Farbenfabriken Bayer A G v Bayer Pharma Pty Ltd [1965] HCA 24; (1965) 113 CLR 520 (4 May 1965)

HIGH COURT OF AUSTRALIA

FARBENFABRIKEN BAYER A. G. v. BAYER PHARMA PTY. LTD. [1965] HCA 24; (1965) 113 CLR 520

Trade Marks

High Court of Australia
Barwick C.J.(1), Taylor(1), Menzies(1), Windeyer(1) and Owen(1) JJ.

CATCHWORDS

Trade Marks - Alteration of mark - Application under existing legislation - Repeal prior to decision on application - New Act making different provisions for alteration of mark - Transitional provisions - Earlier application not kept on foot - Decision on earlier application purportedly under new Act - Appeal therefrom - Prohibition to Deputy Registrar of Trade Marks - Functions of Deputy Registrar - Quasi-judicial - Discretion to order prohibition - Trade Marks Act 1905-1948 (Cth), s. 70 - Trade Marks Act 1955 (Cth), s. 5 (4), 21.

HEARING

Sydney, 1964, August 25, 26;
Melbourne, 1965, May 4. 4:5:1965
CASE STATED AND PROHIBITION.

DECISION

1965, May 4.
THE COURT delivered the following written judgments:-
These two matters, the one a case stated by Kitto J., the other an same set of circumstances and were heard together. (at p524)

2. It appears that until 1st August 1958 Bayer Pharma Pty. Limited (hereafter referred to as the Australian Company) was registered under the provisions of the Trade Marks Act 1905-1948 (Cth) as the proprietor of Trade Mark No. 37254. On 22nd November 1956 it lodged with the Registrar of Trade Marks an application under s. 70 of that Act for leave to alter the trade mark in certain particulars and, on 6th June 1957, the fact that the application had been made and the proposed alteration to the mark were advertised in the Official Journal of Trade Marks Patents and Designs. Section 70 empowered the Registrar to refuse or grant such an application on such terms as he thought fit and, from his decision, an appeal lay to the Law Officer but no right of appeal to the Court was given. The section did not require the advertisement of pending applications nor did it make provision for opposition to such applications or for a hearing of the interested parties by the Registrar although, as a matter of practice, these procedures were adopted. (at p525)

3. The application came before Mr. Ashton, a Deputy Registrar of Trade Marks, on 9th September 1957 and 9th and 10th April 1958. He was then a Deputy Registrar appointed under s. 11 (3) of the Act and, by virtue of that sub-section, all the powers of the Registrar were, subject to the latter's control, vested in him. On the dates mentioned he heard argument from counsel for the Australian Company in support of the application and from counsel for Farbenfabriken Bayer Aktiengesellschaft (hereafter called the German Company) in opposition and reserved his decision. On 1st August 1958 and before he gave his decision, the Trade Marks Act 1955 (Cth) came into force. It repealed the Act of 1905-1948 but contained certain transitional provisions and, by s. 5 (4), provided that the repealed Act, notwithstanding its repeal, was to continue to apply "to and in relation to applications for the registration of trade marks made before the commencement" of the new Act and "to and in relation to the registration of trade marks on those applications". It set up a Register of Trade Marks (s. 14 (1)) and declared, by sub-s. (3), that the Register kept under the repealed Act was incorporated with and formed part of the new Register. It made provision for the appointment of a Registrar of Trade Marks and of Assistant Registrars to whom, by s. 11, the Registrar might delegate all or any of his powers and functions. Mr. Ashton was appointed an Assistant Registrar and the Registrar delegated to him a number of powers and functions, including the powers and functions with respect to the "Alteration of registered Trade Marks (s. 21)". Section 21 of the new Act took the place of s. 70 of the repealed Act but differed from it in significant respects. It enabled the registered proprietor of a trade mark (that is to say, of a mark on the new Register) to apply for leave to alter it in a manner not substantially affecting its identity and empowered the Registrar (and, by delegation, an Assistant Registrar) to refuse leave or to grant it on conditions. The same section made provision for the advertisement of applications where it appeared to the Registrar that it was desirable that this should be done, for the giving of notices of opposition and for the hearing by the Registrar of the parties concerned. It did not give an appeal to the Law Officer from the decision of the Registrar but, by sub-s. (5), it created a right of appeal from such a decision to the Appeal Tribunal, that is to say to the High Court (s. 111 (1)), the jurisdiction of which was to be exercised by a single Justice (s. 112). (at p526)

4. Accordingly when the new Act came into force the trade mark of which the Australian Company was the registered proprietor ceased to be registered under the repealed Act and became registered under the repealing Act. The transitional provisions of the latter Act did not keep on foot applications, such as the one with which this case is concerned, made before the new Act came into force nor did it permit such applications to be dealt with under the new Act. And, since the transitional provisions were exhaustive, s. 8 of the Acts Interpretation Act could not be called in aid : G. F. Heublein and Bro. Inc. v. Continental Liqueurs Pty. Ltd. [1962] HCA 66; (1962) 109 CLR 153 . In the result, therefore, the Australian Company's application of November 1956 ceased to be effective when the new Act came into force on 1st August 1958 and an application for leave to alter the trade mark under s. 21 of the new Act could only be made and dealt with under that section. No such application was, however, made. Nevertheless on 5th September 1958 Mr. Ashton announced his decision to grant the Australian Company's application of November 1956 but made it clear, by the reasons which he gave, that he was doing so under s. 21 of the new Act and in his capacity as an Assistant Registrar appointed under that Act. In taking this course he fell into error and the German Company, equally mistakenly and in purported pursuance of s. 21, lodged an appeal to this Court. When it came on for hearing before Kitto J., counsel for the Australian Company took the preliminary objection that no appeal lay and, at the request of the parties, the learned Judge thereupon stated for the opinion of the Full Court the question whether the appeal was competent. Following the taking of the objection to competency the German Company obtained from his Honour an order nisi for a writ of prohibition directed to Mr. Ashton and the Australian Company to prohibit the former from proceeding further upon his decision. (at p526)

5. When the matters were heard before us, counsel for the Australian Company submitted that Heublein's Case [1962] HCA 66; (1962) 109 CLR 153 had been wrongly decided and asked that it be reconsidered. Upon the Court indicating that it was not prepared to take this course counsel conceded, and rightly so, that in the light of that decision the application to alter the trade mark made under the repealed Act must be regarded as having ceased to exist when the new Act came into force and that, in the absence of a fresh application made under s. 21 of that Act, the appeal to Kitto J. was incompetent. The question asked in the stated case should therefore be answered "No". (at p527)

6. It is necessary then to consider whether the order nisi for prohibition should be made absolute. On this, counsel appearing for the Assistant Registrar made a number of submissions, some of which were supported by counsel for the Australian Company. Counsel for the Assistant Registrar argued that the Assistant Registrar might properly treat the application made under s. 70 of the repealed Act as being one made pursuant to s. 21 of the new Act and deal with it on that basis, but the argument cannot be sustained. The coming into force of the new Act had put an end to the only application that had been made and, in the absence of a fresh application made under the new Act, s. 21 could have no operation. (at p527)

7. Counsel also submitted that prohibition would not go to the Assistant Registrar because, so he contended, his functions under s. 21 were purely administrative. In support of this contention he referred us to R. v. Commissioner of Patents; Ex parte Weiss [1939] HCA 7; (1939) 61 CLR 240 , in which there was some discussion of the question whether prohibition would, in any circumstances, lie to the Commissioner of Patents. Latham C.J. and Evatt J. rejected the view that it would not, while Starke J. thought that the particular function which the Commissioner had performed in that case was a purely administrative one, not involving any duty to act judicially, and that the writ would not lie. It seems to us, however, to be beyond question that the Registrar or an Assistant Registrar, exercising a delegated authority, acting under s. 21 of the present Act exercises a quasi-judicial function which affects the rights of private persons and that in a proper case what he does may be controlled by prohibition. (at p527)

8. Counsel also submitted that the Registrar or an Assistant Registrar, acting under s. 21, had power to decide whether he had before him a valid and effective application. His decision in a particular case might be wrong but, if it was, he was nevertheless acting within the limits of the powers conferred upon him. We cannot agree that this is so. His power to make a decision under s. 21 granting or refusing an application to alter a trade mark on the new Register set up under the Act depends upon the existence of an application made to him under that section. Its existence is an essential preliminary to the exercise of the powers conferred by the section and, in its absence, he has no power to act. (at p528)

9. Finally it was contended that, as a matter of discretion, the writ should be refused. The argument was based upon the fact that the German Company had lodged an appeal to this Court and thereby, so it was said, treated the Australian Company's application as having been made, contrary to the fact, under s. 21. In other words it had attempted to exercise a non-existent right of appeal and for that reason the Court, in its discretion, should refuse to prohibit the carrying into effect of the Assistant Registrar's decision. We do not agree. In our opinion the order nisi should be made absolute. (at p528)

ORDER

Farbenfabriken Bayer Aktiengesellschaft v. Bayer Pharma Pty. Limited: -

Question asked in stated case answered as follows:

Question. Is the appeal competent?
Answer. No.

Appellant to pay the respondent's costs of the case stated.

The Queen v. Ashton and Bayer Pharma Pty. Limited: - Order that

Order nisi for prohibition be made absolute. Costs of the Prosecutor and of the Assistant Registrar of Trade Marks to be paid by the second named respondent.