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Tuesday, 28 November 1905

Mr McCAY (Corinella) - This clause, I take it, means that any State-registered proprietor of a trade mark may seek to come under this Bill, and so extend his registra-tion over the whole of the Commonwealth, but if a similar registration has been made by another individual in another State His extension shall except the area covered bv that registration. But what will happen if the Trade Marks Office is not aware of the other man's mark - if, for instance, B, in Western Australia, has not brought it under the notice of that office? In that case, A might get his trade mark registered for the whole of Australia, although B really has the registered right in Western Australia for a considerable number of years to come.

Mr Isaacs - It would have to be advertised.

Mr McCAY - But is there any power to secure a rectification of the register? I think that the Attorney-General ought to make provision for allowing the register to be rectified, especially in cases such as that to which I have alluded.

Mr Isaacs - I intend to move an amendment which, I think, will meet the case. It provides for the insertion in the register of any exception or limitation affecting the registration of a. trade mark which, in the opinion of the Court, ought to be covered.

Mr McCAY - That mav cover it.

Mr Isaacs - I think it will.

Mr Glynn - I do not think a correction could be made under that specific provision, because the rights are conferred " by this section."

Mr McCAY - I am not sure that it does cover the case in question. This section purports to cover it, but I am not sure that when it specifically does so, a subsequent general clause may be invoked. I submit this point to the Attorney-General as a matter of immediate importance, and suggest to him that he will be able to recommit the clause if he thinks it necessary, to do so. At present, I think that it is desirable to insert either something showing that "the general rectification provisions shall apply to the correcting of an error of the kind I have mentioned, or some special provision. It is a matter which will require much attention in connexion with the administration of the Act if trouble is to be avoided. The subclause provides that -

The trade mark may be registered subject to such conditions and limitations as to mode or place of user or otherwise. ...

Does the Attorney-General think that that would cover a condition being imposed by the Registrar that the registered proprietor - supposing that he had registered >for the Commonwealth from Victoria, and that there was a Western Australian registration which he was not allowed to override - should add some words showing that the trade mark did not prevail in Western Australia? Let me give an illustration of what I have in mind : Supposing that there was a trade mark, consisting of the letters "X Y Z," registered in Victoria, in respect of knitting-needles, and that the same letters had been registered in Western Australia as a trade mark in respect of the same goods. Let us suppose, further, that the proprietor of the trade mark registered in Victoria got his mark extended oyer the Commonwealth, but that in the registration a limitation was made so that it should not apply to Western Australia. I take it that that would mean that the Victorian proprietor must not sell his goods under that mark in Western Australia. Does the AttorneyGeneral think it desirable that in such a case the proprietor should be called upon to add to the fetters " X Y Z " such words as "Not for Western Australia" ?

Mr Isaacs - I think that that comes within sub-clause 4.

Mr McCAY - Would the effect of such a limitation be that the Victorian proprietor would not be able to sell his goods bearing the letters "X Y Z" in Western Australia ?

Mr Isaacs - I should think so.

Mr. CONROY(Werriwa). - To begin with; we find that under sub-clause 4 the Registrar, the Law Officer, or the Court may decide this matter as it stands.

Mr Isaacs - No; the Registrar will first decide. This will afford a cheap means of dealing with such matters.

Mr CONROY - The question for consideration is, who is to secure the first right to extend his trade mark in one State to all the other States? Say that A has registered a trade mark in Victoria, and that B, who has registered a similar trade mark in Queensland, applies first for Commonwealth registration.

Mr McCay - Should they not both have rights in respect of the neutral States ?

Mr Isaacs - Supposing there were halfadozen such trade marks - one in each State - great confusion would arise.

Mr CONROY - My point is : Who is to secure the right in respect of the Commonwealth ?

Mr Isaacs - I should say the first man to apply.

Mr CONROY - Is the Committee going to say who shall have the first right, or are we to leave it to be determined by Judge-made law ?

Mr McCay - If the Attorney-General's suggestion were carried out it would be rather hard on a man in Western Australia, who would be far away from the central office.

Mr Isaacs - There will be an office in each State.

Mr CONROY - I am not suggesting that this is the fault of the draftsman. It is clear that we could not provide, in the circumstances I have named, that the man who first attempted to register such a mark in respect of the whole Commonwealth should have a prior right. I think a time limit should be imposed within which it would be assumed that all applications had been made. It seems to me that it would be reasonable to determine that the man who had registered first, in point of time, under the State law, should be entitled to priority of registration in respect of the other States. That would be a rough and ready way of determining, the matter, but certainly not more so than is the present system. I think that in the general run of affairs, practical justice will be meted out by allowing the man who has first registered under any State Act priority in other States.

Mr Isaacs - Whenever he may chose to apply ?

Mr CONROY - We should have to impose a limit.

Mr JOSEPH COOK (PARRAMATTA, NEW SOUTH WALES) - If all other things were equal, would it be right to give priority to a man. who happened to register his mark, say, a minute before another applicant to register the same mark had come forward? Why should we not allow them to ballot, just as applicants for the one block of land haveto do, under the Land Acts of the States?

Mr CONROY - We must endeavour to arrive at some finality in regard to this question. We are dealing now with cases in which two trade marks, both identical, have been registered under States Acts.

Mr Isaacs - I think that such cases would be very rare.

Mr G B EDWARDS (SOUTH SYDNEY, NEW SOUTH WALES) - I know of several such cases in connexion with the industry in which I am engaged.

Mr CONROY - I have been told of half-a-dozen instances in which exactly similar trade marks are owned by different persons.

Mr Isaacs - There may be some such cases where businesses in different States have been sold to different proprietors. But, apart from such circumstances, I think that cases of the kind to which the honorable and learned member has alluded would be very rare.

Mr CONROY - Such cases would be found more numerous than many of us imagine. Cases have been brought under my notice in which a trade mark registered by one person in one State has been registered by another person in a different State; but we have not yet attempted to deal with that phase of the question.

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