislation which exists assumes a certain class of business or trade as a
condition of registration, (see per Lindley M.R. in In re Batt & Co.'s Trade Mark[141] ), and forbids
recognition of rights without registration, it leaves the Courts powerless even if the common law
principle standing alone would suffice. Is there anything then in the inherent nature of a trade mark
which stands in the way of the National Parliament, having express power to legislate "with respect
to trade marks," meeting the possible, and as we must assume from the Act itself, the now existing
needs of society, by protecting artisans and public alike in the way attempted? The power over trade
marks, though undoubtedly a power to protect and regulate property, was not conferred for the sole
benefit of the merchants or other business men owning marks, it was for the general good
government of the people of the Commonwealth, and public protection from fraud which always
was an element in the action of the Courts in cases of trade marks, (see, for instance, per Lord
Westbury in Hall v. Barrows[142] , and particularly per Lord Herschell in Reddaway v.
Banham[143] :?"The word "property" has been sometimes applied to what has been termed a trade
mark at common law. I doubt myself whether it is accurate to speak of there being property in such
a trade mark, though, no doubt some of the rights which are incidental to property may attach to it."
This, as Sebastian on Trade Marks, 4th ed., p. 168, says, represents the prevailing opinion in recent
times, is in my judgment a consideration that is not foreign to the power of legislation conferred
upon the Commonwealth Parliament with reference to the same subject matter.

Before Federation each State had the full and uncontrolled power of a unitary state to legislate with
reference to trade marks, to regulate them, to protect them, to limit them, to prescribe the modes of
acquiring them, to affix consequences to them, to enact who might possess them, to annex to them
any condition of assignability or to annul any conditions already existing, and, in short, to deal with
the subject in any manner it thought fit. It had also the power arising from its unlimited right of
legislation of transferring from any other distinct branch of law any subject however foreign, and of
arbitrarily including it henceforth among trade marks. This last authority I do not hold the
Commonwealth Parliament can exercise unless it has among its other granted powers jurisdiction
also over the subject so transferred. But having cleared the term "trade mark" of the non-essentials
which have clung around it by reason of certain remedial procedure and the notions which
inevitably root themselves in the soil of every day practice, and thence branch out until at times they
obscure the central object itself, we find that trade marks mean nothing more or less than marks
used in trade and connected in some way with goods in order to identify the goods with persons,
that is, to indicate their connection with some persons or class of persons who singly or in
association have in some way dealt with or operated in relation to the goods. The British Parliament
has acted upon this in sec. 62 of the Act of 1905 with regard to special trade marks, making
exceptional provisions as to their registration, still treating them as fairly within the ambit of trade
marks. This enactment the Commonwealth Parliament has followed in sec. 22 of the Trade Marks
Act 1905. If the Commonwealth Parliament could validly pass that section, it seems decisive of the
present question. If it could not, then could the State Parliament enact it, and so create side by side
with the Commonwealth Trade Marks Act another branch of trade marks law, recognized as such by
the Imperial Parliament, but altogether outside Commonwealth control? I do not think this diversity
of jurisdiction was intended by the Constitution. With respect to trade marks defined as above, the
Commonwealth Parliament has, as I think, complete jurisdiction, and if so, I fail to understand why
it cannot lawfully enact that this or any other association of Australians might become the
possessors of a trade mark. The State, it is true, has general power over the personal capacity of its
citizens. If in exercise of that power it said that no person under 25 years of age or women should be
capable of holding property, would the Federal Parliament, though having full power with respect to
trade marks, be incompetent to permit these classes of persons to become proprietors of trade
marks? And if the Federal Parliament, on the other hand, enacted that such persons should not have
the right of possessing trade marks, how could the State override that by enacting that they should?
The Commonwealth has, for instance, express power with respect to bankruptcy and insolvency,
sec. 51 (xvii.), and marriage (xxi.); but the State might enact that no person under 25 should have
the capacity to become insolvent or to marry. Could the Commonwealth powers be so neutralized? I
confess I do not understand the doctrine which acknowledges the plenary character of powers, and
at the same time restricts them. Denying complete supremacy with regard to a power affirmatively
granted is a doctrine which seems to me incompatible with sec. V. of the Commonwealth of
Australia Constitution Act, and one which leads not merely to constant conflict, but also to
inevitable uncertainty as to the respective spheres of national and State action and authority.

The power over trade marks is on the principle emphasized by the Privy Council as plenary as that
of the Imperial Parliament; and though the planes of legislative action by Commonwealth and State
may cross, whether on the field of criminal or civil law, as must sometimes happen by force of the
interlacing circumstances of life, yet where they do, the former is supreme (sec. V. of the
Commonwealth of Australia Constitution Act, and by the Privy Council in Toronto Corporation v.
Canadian Pacific Railway[144] ).

My opinion is that the Commonwealth Parliament may give to any existing person or persons, or
deprive them of, the right of holding or transferring trade marks. Part VII. of the Act does not create
any artificial person for the purpose?and it is unnecessary to say that if it did that would be
invalid?but it accepts certain independently existing facts:?(1) workmen single or associated, (2) a
mark indicating their labour, and (3) their adoption of the mark; and then, with all these facts pre-
existing, it permits registration and confirms or confers legal ownership and protects it. In this I see
no excess of legislative authority.

The contention that an association of associations is incapable of being the owner of a mark is, in
my opinion, of the same nature and open to the same answer as in the case of a single association. If
the Parliament is once seised of legislative power over a subject, it can regulate it as it pleases.
Further, the objection is immaterial, because the defendant association is not a compound
association, and the provision as to compound associations is clearly severable if in itself invalid,
and may be disregarded (per Miller J. in the Trade Mark Cases[145] , without in the least affecting
the main purpose of the enactment. There can be no doubt the legislature would have enacted all the
rest if compound associations were known to be outside its powers. The compound association is
auxiliary only, and is the accessory, not the principal enactment.

In view of my former parliamentary connection with the Statute, I have been more than ordinarily
solicitous to re-examine the challenged provisions ab initio, and have endeavoured to follow in
detail the various objections raised to their legality and to state explicitly the reasons upon which my
judgment is based. This has led to a somewhat extended exposition, but I am of opinion that, while
not departing in the least from the principle of not enlarging enumerated powers, the plaintiffs' case
is answered by reference to the strictest legal considerations. An observation of the Lord Chancellor
in John Batt & Co. v. Dunnett[146] , will illustrate my meaning. His Lordship said in effect that the
appellant, in the circumstances appearing, might have been rather a dealer in trade marks than a
dealer in rice, and was disposed to register attractive trade marks with a view of vending them to
others. That was not permissible under the English Statute as it stood; but in what way would it be
beyond the authority of a legislature having plenary power over the subject of trade marks to permit
anyone to register labels or devices, to be used as trade marks, to constitute him the owner of the
labels or devices with power to sell them to others, and to forbid others to use those labels or
devices as trade marks unless with the permission of the owner? A contention of that nature appears
to me unarguable, and yet the present case does not go so far.

The power to make such a law must exist somewhere in Australia. If not in the Commonwealth
Parliament, it must still be in the States. If in the States alone, it must be because it is not legislation
with respect to trade marks?but the mere statement of the proposition is its own answer. Nearly
every argument of the plaintiffs is however contained in it. If it is unsustainable, it is because, to
give legislative jurisdiction with reference to the registration and proprietorship of trade marks,
actual trading is not necessary before registration, or before proprietorship can be conferred; and
that it is not inherently foreign to the conception of a trade mark to give protection to the skill of a
designer of a trade mark who does not happen to be a dealer in the particular goods. If these views
be not faulty then why is it unconstitutional to allow workers, or an association of workers, to
register as a trade mark any design denoting the origin of their productions and which shall belong
to them exclusively, or, in other words, which no one else shall use at all, or if total prohibition be
not sought, which no one else shall use unless truthfully? I am unable to assent to the argument that
maintains the illegality of such an enactment. It is said that the States alone can do this. If so it
would, as I think, be not only a restriction of the constitutional grant of power and a shortening of
federal jurisdiction which might be required to effectually deal with the subject of trade marks, but
also a commingling of powers assumedly equal, creating possibly conflicting provisions, and
leading very probably to confusion in different States, on the one subject of trade marks. This is the
very result, it seems to me, that the Constitution, by placing this power in a single hand for the
guidance of the whole people, intended to avert. And in any case is it true that under State law a
trade union is incompetent to own a mark?

The defendant union is formed under the New South Wales Trade Union Act 1881; and is also an
industrial union duly registered under the State Industrial Arbitration Act 1901.

The New South Wales Act of 1881 is practically the same as English legislation. To the trade unions
of New South Wales, the observations of Lord Macnaghten in the Taff Vale Railway Co. v.
Amalgamated Society of Railway Servants[147] is perfectly applicable. His Lordship
said:?"Parliament has legalized trade unions, whether registered or not; if registered, they enjoy
certain advantages." The Act provides (sec. 5) that the Companies Act is not to apply to a trade
union. In the result the union, so long as it pursues no unlawful object?and none is suggested?is a
legal association existing independently of Statute, though legalized by Statute, and perhaps
registered under the Statute. Its objects are not prescribed by Statute, sec. 31 not being exhaustive or
limiting its powers. See Steele v. South Wales Miners' Federation[148] ; Linaker v. Pilcher[149] . In
the last mentioned case Mathew J. it is true said that publishing the newspaper was not trading, but
that was because when he looked at the rules they gave no authority to trade. Having looked at the
rules, and found that what they authorized was not trading but improving the condition and
protecting the interest of the members, he held that there was no breach of the rules because as a
matter of fact this was all that the newspaper was employed for.

I gather from his Lordship's judgment that, even if the union had been trading in fact, he would have
held it good, if the rules had permitted it. He did not hold that it would have been ultra vires to trade
if the rules so provided. It was argued in that case that a trade union was defined by sec. 23 of the
Act, and that the definition showed that a trade union is not an association for the purpose of trade
and could not carry on anything for business purposes or for profit, and therefore could not carry on
a newspaper.

The learned Judge as to that contention said that the Act did not operate to cut down the rights and
powers of the Society.

On the whole that case is, in my view, decidedly in favour of the position that, if its rules permit, a
trade union may trade.

Steele's Case[150] is a very strong example. One of the objects of the trade union was "to provide
funds wherewith to pay the expenses of returning and maintaining representatives to Parliament."
Now, if that is a valid object, it is impossible, I think, to argue successfully that trading is unlawful.
Yet it was held to be perfectly lawful. Darling J. held it was lawful on two independent grounds,
one of which was the definition in sec. 16 of the Act (corresponding to sec. 31 of the New South
Wales Act), but that definition was not intended to be exhaustive. He said that the lawful purposes
of the union are not limited to the purposes set out in that section, and there was nothing to prevent
the association from lawfully doing other acts beyond those there mentioned.

Phillimore J. rested his judgment solely on that view, and held that, as the object mentioned was not
illegal at common law, there was nothing to prevent the union from prescribing it by its rules.

But all depends upon what the rules themselves provide (Yorkshire Miners' Association v.
Howden[151] ). Upon the authority of the cases cited it appears to me that a trade union is an
unincorporated association of individuals with certain objects specified in the Act, which once were
illegal but are so no longer; and that, unless forbidden by Statute, they may, like any other
association of individuals, have any other objects not unlawful, and may define those objects by
their social contract, that is, in their rules. And if trading by the owner of a trade mark were
essential to its existence?though I have shown it not so?I can see no obstacle to trading by a trade
union as that is not contrary to common law, nor, since the Companies Acts are expressly made
inapplicable, to any Statute law.

This consideration has relevancy only to the extent of establishing that the union as a union is not
struck with an inherent incapacity to trade, and that, for the purpose of owning a trade mark, it
stands in substantially the same position as any single worker or any association of workers.
The legislation objected to here does not, in the view I have presented, attempt to create any new
property, or do more than regulate in connection with goods in trade the use and registration of trade
marks as fundamentally conceived.

My opinion upon the whole case, then, is that Part VII. of the Trade Marks Act is within the
competency of the Federal Parliament, and that this action should be dismissed.

Higgins J.

As for the first question submitted to us, I am of opinion that the statement of claim, taken with the
particulars thereunder, does not disclose any cause of action maintainable by the brewery
companies, or by the Attorney-General for New South Wales.

I shall have to examine this question in some detail, not only out of respect for the opinion of my
colleagues, but because I am profoundly impressed with the wisdom of the practice, so well
established in the Supreme Court of the United States, never to decide against an Act as
unconstitutional, except "in the last resort, and as a necessity in the determination of real, earnest,
and vital controversy between individuals" : Chicago and Grand Trunk Railway Co. v.
Wellman[152] . Nothing would tend to detract from the influence and the usefulness of this Court
more than the appearance of an eagerness to sit in judgment on Acts of Parliament, and to stamp the
Constitution with the impress which we wish it to bear. It is only when we cannot do justice, in an
action properly brought, without deciding as to the validity of the Act, that we are entitled to take
out this last weapon from our armoury; and the fact that the question raised in this case has not been
argued before any other bench, and possibly may not be argued, or even arguable, on appeal from
us, adds to the weight of our responsibility in making sure that there is a cause of action.

The plaintiffs are the Attorney-General for New South Wales and four brewery companies. Briefly
stated, the plaintiffs' whole case is that the Registrar of Trade Marks has, in obedience to the
directions of the federal Trade Marks Act 1905, registered the defendant union as proprietor of "a
worker's trade mark" under Part VII. of the Act; that the Federal Parliament had no power to enact
Part VII.; and that the registration and user of the mark will injure and interfere with the plaintiffs'
brewery companies in the manner specified in the particulars. Under the form of the order made for
disposing of the two questions before trial, the plaintiffs have the advantage of the assumption that
all their statements of fact are true.

No injury is alleged to have been done as yet by the defendants to any of the plaintiffs:?"the
registration and user (of the mark) will injure and interfere." This is purely a quia timet action?an
action to prevent an apprehended injury. The plaintiff breweries fear the results to their business if
this mark should be applied to a rival brewer's goods. But the mark has not yet been applied to the
goods of any brewer, and it cannot be applied without the brewer's consent (sec. 74 (2) (c)). So far,
no harm has been done, no damage has been suffered. For aught that appears in the statement of
claim, no brewer will ever consent, and the mark may never be applied to any goods; and unless the
facts show the injury to be imminent and inevitable?unless there be no obstacle between the
defendants' alleged wrongful act and the alleged injury?the Court does not in a quia timet action
grant an injunction, or any relief. Here the argument is that, if some rival brewer allow the mark to
be used on his goods, the plaintiffs may be put in the dilemma of choosing between the custom of
those who would be offended by the workers' mark and those who would be attracted by it; and they
will suffer damage if they choose wrong, and if they decline to avail themselves of the invalidity of
the mark by putting on the mark even though they do not employ union labour. Such speculative,
hypothetical, statements are wholly insufficient as a basis for any judgment in any kind of action.
The union and the Registrar?the only defendants?have done all that they can do, and there is as yet
no cause of action, and there can be no cause of action, no injury, until some brewer allow the mark
to be attached to his beer. How can an injunction be granted against people who have not done, and
who cannot do, the injury apprehended? Putting out of sight all the other objections, how can the
plaintiff breweries claim a declaration of right or a rectification of the register, against defendants
who do not and cannot, without some outsider's concurrence, injure them? It must appear in a quia
timet action that, if the remedy be not given, the damage (and very substantial damage) must
necessarily be suffered: Salvin v. North Brancepeth Coal Co.[153] ; Cowley v. Byas[154] ; Fletcher
v. Bealey[155] ; Attorney-General v. Corporation of Manchester[156] ; Story Eq. Jur., sec. 826.

There can be no cause of action unless there be: (a) some wrongdoing on the part of a defendant,
and (b) some actual damage?or, at the least, some imminent and inevitable and very substantial
damage resulting therefrom. In lawyers' phraseology, there must be both injuria (wrongdoing), and
damnum (loss). If Part VII. is valid, there is no injuria. For, if Part VII. is valid, the registration was
proper, and the plaintiffs have no ground for complaint. On the other hand, if Part VII. is invalid,
there is no damnum, for the plaintiff breweries are as free to put the union label on their beer as they
were before the Act. No doubt, they would be making a false representation to the public, if they did
not in fact use union labour; but the only object, and the only effect, of the provision for registration
in Part VII. is to allow of a prosecution of brewers or others who make such false representations;
and if Part VII. is invalid, the plaintiff breweries cannot be prosecuted for the false representation. If
Part VII. is invalid, the plaintiffs are in just the same position as before. Where, then, is the damnum
from registration and user, if Part VII. is invalid? Or, rather?as there has not been and may not be
any user?where is the damnum from mere registration?

The alleged damage is expressed in five ways; but I think I may, not unfairly, sum it up under three
heads, taking the most favourable view of the plaintiffs' meaning. I shall assume, in favour of the
plaintiffs, that Part VII. is, as they urge, invalid. They say (1) that the registration and/or user of the
mark will prevent the plaintiff breweries from using the same or a similar design. But the plaintiffs
do not allege that they want to use such a design, and, if they did, then, on the assumption that Part
VII. is invalid, there is no protection for this mark, and the plaintiffs can in that case use the same or
a similar design. This is a matter of law; and the Court is not bound by the plaintiff's statement as to
the effect in law of registration and user. The plaintiffs say (2) that the registration and/or user of the
mark will render the plaintiffs liable to actions and prosecutions for the infringement of the mark.
This allegation shows no cause of action if the actions and prosecutions are not to be successful; and
they cannot be successful if?as is assumed?Part VII. is invalid. But the plaintiffs say (3) that they
will be embarrassed in their business by the registration and/or user of the mark; for, if some rival
brewers use it, the beer-purchasing public will see that their beer is made by union labour; and this
will attract one class and drive away another. The plaintiffs, it is said, will have to make up their
minds whether to use the mark or not; and if they use the mark, they will have to employ union
labour. It is not stated whether the plaintiffs will lose or gain more custom by not having the mark;
and it is not alleged that to employ union labour, and union labour only, will be injurious to their
business. I venture to say that to bring forward this embarrassment as a cause of action is
preposterous. No action lies for placing a person in a dilemma as to his commercial interests, for
putting before him an inducement to use this or that kind of labour. A union is entitled to embarrass
a manufacturer who is not fair to his employés?unless they embarrass him by means of some wrong
done to him. They can embarrass him by agreement with a rival brewer, or in any other way. The
embarrassment, if any, comes from the use of the label (which is lawful without the Act), not from
the registration. No action lies even for doing the plaintiffs harm in their interests, unless the act
complained of is a legal wrong to the plaintiffs: Mogul Steamship Co. v. McGregor, Gow &
Co.[157] . If Part VII. is invalid (as must be assumed, or else the plaintiffs have no possible case)
the plaintiffs can with impunity, so far as the Act is concerned, use the union label and yet not
employ union men; and I have yet to learn that an action lies for so acting as that a plaintiff is
tempted to tell an untruth. It is now further said that the registration of the mark interferes with the
freedom of the plaintiffs to carry on their business without publishing to the world any statement as
to the persons whom they employ. It ought to be enough to say that the plaintiffs cannot go beyond
the particulars of damage which they have furnished, and that this alleged damage does not appear
in the particulars. But where is the interference with freedom to be found? If all that is meant is a
strong commercial inducement to act in a certain way, this is not actionable?no more actionable than
if one hatter sell a certain kind of hat for a cheaper price than another hatter. If there were no
workers' mark legislation at all, a rival brewer could put on his goods the mark showing that they
are made by union labour, and the plaintiffs would have no ground of complaint. These objections
to the action are quite independent of the objection that no hurt can come until some brewer consent
to have the mark applied to his goods. Moreover, the damage complained of is too remote?is not the
natural and reasonable consequence of the defendants' acts. The defendant Registrar enters in a book
in Melbourne a picture which the other defendant gives him. The entry is ultra vires, nugatory (the
plaintiffs say). If the business of the plaintiffs be injured, it is not the natural result of the
defendants' action. The registration does not cause the damage (if there should be any); the mere use
by another brewer, without registration, would cause the damage (if any).

Order III. sec 1. of the High Court Rules does not help the plaintiffs. The words are even more
guarded than the corresponding, much misunderstood, rule in England (Order XXV. sec. 5); for the
declaration without other relief can only be granted in an action "properly framed." The rule does
not mean, either here or in England, that a declaration will be made at the instance of a plaintiff who
has no cause of action: (Offin v. Rochfort Rural Council[158] ; or who has no rights in himself
against the defendants under the circumstances existing at the date of the writ: Honour v. Equitabte
Life Assurance Society of the United States[159] ; Williams v. North's Navigation Collieries (1889)
Ltd.[160] . The plaintiffs must have an existing right in themselves as against the defendants at the
date of the writ: what is their existing right here? The Court is certainly not going to declare that
plaintiffs have a good ground of defence if and when the mark is used, and if and when the union
sues them: North Eastern Marine Engineering Co. v. Leeds Forge Co.[161] .

The case of In re Powell's Trade Mark; Powell v. Birmingham Vinegar Brewery Co.[162] is not, in
my opinion, any authority for this action. It is cited, not as an answer to all the objections above
stated, but only to some of them; and it does not answer even these. It is a mere decision as to the
meaning of the words "person aggrieved" in the English Trade Marks Act. But a "person aggrieved"
within that Act has not necessarily a cause of action. An action lies only where a wrong is done to
the plaintiff?actual, or, at the least, imminent and inevitable. A motion under the Act to rectify the
register is a special machinery devised to keep the register pure, and it may be made by a person
who sees that a wrong to him is merely possible. In an action, the plaintiff sues because of wrong
done in fact (or certain to be done) to him. In the motion to rectify, the mover moves because of the
public mischief resulting from wrong entries in the register: per Lord Herschell[163] but, to prevent
the time of the Court from being wasted by mere debating society arguments, the mover must have
some possible interest in the entry in the register: Paine & Co. v. Daniels and Sons Breweries; In re
Paine & Co.'s Trade Marks[164] Therefore the Court held that a rival trader, who finds that the
mark constitutes primâ facie a block to the free exercise of his immediate business, is a person
sufficiently "aggrieved" to make the motion. But the order is made in the interests of the public, not
of any private person. It is not made as between the applicant and the respondent: Eno v. Dunn[165]
. The issues raised are radically different from the issues raised in a litigation between parties; so
that, for instance, the alleged fraud of the person "aggrieved," or his delay, or his acquiescence, or
estoppel, is treated as irrelevant to the motion, although most relevant in an action: Kerly on Trade
Marks, 2nd ed., p. 271; Re Hill's Trade Mark[166] . Besides, in Powell's Case[167] , the applicant,
the person "aggrieved" by the registration, was a rival in trade who might use the mark if the
register did not prevent him: not so here. He was prevented by the registration from using the mark:
not so here, if, as the plaintiffs say, the Act is invalid. In short, the fact that a rival trader might
move to rectify the register does not show that he has a cause of action for damages or for anything
else.

The case of London Association of Shipowners and Brokers v. London and India Docks Joint
Committee[168] has been much discussed. It seems to me to confirm the view that there is here no
right of action. The P. & O. Company had in London a permanent dock specially appropriated to it
under an agreement. The dock committee had made regulations as to the admission of vessels to
ordinary unappropriated docks. These regulations were held to be ultra vires; and it was held that
the P. & O. Co. suffered no special damage from the regulations, and therefore had no cause of
action[169] [170] that the P. & O. Co. "is not entitled to sue on behalf of the public for the purpose
of preventing the defendants from exceeding their statutory powers irrespective of any particular
injury done to any particular individual. The P. & O. Co. must show that it is itself aggrieved before
it is entitled to any declaration or relief in an action brought by itself." As the P. & O. Co. did not
want unappropriated berths, the order (dismissing the action) "must stand." [171] Bowen[172] . But
a declaration was made "to prevent mistakes" (not expressly, so far as appears, "by consent" ), which
"does no more than record the concessions made at the Bar, and the admission to which the
defendants' counsel were prepared to consent." [173] The appeal from the judgment dismissing the
action was dismissed. This case, therefore, is not of any use to the plaintiffs; and, in any view of it,
the plaintiff was, in that case, at the immediate point of being hurt by the defendant. It would, if it
applied for an unappropriated berth, be refused at once except on condition of its making the
excessive payment. Here, until some rival brewer use the mark, there can be no possible damage.

The objections to the claim made by the four breweries apply à fortiori to the claim made by the
Attorney-General for New South Wales; but there are also other objections peculiar to his case.

(a) The Attorney-General for New South Wales does not represent the public of Australia?the public
to be affected by this Act. The Act does not affect people on one side of the Murray more than
people on the other. An Attorney-General can sue for injury to the public?his public. He is the
officer of the Crown; and, according to the principles of our law, the interest of the public is vested
in the Crown. But the Attorney-General for New South Wales is not the officer of the Crown for the
Commonwealth, that distinct juristic person referred to in Municipal Council of Sydney v.
Commonwealth[174] . If a public body is going beyond its powers, no doubt the Attorney-General
may sue, in the interests of the public?his public. But the only official who has a right to represent
the public of Australia is the Attorney-General for Australia; and this Court, the High Court of
Australia, recognizes (as to federal Acts) no public interest smaller than the interests of the
Australian people. All other interests, however important, are to be treated as private interests. It
may be said that it is the interest of the present Attorney-General for Australia to support the federal
Act, and to refuse to sue. But if he should refuse to act in the interest of the public, it is for the
Federal Parliament, and ultimately for the electors, to deal with him and with the Government of
which he is a member: London County Council v. Attorney-General[175] . (b) The only injury
alleged is an injury that will be done to the four plaintiff breweries. It is not alleged that any injury
will be done to New South Wales, or to the public of New South Wales. An injury to these four
breweries is not necessarily an injury to the public of New South Wales. If these breweries are
injured they have their right of action; but no Attorney-General can sue on their behalf. According
to Attorney-General and Spalding Rural Council v. Garner[176] an Attorney-General cannot sue on
behalf of a fraction of his public, however large. Even if the express allegation of injury in the
statement of claim did not preclude us from implying an injury to New South Wales, or to the public
of New South Wales, neither the State nor its Attorney-General would have a cause of action, unless
the act complained of necessarily tended in its nature to injure the State or the public of New South
Wales; and in this case the registration of the mark?or even the user of the mark, if it should ever
take place?would not satisfy this condition. Of course, it is not necessary that injury shall have
actually occurred; the Court will interfere before it has occurred. But what may be injurious to
individual traders may often be beneficial to the public. In Attorney-General v. Shrewsbury
(Kingsland) Bridge Co.[177] public rights of highway were actually interfered with; and so too in
Attorney-General v. London and North Western Railway Co.[178] In Attorney-General v. London
County Council[179] a public body was spending public moneys for unauthorized purposes?was
running omnibuses in the public streets?a business which Parliament had in effect forbidden it to
carry on in the public interest. Lord Halsbury[180] . Neither a State nor an Attorney-General is
exempted from the ordinary rule that a distinctive injury to the plaintiffs must be alleged or
necessarily implied?in this case, an injury to New South Wales, or to the public of New South
Wales. (c) The passing of an Act by one Parliament on a subject as to which another Parliament has
exclusive power, and the making of an entry in pursuance of the Act, do not constitute a matter for
judicial cognizance at the suit of the Government of the State that has the power. There is no injury
to property or other injury for which the Court can grant an injunction. The remedy against an
invalid Act is to resist it when it comes to be enforced. (d) If New South Wales as a State has a
cause of action against these defendants, the action should be brought in its name. This is expressly
provided in the Judiciary Act 1903, sec. 62; and see Penedo (Baron) v. Johnson[181] ; United States
of America v. Wagner[182] .

It is not for the Court to indicate to these four breweries what they can do to test the validity of the
registration of the workers' mark. But for my part I see no reason why one of the plaintiffs should
not apply for registration of a similar design as a trade mark to be applied to his goods; or why the
plaintiffs should not simply use the mark, and defend themselves in a proceeding for the penalty. I
mention these as possible means of testing the validity of the Act, because it is urged that, unless an
action lie of the kind before us, the plaintiffs cannot bring before the Court the question at all.

Inasmuch as the view which I have expressed, that the plaintiffs have no cause of action, is not the
view of the majority of the Court, I proceed to consider the second question, as to the validity of
Part VII. of the Trade Marks Act 1905.

Does sec. 51 (xviii.) of the Constitution give to the Federal Parliament power to enact the provisions
of Part VII. of the Trade Marks Act 1905, which allow what the Act calls "workers' trade marks" to
be registered and enforced?

Now, according to Part VII., the "workers' trade mark" is a mark which may be registered by a
worker or a workers' union (or other association) to show that the goods marked are the
workmanship of members of the union; and it is to be the property of the union. But the mark is not
to be applied to any goods without the sanction of the owner of the goods. It is to be used by the
owner of the goods for the purposes of his trade, as it is believed that many people will prefer to buy
goods which bear a mark such as this, a mark which is a guarantee that the goods have not been
produced by "sweated" labour. The mark is, in short, a device to enable the public, if they so desire,
to discourage "sweating" of human beings?to give to purchasers the opportunity of carrying out the
moral duty which "Parson Lot" (Charles Kingsley) inculcated sixty years ago, in burning words, in
his pamphlet, "Cheap clothes and nasty." The mark is legal even without the Act; so that even if
there were no Part VII. at all, such a mark could be applied to the goods by the owner of the goods
or with his consent. Without any legislation at all this mark could be used by the owner of the goods
for the purposes of his trade, for the purpose of attracting purchasers who are in sympathy with the
objects of unions. But Part VII. is necessary for the purpose of punishing a manufacturer who
untruthfully applies the mark to his goods. If Part VII. is void, that penalty cannot be enforced, and
the manufacturer cannot be restrained by the union from applying it to his goods untruthfully. The
plaintiffs' contention is, in short, that the Federal Parliament has no power to punish the untruthful
application of a workers' mark to goods.

The case as put for the plaintiffs is short and simple. They say that, though the Federal Parliament
has power to legislate about "trade marks," a "workers' trade mark" was not a "trade mark" within
the accepted definition in 1900, the date of the Constitution, and that therefore the Parliament has no
power to make any law as to "workers' trade marks." It is said that, though the mark is to be used by
or with the consent of a trader, for the purposes of pushing trade, it is not a trade mark.

If the argument for the plaintiffs is right?if the powers of the Commonwealth Parliament are so
rigidly and narrowly circumscribed as is contended?there will be some curious results, not merely as
to trade marks, but as to most, if not all, of the subjects of legislation in sec. 51. No matter how
circumstances may change, no matter what may be the developments of science, of the arts, of
business enterprise, and of society to the end of time, the Parliament is confined for ever (unless
there be an alteration in the Constitution) to such trade marks as the Court enforced in the year
1900. Even since that year the class of trade marks which the Court will enforce has been extended
in Great Britain and Ireland so as to include marks such as the plaintiffs deny to be "trade marks"
(English Trade Marks Act 1905, secs. 3, 62); and sec. 62 has been incorporated in our Trade Marks
Act 1905 (sec. 22). But though the British legislation is, of course, valid, the Commonwealth
legislation, to the same effect, for Australia, is to be treated as invalid. The Commonwealth is to be
tied down to the practice in 1900. According to the plaintiffs' argument, the Federal Parliament
having covered all the ground for trade marks as enforced by the law in 1900, the State Parliaments
may, each for its own State, make such laws as they think fit, varying in character and in machinery,
as to any marks to be used for purposes of trade, excepting only such trade marks as the Courts
enforced in 1900. The several State Parliaments may, it is said, legislate even for "workers' trade
marks," may create any new kinds of enforceable trade marks; and if the plaintiffs' argument be
successful, we shall have as a result a position which must be confusing and baneful to traders and
to the public?we shall have seven different bodies of law makers in Australia laying down laws as to
marks used for trade purposes. But, if the plaintiffs are right, it cannot be helped. It is a flaw in the
Constitution.

This doctrine of the plaintiffs, if it is to be accepted, cannot be confined to the subject of trade
marks. It means that the Federal Parliament cannot give validity to any kinds of patents, or to any
kinds of copyrights, which were not recognized in 1900. Copyright in designs is a recent and useful
development in the law of copyright. If it had not been accepted before 1900, it could not?according
to the plaintiffs?be now adopted by the Federal Parliament. Nor, if the developments of industry
should render a further extension of copyright expedient, is it possible for the Federal Parliament to
meet the want?if the plaintiffs are right. The argument means also that the Parliament cannot make
the slightest alteration in the meaning of bills of exchange or of promissory notes?cannot, for
instance, enact that a document shall be a promissory note even though it have some slight condition
annexed to the promise. Again, the Parliament has power to make laws as to "marriage." But,
according to the plaintiffs, if marriage with a deceased wife's sister had not been validated before
Federation, the Federal Parliament could not validate it. For the word "marriage" did not, strictly
speaking, include such a union?the union was voidable by judicial proceedings (absolutely void in
Britain, since the 5 & 6 Wm. IV. c. 54). Then, Parliament is given power to make laws with respect
to "parental rights;" is it to be restricted to parental rights as recognized in 1900? If it should ever be
thought well to follow the example of other countries which treat infancy as continuing till 22, or 25
or even 30, is the Federal Parliament, in exercising its powers as to the "custody and maintenance of
infants," bound for ever to the present meaning of infancy, as ending at 21? Many other illustrations
may be given on a consideration of the other subjects entrusted to this Parliament as to the
effects?or probable effects?of holding the plaintiffs' contention to be good. But the case of trade
marks contains excellent illustrations within its own bounds. Text-writers have found themselves
compelled to include in their treatises on "trade marks" dissertations on mere "trade names," and on
"passing off" cases; for these matters are treated by the Courts on the same principles as those trade
marks which satisfy the plaintiffs' definition; but, according to the plaintiffs, these matters have still
to be left to the States. Yet the majority of so-called "trade mark" cases brought to the Courts are
"passing off" cases?imitations of the "get-up" of goods. Before Federation, if the New South Wales
Parliament, or any other of the Colonial Parliaments, saw fit, it could have allowed descriptive
words to be used as a trade mark, and some of the Parliaments did in fact include "trade
descriptions" under the term "trade marks;" but the Federal Parliament has not, it is said, any such
power. Before Federation, any Colonial Parliament could have passed a law with regard to such a
mark as the "hammer mark." This was only to be put on cutlery, &c., if wrought or forged (59 Geo.
III. c. 7). So with hall marks for jewellery or for plate; so with marks for gunbarrels indicating
proof. So with Sheffield marks, cotton marks, &c., which were originally dealt with in the English
Trade Marks Registration Acts. So with misuse of the royal arms, false representations on shop
fronts, &c., that the trader is successor in business, &c., to a well known name. So with marks on
imported goods representing that they were made in Australia (cf. 39 & 40 Vict. c. 36, secs. 42 (a),
153). Unless such marks come within the rigid definition of enforceable trade marks in 1900?and
(according to the plaintiffs) very few, if any, of these do so?the Federal Parliament is powerless.

If the plaintiffs are right in their argument, the Court is bound to treat the boundaries of the class of
trade marks, and the boundaries of the other subjects, as finally settled and stereotyped in 1900, so
far as the Federal Parliament is concerned. There may be development everywhere else; but so far
as Australia and its Federal Parliament is concerned, there is an arrested development. In place of
Australia having by its Constitution acquired for the Australian Parliament the power of dealing
with the whole subject of marks used for the purposes of trade, it turns out that the Federal
Parliament can deal only with the trade marks enforced by the Courts as property in 1900, and that
each of the States separately must deal with the other parts of the subject. That is to say, although
the Federal Parliament is not limited in its power to trade marks used in inter-state or foreign
commerce, although it has admittedly power to regulate the internal commerce of any State so far as
relates to trade marks?although it can, for instance, regulate a trade mark used by a maker of
ploughs within a mere district of New South Wales?it cannot regulate the law as to trade names, or
as to "passing off" cases, or as to any of the other marks (I must not beg the question by saying
"trade mark" ) used on goods for purposes of trade. Even that offspring of timidity, the Federal
Council, under the Federal Council of Australasia Act 1885, had wider powers. True, it did not get
the power to make laws as to trade marks; but it got power to make laws as to copyrights and
patents and as to "any other matter of general Australian interest with respect to which the
legislatures of the several Colonies can legislate within their own limits, and as to which it is
deemed desirable that there should be a law of general application" (sec. 15 (i)). There is no doubt
as to what is desirable; there is no doubt as to the plenary power of each of the separate Colonies
before Federation over the whole subject of trade marks and quasi-trade marks; and there is no
doubt that under the Federal Council Act every mark, or name, or "get-up" that can be used for the
purposes of trade could be dealt with by the Council. But we are told that the Federal Parliament has
not the power of the Federal Council. Perhaps this result is unavoidable; and the plaintiffs are, of
course, entitled to have the Constitution expounded and applied as it stands.

There are two questions involved in our inquiry. The main question is what is the ambit, the
circumference, of the power "to make laws with respect to trade marks." The subsidiary question is,
what was the meaning in 1900 of the two words "trade marks." It is curious that this latter question
has been almost the sole subject of discussion. Of course, if it could be shown that this workers'
trade mark contains all the essential attributes of a trade mark as understood in 1900, Part VII. of
the Act is valid. But, as I shall show hereafter, it by no means follows that, if it does not contain all
the essentials, Part VII. is invalid. Part VII. may possibly still be a valid exercise of the power to
"make laws with respect to trade marks." Taking the subsidiary question first, if the two words
"trade marks" be considered in their ordinary unsophisticated sense, as English words, they would
mean merely marks used for purposes of trade; but the word "marks" shows that they are used to
mark something, to identify something, to distinguish some things from others. Has this primary
meaning been ever lost? The burden lies on the plaintiffs of showing that the meaning has become
narrowed and limited. If the words can be treated as technical at all, they make up a trade term, a
commercial term. They are not a technical legal term (at all events where?as in the Constitution?the
words are not made one word or hyphenated). Trade marks?both the phrase and the things?were
used by men of business long before the Courts took up the subject in the last century. To my mind
the unfounded assumption that these words in themselves constitute a technical legal term (apart
from their use for particular purposes, such as the purposes of particular Statutes), is at the root of
much of the difference of opinion in this case. Owing to the form in which this case comes before
us, we have not any evidence of any non-legal technical meaning for the words; and the burden of
proof lies on those who affirm that a word is technical: Mansell v. The Queen[183] . As was said by
Lindley L.J. in Chatenay v. Brazilian Submarine Telegraph Co.[184] , the meaning of the words is a
question of fact in all cases. But here we have no evidence on the question, and we have to fall back
on the ordinary, grammatical, primary meaning in the English language; and that meaning is plain.

It is true, however, that this primary meaning is too wide for purposes of enforcement in the Courts.
In 1838 the right to a trade mark was for the first time recognized and enforced by an English
Court?the Court of Chancery. Now, the Court of Chancery could only enforce a right of property;
and as property involves exclusive rights, the Court only applied its remedies in favour of the owner
of the goods, or of the owner of some business with which the goods were identified. "The
jurisdiction of the Court in the protection given to trade marks rests upon property, and ... the Court
interferes by injunction, because that is the only mode by which property of this description can be
effectually protected." : Per Lord Westbury L.C. Leather Cloth Co. v. American Leather Cloth
Co.[185] . It is hard to see how the Court could, without legislation, have found property in a trade
mark in any one who had neither ownership nor quasi-ownership of the goods or of the business.
None but the owner (or quasi-owner) of the goods had a right to mark them; and it was he who got
the benefit of the mark in trade. The legal text-writers have, therefore, confined their attention to
such trade marks as the Courts will enforce?the only kind of trade marks which concerns
lawyers?and they have laboured to frame satisfactory definitions of the enforceable trade mark. It is
quite a common practice for experts in any calling to narrow the denotation of a class name to the
purposes of their calling. To anglers "fish" often means "salmon;" to a horse dealer "beast" means
"horse;" to a lawyer "trade mark" means a trade mark that fulfils the conditions necessary for legal
enforcement. But conditions of legal enforcement do not enter into the definition of the expression
"trade mark." All the logicians, I believe, manage to agree to this small extent, that any definition is
imperfect if the class name is defined by its accidents instead of by its essential differentia (Mill's
Logic vol. i., pp. 146, 156). There were many trade marks which could not be enforced in the
Courts simply because no one could show that he had acquired an exclusive right to use them. Two
or more traders might hit upon the same trade mark, independently; and?apart from legislation?they
could not prevent other traders from using it too. It was for this reason that in the British Act of
1883 (sec. 72), Parliament, in forbidding the registration of identical marks, made an exception of
cases "where the Court has decided that two or more persons are entitled to be registered as
proprietors of the same trade mark." This language recognizes that there may be trade marks which
do not fulfil the condition of exclusiveness as property. It is to be noticed?as Kerly on Trade Marks,
2nd ed., p. 26, points out?that the Courts, although they have frequently made expositions pointed to
the difficulties of a particular case, have never yet formulated an exhaustive definition of "trade
marks." Textwriters, it appears, have rushed in, where Judges have feared to tread. Some recent
compilers of dictionaries have evidently followed up the gallant text-writers into the breach.
Richardson, in 1855, does not refer to "trade mark" at all. But Worcester, in 1878, defines "trade
mark" as "a particular mark, sign, device, writing, or ticket, put by a manufacturer upon his goods,
to distinguish them from those of others." Even the plaintiffs' counsel would probably admit that it
is wrong to limit the idea to manufacturers, or to the owners of goods. Webster (1892) puts it as "a
peculiar distinguishing mark or device affixed by a manufacturer or a merchant to his goods, the
exclusive right of using which is recognized by law." This is better, but it refers to enforcement by
the Courts. But the Standard Dictionary (1901) says that the "trade mark" must be "secured to the
user by legal registration." So this dictionary makes registration part of the definition, which is also
wrong. It is evident that the learned compilers extracted these definitions from legal text-writers, the
only place where they could find anything definite; but the text-writers had in view the practice of
the Courts only. Dictionaries, as Hardcastle on Statutory Law (3rd ed. p. 165) tells us, are
sometimes delusive guides, and "the best dictionary ... can never be an absolute authority on so
varied and fluctuating a subject as language." It is our duty to look for the meaning of the words "as
they would be understood by plain men who know nothing of the technical rules" of the Courts:
Cargo ex Schiller[186] ; and see Attorney-General v. Winstanley[187] .

If we are at liberty, without evidence, to look beyond the ordinary grammatical meaning of these
two words in conjunction, it seems to be a fair thing to examine the various meanings of the words
as used, in order to find what attributes are common to all the meanings, and to see whether this
workers' trade mark has all the common attributes. This mark is a distinctive device; it is to be
attached to goods by or by the authority of the manufacturer, to identify the goods as being made by
a certain body of journeymen; and it is to be used for purposes of trade, to attract buyers. What
attribute is wanting? It used to be said (a) that the owner of the mark must own the goods. But that
is not so, even for purposes of enforcement. The bleacher of linen which another has manufactured
may have his trade mark for that linen: Sykes v. Sykes[188] ; and per Jelf J. in Major Brothers v.
Franklin and Son[189] . So may the selector of goods have his mark: Hirsch v. Jonas[190] ; and per
Kay J. in In re Australian Wine Importers Ltd.[191] . But it is said (b) the mark must identify one
particular trader, one sole concern. This is true, in the main, as to marks enforceable in the Courts.
Yet even the Courts have recognized separate rights in two independent persons to the same mark by
virtue of a devise of two separate business establishments: Dent v. Turpin[192] ; and see Southorn v.
Reynolds[193] . But the practice of the "Three Mark Rule," and the whole case of cotton marks,
referred to at length by my brother Isaacs, are, to my mind, conclusive. If a mark had not been used
by more than three firms (before the Act of 1875) it was treated as the old mark of each firm, and
each firm was entitled to registration. Therefore, there were certain trade marks which did not
identify one particular concern only. Then it is urged (c) that the mark must identify a trading
business of some sort carried on by the owner of the mark, and be inseparable from that business.
This is met by the case of "Sheffield Marks." The British Act of 1883 (sec. 81) provided for a new
register of trade marks at Sheffield. Every mark registered in the Sheffield register was to be
registered in the general register of "trade marks." Every apprentice who had served for seven years
was entitled to get a mark and to be made a freeman of the company of cutlers. The mark might be
devised by will (subject to an alienable life estate in the widow) and in default of a will was to pass
as personalty (21 Jac. 1 c. 131). If granted to a non-freeman of the Cutlers' Company the "trade
mark" was clearly assignable in gross: Bury v. Bedford[194] . It is clear, then, that the words "trade
mark" were applied before 1900 to marks belonging to journeymen workers, to marks which did not
identify any separate trading business, and which were assignable in gross. In short, the only
attributes that I can find to be common to these words in all their varying uses, the only essential
differentia from other marks is this?the marks must be used to identify the commodities with some
person or body of persons and for the purpose of attracting trade; and these attributes are all found
in this "workers' trade mark."

A consideration of the history of the words in the United States confirms this view. There, the
Courts of Chancery were subject to the same limitations as in England; and they necessarily
confined their relief to such trade marks as would be enforced in England. About 1889, in
California, the cigarmakers' union sought to check sweating and its resulting evils by adopting a
union label, and putting it on cigars made by unionists under wholesome conditions. The example of
California was followed in several other States. But some manufacturers, who did not use union
labour, sought to get the advantage of the label by putting it, falsely, on their goods. The unions took
proceedings for infringement of their labels; but in most of the Courts appealed to it was held (and,
as I think, rightly held) that the union label was not enforceable, as it did not identify any particular
maker, or vendor, or any particular business. Then the legislatures of the States took the matter in
hand (for there is no power in Congress, such as there is in our Federal Parliament, to legislate as to
trade marks, except as to those used in inter-state or foreign commerce); and Acts were passed by
most of the States prescribing registration of the union label as a trade mark, calling it a trade mark,
and providing for its enforcement as a trade mark. All this took place before 1900; so that, when our
Constitution was passed, union labels, of the same nature as these "workers' trade marks," were
actually called in public Statutes "trade marks." I suppose it will not be contended that we are not to
take into consideration the English language as used in America?the country where most of those
who use the English language live. Probably, as our Constitution is contained in a British Act, if the
British meaning were in conflict with the American meaning, that meaning should be adopted which
the language would bear as coming from a British legislature in preference to the meaning which it
would bear as coming from an American legislature. But this is not a case of conflict; and we are
entitled, I think, to take into account the use of the English language wherever that language is
heard?even if the sound have the timbre of a gramophone. Moreover, the Privy Council has
recognized as legitimate an argument as to the meaning (in the Canadian Constitution) of the word
"licences," based on the use of the word in the United States as well as on the use in Britain and
Canada: Attorney-General for Quebec v. Queen Insurance Co.[195] ; and it is not a violent
assumption to suppose that the framers of our Constitution and the British Parliament know
something of the long controversy as to the union label in the Courts and in the legislatures of the
United States, and meant to give the Australian Parliament full power, under the head of "trade
marks," to deal with the whole subject as it saw fit?power as full as each State of the Union had, as
each Australian Colony had, as the British Parliament had, and as the British Parliament has since to
a great extent exercised (Act of 1905, sec. 62).

On this part of the subject I have only to add that any definitions in the British Acts of 1862, 1875,
1883, and 1887 are merely definitions for the purposes of the Acts; and the International
Convention of 1883 is similarly limited. These definitions and this Convention do not settle the
meaning in our language of "trade marks."

I pass now to the main question?what are the limits of the power "to make laws with respect to trade
marks" ? Power to "make laws with respect to trade marks" is not the same thing as power to
enforce trade marks, or even power to regulate trade marks. Under the power to make laws with
respect to "marriage" I should say that the Parliament could prescribe what unions are to be
regarded as marriages. Under the power to make laws with respect to "parental rights," I should say
that it could define what those rights are to be. Under the power to make laws with respect to
"promissory notes," I should say that it could increase the class of documents which in 1900 were
known as promissory notes. Under the power to make laws with respect to trade marks, I cannot see
why Parliament cannot, at the least, bring into the class of trade marks printed trade names and the
"get up" of goods?rights in the nature of trade marks, things which were treated on the same
principles as trade marks, but not hitherto called "marks" in current language.

What is committed to the Federal Parliament is not the class of things called trade marks, but the
whole subject of trade marks. No doubt, we are to ascertain the meaning of "trade marks" as in
1900. But having ascertained that meaning, we have then to find the extent of the power to deal with
the subject of trade marks?or, what is the same thing, to find the meaning of the "power to make
laws with respect to trade marks." The usage in 1900 gives us the central type; it does not give us
the circumference of the power. To find the circumference of the power, we take as a centre the
thing named?trade marks?with the meaning as in 1900; but it is a mistake to treat the centre as the
radius. As an instance of my view, if the "Hammer Mark" did not come within the meaning of
"trade mark" in 1900, I think that the Federal Parliament would have power to deal with it as a trade
mark, and to say that it shall be called a trade mark. Under the Act 59 Geo. III. c. 7, the "Hammer
Mark" was not to be put on cutlery unless wrought or forged. There is no doubt that such a mark
aided the trade of such cutlers as wrought or forged. In my opinion, the Federal Parliament could
prohibit, by a penalty, the false use of the mark, and could give to these cutlers a proprietary right to
the mark, enforceable by injunction. As already stated, the text-writers on the subject of trade marks
always find it necessary to deal with rights resembling trade mark rights as well as with trade marks
proper. There is no doubt as to their view of the ambit of the subject of trade marks. The name of
the subject is taken from an example possessing pre-eminently the characteristics of the things
comprised within the subject. As Dr. Whewell said of classification, "the class is determined, not by
a boundary line without, but by a central point within."

The plaintiffs in their argument treat the power of the Federal Parliament to make laws with respect
to trade marks as if it were a power to make laws with respect to cattle. In such a case, if a beast
does not come under the term "cattle," as understood in 1900, there is no power, it is said, to make
any laws about it. But I am clearly of opinion that this narrow doctrine propounded by the plaintiffs
is, in construing a constitutional power to make laws, unwarrantable and absolutely wrong. In the
first place, there is a vital distinction arising from the nature of the subject. Cattle are concrete,
physical objects, and the boundaries of the class are fixed by external nature; whereas "trade marks"
are artificial products of society, and dependent upon the will of society. The class "cattle" cannot
well be extended by man; the class "trade marks" can be extended. Power to make laws as to any
class of rights involves a power to alter those rights, to define those rights, to limit those rights, to
extend those rights, and to extend the class of those who may enjoy those rights. In the same clause
of sec. 51, power is given to make laws with respect to "copyrights" (rights of multiplying copies of
books, &c.); with respect to "patents" (rights to make or sell inventions); and with respect to "trade
marks" (rights to use marks for the purposes of trade). The power to make laws "with respect to"
these rights, involves a power to declare what shall be the subject of such rights. In the second
place, although we are to interpret the words of the Constitution on the same principles of
interpretation as we apply to any ordinary law, these very principles of interpretation compel us to
take into account the nature and scope of the Act that we are interpreting?to remember that it is a
Constitution, a mechanism under which laws are to be made, and not a mere Act which declares
what the law is to be. Story pointed this out well (Commentaries, 2nd ed., sec. 455):?"While, then,
we may well resort to the meaning of single words to assist our inquiries, we should never forget,
that it is an instrument of government that we are to construe." In the United States Marshall C.J. in
his famous judgment in M'Culloch v. Maryland[196] recognized the same truth:?"In considering this
question, then, we must never forget, that it is a Constitution we are expounding." The case of Re
Klein[197] is a good instance of the application of this principle. At the making of the United States
Constitution, the word "bankruptcy" had the original English meaning of an adverse proceeding by
a creditor against a fraudulent debtor. This was the meaning from the beginning (34 & 35 Hen. VIII.
c. 4), and at the time of the American Constitution. Yet it was held that Congress, under its power
"to establish uniform laws on the subject of bankruptcies throughout the United States," had power
to make a law for the voluntary sequestration of their estates by debtors?power to allow a voluntary
bankruptcy at the instance and for the benefit of the debtor. It was also held that the Act was valid,
although the word "bankruptcy" was properly applicable only to traders: Kunzler v. Kohaus[198] ;
and see per Marshall C.J. in Sturges v. Crowninshield[199] . In short, Congress had the same power
to widen the scope of bankruptcy law as the English Parliament possessed, and as it in fact exercised
after the American revolution. In Canada, the Court of Appeal of Ontario followed suit: R. v.
Frawley[200] Under the British North America Act 1867 the provincial legislatures had power to
make laws with respect to "the imposition of punishment by fine penalty or imprisonment for
enforcing any law of the province made in relation to any matter coming within any of the classes of
subjects coming within the section" (sec. 92). The question arose, was a sentence of imprisonment
with hard labour valid (in a case of selling liquors without a licence). Spragge C.J. pointed out that,
if a mere Act of Parliament prescribed "imprisonment," hard labour could not be added; but that
they had to deal with a constitutional power. "Imprisonment was one of the subjects with respect to
which power of legislation had been conferred." The learned Judge quotes Vattel (qu. Story) and
Marshall C.J. in M'Culloch v. Maryland[201] , in support of his decision that the sentence was
valid. The Judicial Committee of the Privy Council also held that the sentence with hard labour was
valid: Hodge v. The Queen[202] The same principle was recognized obiter in Re Lake Winnipeg
Transportation Lumber and Trading Co.[203] , where an argument was overruled that the power of
the Dominion Parliament to legislate as to "insolvencies" was confined to insolvencies as recognized
at the passing of the British North America Act 1867. So, too, I presume, if a Parliament had powers
conferred on it to make laws with respect to "police," that power would not be confined to making
laws with respect to police as understood and defined at the creation of the power. There might be
two kinds of police provided (as in France) with different functions and status. So, too, if the
Parliament were granted power to make laws with respect to wills, I take it that a law could be made
defining what documents are to be treated as wills, and would not be cramped for ever within the
limits of the present meaning of the word?documents which are signed by the testator at the end and
attested by the signatures of two witnesses in the presence of the testator.
It is not necessary for the purpose of the decision of this case to decide precisely what is the outer
limit, the ring fence, of this power. But at present I am strongly inclined to the view that the grant of
such a power, made by the British Parliament to the Federal Parliament, confers on the Federal
Parliament as wide a power, with regard to Australia, as the British Parliament could itself have
exercised, provided that the laws made would come fairly under the description of "trade mark
laws," in ordinary parlance, if made by the British Parliament. It will also be found, I believe,
ultimately, that the phrase under which powers are granted to the Federal Parliament gives to that
Parliament even wider scope for its action than is given to the United States Congress by the
corresponding grants of power in the United States Constitution. "Power to lay and collect taxes" is
not as sweeping as our "power to make laws with respect to taxation." Power "to regulate
commerce" may not be so wide as our power "to make laws with respect to trade and commerce."
Power to "fix the standard of weights and measures" is more limited than our power "to make laws
... with respect to weights and measures." Moreover, the fact that in one case?the power with regard
to piracies &c.?there is express power in the United States Constitution to define piracies &c. as
well as punish them, may tend to show that the power of definition was excluded in the case of
other powers. Yet I know of no instance in which the power to increase the area of a subject by
definition?genuine, not colourable?has been denied; and, as I have already shown, the power has
been actually recognized.

It is urged, of course, against this broader view of the powers, that, if it is right, the powers of the
Federal Parliament would be practically unlimited?that the Federal Parliament would only have to
call a spade a "trade mark," and then legislate as to spades. This is a mistake. I gave an instance
during the argument. Suppose that the Federal Parliament desire to arrogate to itself the control of
wills?a subject which is clearly not entrusted to the Federal Parliament. Suppose that it define "trade
mark" as including a will, and enact that no will shall be valid unless registered as a trade mark. In
such a case we should have no hesitation in treating such a law as invalid. It would be a sham. It
would not be a law with respect to trade marks at all. It would be a law as to wills, under cover of a
law as to trade marks. In such a case the Courts would have no difficulty in pronouncing that the
Parliament had transgressed the boundary, had not applied itself to the exercise of its power at all.
This is what the Privy Council decided in Attorney-General for Quebec v. Queen Insurance
Co.[204] . A provincial legislature in Canada had power to raise revenue by business licences, but
no power to impose stamp taxes. It imposed a stamp tax, and called it a licence tax, and the Privy
Council, looking at the substance of the Act, and not accepting as conclusive the name which the
legislature chose to give it, said that the Act was void. It was not an Act "in relation to (insurance
business) licences" at all. In some cases the task of the Court would be much more difficult, but it
would have to be performed with such light as the circumstances in each case afford. We have some
guidance on the matter from English cases, in which the limited powers of municipalities have come
up for discussion. I apprehend that it is our duty to construe the powers of the Federal Parliament as
liberally at least as the powers of municipalities to make by-laws. If there is power for a
municipality to make by-laws as to nuisances, the municipality is not confined to the nuisances
recognized by the law at the date of the grant of the power. In the case of White v. Morley[205] the
municipal council had power to make by-laws for the prevention and suppression of nuisances not
already punishable by virtue of any Act in force throughout the borough. A by-law was passed to
the effect that any person who used the street for betting should be liable to a penalty. Such user was
not in itself a common law nuisance, apart from the by-law; but the Court held the by-law to be
valid under the power to prevent and suppress nuisances. "Where a thing is of such a character as
that it can be a nuisance, it is to rest with the local authority to say whether it shall be considered to
be a nuisance in the particular locality for which they have power to make by-laws. The Court can
say whether it is reasonably possible for the prohibited act or thing to be a nuisance." In Kruse v.
Johnson[206] also, Lord Russell of Killowen C.J. said (as to a by-law against playing or singing in
the streets) that it was not necessary that the by-law should be confined to cases where the playing
or singing amounted to a nuisance, or caused annoyance in fact. In those cases the power was
merely to prevent or suppress nuisances; yet, if the plaintiffs in this case are right, the act should
first be proved to come within the word "nuisance," as defined by the common law, before the by-
law could be applied to it. But the Court declined to adopt any such narrow view of the powers
conferred.

I am, therefore, of opinion that, even if the characteristics of the "workers' trade mark" did not bring
it strictly within the class "trade marks" as understood in 1900, there is nothing in Part VII. of the
Act which transgresses the power conferred on the Federal Parliament "to make laws with respect to
trade marks." This opinion may not be quite necessary for the purpose of my judgment, inasmuch as
I hold the view that the workers' trade mark does contain all the essential characteristics of a trade
mark; but it is my duty not to let the narrow view of the nature of the federal powers pass without
protest and by silence into unquestioned law.

I am also of opinion that there is nothing whatever in the law of New South Wales with regard to
trade unions which render them incapable of owning or registering or using a trade mark. They can
carry on a newspaper business: Linaker v. Pilcher[207] ; they can raise funds for parliamentary
representation: Steele v. South Wales Miners' Federation[208] ; and the true view seems to be that, if
an association has the objects referred to in sec. 31 of the Trade Union Act 1881 (New South Wales)
it has (subject to its own rules) unlimited freedom of action for the benefit of its members. The
Trades Union Acts are Acts removing, not creating, disabilities. The defendant union is not even an
artificial person created by the Federal Parliament for the purpose of holding this mark. It existed
before the federal Act, and can carry on any business allowed by its rules, and hold any trade mark,
if not prohibited by the law.

For these reasons I am of opinion that the second question should be answered in favour of the
defendants.

Declaration (1) that the defendant Registrar has no authority to keep a register of workers' trade
marks; (2) that the defendant union's mark is not a trade mark within the meaning of the
Constitution. Order that the defendant Registrar cancel the registration of defendant union's mark.
Order restraining defendant Registrar from continuing to keep a register of workers' trade marks.
Defendant Registrar to pay the plaintiffs' costs.

Solicitors, for the plaintiffs, Derham & Derham.

Solicitor, for the defendant Registrar, Crown Solicitor for the Commonwealth.

Solicitors, for the other defendants, Brown & Beeby.

1. (1894) A.C., 8.

2. (1893) 2 Ch., 388.

3. (1894) A.C., 8, at p. 10.

4. (1894) A.C., 8, at p. 12.
5. 26 Ch. D., 48.
6. (1891) 2 Ch., 186.
7. (1893) 2 Ch., 388, at p. 406.
8. (1891) 2 Ch., 186.
9. (1894) A.C., 8.
10. Raym. (Ld.), 938, at p. 955.
11. (1902) A.C., 165.
12. 21 Ch. D., 752.
13. (1900) 1 Q.B., 78.
14. [1869] USSC 154; 9 Wall., 41, at p. 43.
15. 3 App. Cas., 1090, at p. 1100.
16. 2 Atk., 484, at p. 485.
17. 3 My. & C., 1, at p. 16.
18. 3 My. & C., 338.
19. 4 D. J. and S., 137; 33 L.J. Ch., 199.
20. [1865] EngR 199; 11 H.L.C., 523, at p. 533.
21. [1865] EngR 199; 11 H.L.C., 523, at p. 538.
22. 30 Ch. D., 454, at p. 473.
23. 30 Ch. D., 454, at p. 476.
24. 32 Ch. D., 247, at p. 259.
25. 32 Ch. D., 247, at p. 262.
26. 41 Ch. D., 278, at pp. 280, 281.
27. 43 L.T., 626.
28. (1891) 2 Ch., 522.
29. (1891) 2 Ch., 522, at p. 543.
30. (1905) A.C., 256.
31. 84 L.T., 421.
32. [1908] HCA 34; 6 C.L.R., 143.
33. (1893) 2 Ch., 388, at pp. 406-7.
34. (1891) 2 Ch., 186, at p. 225.
35. 14 P.D., 34, at p. 36.
36. 17 Q.B.D., 619, at p. 621.
37. 22 Q B.D., 239, at p. 242.
38. 3 My. & C., 338.
39. 3 My. & C., 1.
40. 3 B. & C., 541.
41. Poph., 143.
42. Poph., 143.
43. 3 B. & C., 541.
44. 3 My. & C., 338.
45. [1865] EngR 199; 11 H.L.C., 523, at pp. 533-4.
46. 43 L.T., 626.
47. 41 Ch. D., 278, at p. 280.
48. 15 App. Cas., 316, at p. 320.
49. 41 Ch. D., 278, at p. 280.
50. (1899) 1 Ch., 692.
51. 24 Ch. D., 504, at p. 514.
52. 8 Q.B.D., 267, at p. 272.
53. [1905] USSC 184; 199 U.S., 437, at p. 448.
54. 19 How., 393, at p. 426.
55. 152 Mas., 101.
56. [1879] USSC 171; 100 U.S., 82, at p. 92.
57. 51 L.J. Ch., 897, at p. 900.
58. 32 Ch. D., 311, at p. 317.
59. [1883] USSC 104; 108 U.S., 218.
60. (1897) 1 Ch. 71, at p. 74.
61. 152 Mass., 101, at p. 104.
62. [1879] USSC 171; 100 U.S., 82.
63. [1879] USSC 171; 100 U.S., 82, at p. 96.
64. (1893) 2 Ch., 388; (1894) A.C., 8.
65. (1893) 2 Ch., 388, at p. 406.
66. (1891) 2 Ch., 186.
67. 21 Ch. D., 752.
68. 21 Ch. D., 752, at p. 755.
69. 2 W.R., 330, at p. 331.
70. 21 Ch. D., 752, at p. 756.
71. L.R. 4 Ch., 194, at p. 199.
72. (1902) A.C., 165.
73. (1902) A.C., 165, at p. 168.
74. [1907] HCA 41; 4 C.L.R., 1569.
75. [1892] USSC 52; 143 U.S., 339, at p. 345.
76. (1907) A.C., 81, at p. 88.
77. 3 App. Cas., 376, at p. 391.
78. [1853] EngR 773; 1 Drew., 617.
79. 2 Kay & J., 753.
80. L.R. 2 Ind. App., 83, at p. 85.
81. L.R. Ind. App. Supp. Vol., 1800, at p. 171.
82. (1904) 2 K.B., 44, at p. 49.
83. (1904) 9 Com. Cas., 289.
84. (1892) 3 Ch., 242.
85. 24 R.P.C., 249, at p. 262.
86. L.R. 7 Ch., 611.
87. (1894) A.C., 8.
88. (1894) A.C., 8.
89. 15 R.P.C., 377.
90. (1893) 2 Ch., 567.
91. [1879] USSC 171; 100 U.S., 82.
92. [1905] USSC 117; 198 U.S., 253.
93. [1905] USSC 190; 203 U.S., 514.
94. [1908] USSC 6; 207 U.S., 463.
95. 3 App. Cas., 889, at p. 904.
96. 9 App. Cas., 117, at p. 132.
97. 3 App. Cas., 889.
98. 43 L.T., 626, at p. 627.
99. (1908) 1 K.B., 712.
100. (1897) A.C., 710, at p. 716.
101. [1865] EngR 199; 11 H.L.C., 523, at p. 534.
102. 12 App. Cas., 453.
103. 12 App. Cas., 453.
104. 51 L.J. Ch., 639.
105. 3 L.R. Ir., 284, at p. 290.
106. 4 D. J. & S., 352.
107. 8 R.P.C., 181.
108. [1865] EngR 199; 11 H.L.C., 523.
109. (1894) 1 Ch., 569.
110. 4 D. J. & S., 352, at p. 370.
111. 32 Ch. D., 311, at p. 325.
112. [1865] EngR 199; 11 H.L.C., 523, at p. 545.
113. 8 R.P.C., 181, at p. 192.
114. 3 D. M. & G., 896, at p. 904.
115. 27 Ch. D., 77, at p. 88.
116. 12 Am. S.R., 726, at p. 729; 40 Minn., 243.
117. 102 Ky., 133; 80 Am. S.R., 348.
118. 57 N.J. Eq., 303; 73 Am. S. R., 637, at p. 643.
119. 32 Ch. D., 311, at p. 325.
120. (1899) A.C., 428.
121. 12 Am. S.R., 726, at p. 729.
122. 144 Pa. St., 235; 27 Am. S.R., 625.
123. 102 Ky., 135; 80 Am. S.R., 348.
124. 57 N.J. Eq., 303; 73 Am. S.R., 637.
125. 80 Am. S.R., 348.
126. 80 Am. S.R., 348, at pp. 350, 351, 352.
127. 73 Am. S.R., 637, at p. 643.
128. 152 Mass., 101.
129. (1894) A.C., 8.
130. 152 Mass., 101, at p. 105.
131. 73 Am. S.R., 637.
132. 50 Hun., 552.
133. 128 Miss., 373; 49 Am. S.R., 569.
134. 50 Hun., 552.
135. 73 Am. S.R., 637.
136. 45 N.Y., 291; 6 Am. Rep., 82.
137. 80 Am. S.R., 348.
138. 73 Am. S.R., 637.
139. 43 L.T., 626.
140. 3 My. & C., 338.
141. (1898) 2 Ch., 432, at p. 440.
142. 4 D. J. & S., 150.
143. (1896) A.C., 199, at p. 209.
144. (1908) A.C., 54, at p. 58.
145. [1879] USSC 171; 100 U.S., 82.
146. (1899) A.C., 428, at p. 430.
147. (1901) A.C., 426, at p. 437.
148. (1907) 1 K.B., 361.
149. 84 L.T., 421.
150. (1907) 1 K.B., 361, at p. 367.
151. (1905) A.C., 256.
152. [1892] USSC 52; 143 U.S., 339, at p. 345.
153. L.R. 9 Ch., 705.
154. 5 Ch. D., 944.
155. 28 Ch. D., 688.
156. (1893) 2 Ch., 87.
157. 23 Q.B.D., 598, at p. 613, per Bowen L.J.
158. (1906) 1 Ch., 342, at p. 357.
159. (1900) 1 Ch., 852.
160. (1904) 2 K.B., 44.
161. (1906) 1 Ch., 324, at p. 329; (1906) 2 Ch., 498.
162. (1893) 2 Ch. 388; (1894) A.C., 8.
163. (1894) A.C., 8, at p. 10.
164. (1893) 2 Ch., 567, at p. 584.
165. 15 App. Cas. 252, at p. 264.
166. 10 R.P.C., 113, at p. 116.
167. (1894) A.C., 8.
168. (1892) 3 Ch., 242.
169. (1892) 3 Ch., 242, at pp. 259, 265, 273.
170. (1892) 3 Ch., 242, at p. 257.
171. (1892) 3 Ch., 242, at p. 259.
172. (1892) 3 Ch., 242, at p. 262.
173. (1892) 3 Ch., 242, at p. 266.
174. [1904] HCA 50; 1 C.L.R., 208.
175. (1902) A.C., 165, at p. 168.
176. (1907) 2 K.B., 480.
177. 21 Ch. D., 752.
178. (1900) 1 Q.B., 78.
179. (1901) 1 Ch., 781; (1902) A.C., 165.
180. (1902) A.C., 165, at p. 168.
181. 22 W.R., 103.
182. L.R. 2 Ch., 582.
183. 8 El. & Bl., 54, at p. 109.
184. (1891) 1 Q.B., 79, at p. 85.
185. 4 D. J. & S., 137, at p. 142.
186. 2 P.D., 145, at p. 161.
187. 2 Dow & Cl., 302, at p. 310.
188. 43 L.T., 626.
189. (1908) 1 K.B., 712, at p. 717.
190. 3 Ch. D., 584.
191. 41 Ch. D., 278, at p. 281.
192. 2 John. & H., 139.
193. 12 L.T.N.S., 75.
194. 33 L.J. Ch., 465.
195. 3 App. Cas., 1090, at p. 1099.
196. 4 Wheat., 316, at p. 407.
197. 1 How., 277 (n.)
198. 5 Hill N.Y., 317.
199. [1819] USSC 15; 4 Wheat., 122, at p. 194.
200. 7 Ont. App. R., 246, at p. 265.
201. 4 Wheat., 316, at p. 407.
202. 9 App. Cas., 117, at p. 133.
203. 7 Manitoba R., 255.
204. 3 App. Cas., 1090.
205. (1899) 2 Q.B., 34, at p. 39.
206. (1898) 2 Q.B., 91.
207. 84 L.T., 421.
208. (1907) 1 K.B., 361.
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