Re Australian Milk Ferment Pty Ltd [1909] HCA 40; (1909) 8 CLR 460 (17 June 1909)

In re The Application of the Australian Milk Ferment Proprietary for a Trade Mark.

A firm of three persons, Messrs. Carroll, Hall and Griffith, trading in Sydney in co-partnership as "The Australian Milk Ferment Proprietary," are applicants for a trade mark. The application No. 5729 is still pending before the Registrar and is opposed by La Société Anonyme Le Ferment, a foreign company admittedly not residing in Australia. An application has been made to me under sec. 46 of the Trade Marks Act 1905 on behalf of the applicants for an order that the opponent company shall give security for costs.

Some minor objections were raised, which may be passed by having regard to the view I take of the meaning of sec. 46. Mr. Schutt for the opponents contended broadly that the Court has no jurisdiction in the circumstances to make the order asked for, because there is no appeal to the Court pending, and the matter is so far within the domain of the Registrar's authority. Mr. Griffith urged that the Court has an alternative power.

Now sec. 46 must be read with all the other sections of Division 3. Secs. 38 to 42 inclusive provide for notice of opposition, and the procedure down to the hearing before the Registrar and his decision. Sec. 43 allows an appeal from the Registrar to the Law Officer who then necessarily has control of the matter until his decision is given. Sec. 44 provides for an appeal from the Law Officer to the Court, which in that case must have exclusive control. Sec. 45 permits a direct appeal from the Registrar to the Court. Then comes sec. 46 which is in these terms:—"If a person giving notice of opposition or appeal does not reside in Australia, the Registrar Law Officer or the Court may order him to give security for costs, and if the order is not complied with the opposition or appeal shall be deemed to be abandoned."

Now it is plain to me that the expressions "notice of opposition" and "appeal" are referable to the foregoing provisions in which they occur, and the jurisdiction given to the Registrar, the Law Officer, and the Court must be ancillary to the proceedings pending before those respective tribunals. It cannot be that, where an appeal is pending before the Court, the Registrar could interfere, and make an order which, if not obeyed, would take the whole matter out of the hands of the Courts. Particularly is this so where no provision for any appeal from such an order is made. And on the applicant's suggestion, where an appeal is made direct from the Registrar to the Court, completely passing by the Law Officer, nevertheless the Law Officer could intervene and make the order. That cannot be, and therefore, referring the powers of each designated tribunal to action in connection with some main matter depending before it, the section gives no power to the Court to make an order intercepting the proceedings before the Registrar. This ends the case, and on this point I decide.

It appears, however, that a previous application of the same nature was made to the Deputy Registrar, who granted it, but upon condition that the applicants themselves lodged security, the condition being rested on the one fact that the applicants resided beyond the jurisdiction of the Victorian Courts, that is to say, in New South Wales.

The Deputy Registrar thought he was justified in this by the case of In re La Compagnie Générale d'Eaux Minérales et de Bains de Mer[1], where Stirling J. similarly required an opponent and an applicant to give mutual security, because both were outside the jurisdiction of the English Courts. Mr. Griffith urged me to disregard entirely the order so made by the Deputy Registrar, as such a condition on such grounds was unauthorized, and rendered the whole order nugatory. Mr. Schutt on the other hand contended that the order was made, and still remained, and there was no appeal provided from such an order. As I have no power to make the order asked for by the applicants, even if no former application had been dealt with by the Registrar, that latter contention is not really material. But in view of the importance of the matter I think I ought to take this opportunity of saying that the distinction upon which the Deputy Registrar founded his condition was quite erroneous, and is not even supported by the case relied upon. The analogy to English jurisdiction for this purpose is not State but Australian jurisdiction. And, further, I would observe that, if within proper time and by proper means the Court were called upon to consider the validity of such an order, it would, in my opinion, raise a serious question as to whether a decision depending upon such a distinction could be regarded as a legal decision at all. This distinction amounts to this: that upon a general provision in a Federal Statute, the section itself differentiating only between the Australian and non-Australian residence of the opponent, an applicant may be subjected to a special disability merely because he does not reside in one particular State. It is very arguable whether such a decision is a hearing and determination at all according to law. See Reg. v. De Rutzen[2]. Though I have not to deal by way of decision with this phase of the matter, it should, if necessary, in future receive careful consideration.

[1] (1891) 3 Ch., 451, at p. 458.

[2] 1 Q.B.D., 55.

High Court of Australia

Re Australian Milk Ferment Pty Ltd [1909] HCA 40; (1909) 8 CLR 460 (17 June 1909)

HIGH COURT OF AUSTRALIA