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Tuesday, 28 November 1905

Mr ROBINSON (Wannon) - The clause provides that the proprietor of a trade mark properly registered under the Trade Marks Act of a State may apply for the registration qf his trade mark under the Bill, and I understand that, if his application is granted, the registration will apply to the whole of Australia. But a person in New South Wales, and another in Victoria, might both have registered the same trade mark under the Trade Marks Acts of their respective States. If one of them applied for a Commonwealth registration, the other, knowing nothing of the application', would he be given the exclusive right to use the trade mark throughout Australia, preventing the other from using it, first, in the State in which he was originally registered, and, secondly, in the remaining States?

Mr Isaacs - The clause preserves all vested rights.

Mr ROBINSON - Then registration under the Bill would not destroy any existing right?

Mr Isaacs - No. Any man possessing; an exclusive right in one State would retain it.

Mr. G.B. EDWARDS (South Sydney). - The point I raised seems to be blindly provided for, but it is not clear how the clause will operate. Sub-clause 3 provides that -

The trade mark may be registered even if it does not contain the essential particulars required* by this Act, but subject, in that case, to such conditions and limitations as to mode or place or period of user as the Registrar, La-w Officer, or Court thinks fit to impose.

That may mean a great deal, or it may mean very little How will the Registrar deal with the claims of two persons hav- ing a registered trade mark in Victoria and New South Wales respectively, as to States in which they may have a common right of user? How will their claims to the use of the trade mark be protected against outsiders? If the Registrar had power to say that A and B having registered trade marks in Victoria and New South Wales respectively, .should have exclusive rights in those two States, but only rights in common in other cases, they would be protected against outsiders, but if there is to be a mere scramble for the right to register, some of those who have been using certain trade marks in common will suffer wrong. The -Attorney-General says that they will occupy the same position as at present, but that is not satisfactory. Unless those who have registered trade marks in, say, Victoria and New South Wales, are allowed to acquire rights in common in other States, it will be open to any merchant to deprive a Victorian manufacturer of the right to use a certain trade mark beyond that State.

Mr Isaacs - There will be no diminution of the rights at present enjoyed.

Mr G B EDWARDS (SOUTH SYDNEY, NEW SOUTH WALES) - But will any provision be made for the protection of those who have rights in common in certain States? I admit that such persons have no legal status at present, but as a matter of fact a number of manufacturers have common rights of user in regard to certain trade marks in States outside those in which they are the registered proprietors of such marks. I should think it would be possible to provide that, say, A and B could become the joint proprietors of a certain trade mark in States in which they had exercised certain rights of user. I think we should lay down some definite principle at law, in order to prevent litigation as much as possible.

Mr. ISAACS(Indi - Attorney-General). - I would point out to the honorable and learned member that we are merely transferring to Federal jurisdiction the rights existing under the States jurisdictions. It is intended to preserve intact every right that is now possessed under the States laws. The man who registers a star, say, in New South Wales, as a trade mark, is to keep it exclusively, and a man who has made a similar registration in Victoria is also to have the exclusive right to its use in that State. If there be any other State in which the trade mark has not been used, the person who has registered it in ohe State will have the right to extend his registration, but if other persons have been using it he is not to have the exclusive right to it. The Registrar will first of all determine on the facts whether or not any one else has been using the trade mark. If it has been used in common, no exclusive right can be granted.

Mr G B EDWARDS (SOUTH SYDNEY, NEW SOUTH WALES) - But how about the protection of common users against outsiders ?

Mr ISAACS - Thev will be protected if they are protected now. If the mark is common to the trade, any one can use it.

Mr G B EDWARDS (SOUTH SYDNEY, NEW SOUTH WALES) - Yes; but suppose that it has been in use by only two manufacturers ?

Mr ISAACS - I should say that if a manufacturer had not the right to register as exclusive owner of the trade mark, the Court would take good care to protect him from the unfair intrusion of others.

Mr G B EDWARDS (SOUTH SYDNEY, NEW SOUTH WALES) - But should not we make provision in that direction ?

Mr ISAACS - At present I do not know of any express provision in any Trade Marks Acf which allows two persons to be registered in regard to one trade mark.

Mr G B EDWARDS (SOUTH SYDNEY, NEW SOUTH WALES) - But we have not yet had experience of a Federal trade mark.

Mr ISAACS - I shall take the matter into consideration, and endeavour to see if we can frame such a provision to meet that case.

Mr Glynn - The question of international reciprocity will also require to be considered, because otherwise we mav block the registration of trade marks from England.

Mr ISAACS - I shall consider the matter from that stand-point, and if it be possible to make the desired provision. I shall recommit the clause. I move -

That, after the word " proprietor," line 17. the following words be inserted " in any part of the Commonwealth. "

Amendment agreed to.

Mr. CONROY(Werriwa).- Should we not fix some dme limit within which registration should take place?

Mr Isaacs - It is intended to give a man who has a trade mark registered under a State law an opportunity to come in and register under the Federal law.

Mr CONROY - But some of the rights may hare a long term to run.

Mr Isaacs - None of them can run for more than fourteen years. They must then be registered under the Federal Act.

Mr CONROY - We should still fix some time within which applications and appeals should be lodged. We will suppose a case in which the same trade mark is held by, say, A, in New South Wales, and B.. in Victoria. A's right may expire within a year, whilst B's may have ten years to come. A applies to the Registrar, who, without knowledge as to B's registration under the State Act, may give him rights for the whole Commonwealth-. Would the Registrar have full power under clause 67 to correct the register?

Mr Isaacs - Yes. He would have unlimited power.

Mr CONROY - But what protection will be afforded to B?

Mr Isaacs - The same protection that is afforded under the Patents Act. Advertisements will have to be inserted in all the States.

Mr CONROY - That would be some protection, but I think we should fix a time.

Mr Isaacs - A great deal will have to be left to regulation.

Mr CONROY - I trust that the regulations will be drawn up in such a way as to fix a time for registration, and also for the lodging of appeals against applications. I (hint that the regulations should be very liberal in that respect. Any person who has registered a trade mark under a State Act, anc! who does not seek to extend that registration to the Commonwealth, because the period covered by the State registration has not expired, ought to be liberally treated.

Mr. ISAACS(Indi- Attorney-General). - Clauses 79 and 80 give the widest powers as to registration. I move - the words " it may be registered with an exception as to that State," sub-clause 5, be left out, with a view to insert in lieu thereof the words, " the registration under this Act shall confer no exclusive rights in that State on the registered proprietor, and that State may be excepted from the registration under this Act."

Amendment agreed to.

Mr. CONROY(Werriwa).- Does not the Attorney-General think that we should insert some definition of the term " registered proprietor " which would cover a registered proprietor under a State Act, as well as under the Commonwealth Act ?

Mr Isaacs - Will the honorable and learned member look at clause 70?

Mr CONROY - That provision reads - Subject to this Act, the Court, on the application of any person aggrieved, or of the registrar, may order the rectification of the register. . . .

What is the meaning of " any person aggrieved " ?

Mr Isaacs - The Court would give the very widest interpretation to these words. They mean any person engaged in a business who desires to sell certain goods.

Mr CONROY - I think that the clause means exactly what it says, and that provision has not been made for a registered proprietor under a State Act.

Mr Isaacs - Clause 70 applies to that.

Mr CONROY - If the Attorney-General will make a note of my point, and enlarge that provision when we come to deal with it, I shall be satisfied.

Mr Isaacs - Clause 70 is a general pro> vision, which will apply to everything.

Mr CONROY - My objection can be met by a definition of the term " registered proprietor."

Mr Glynn - There is no definition of " proprietor " in the English Act, but he is identifiable from the general definition of trade mark.

Mr CONROY - I have no desire to embarrass the Attorney-General. Will he promise to make a note of' my point, and to deal with it later on?

Mr Isaacs - Yes, we can deal with it when we reach clause 67.

Mr. G.B. EDWARDS (South Sydney). - I think that the difficulty to which' reference has been made could be better met in the interpretation clause The AttorneyGeneral might fairly promise to consider the particular points alluded to by recommitting that clause, with a view to laying down a definition of " registered proprietor." Under this Bill rights are given to registered proprietors to make application to the Registrar to get the registration of a trade mark altered. The term " registered proprietor " may have two meanings. The simplest meaning that could be attached toit would be that of a registered proprietor under this Bill. He would not be the individual who would most probably figure as= an objector to a registration under this measure. I think that the Attorney-General, if" he sees good ground for so doing, should, after we have discussed subsequent clauses, recommit the interpretation clause, with aview to inserting a definition of "registered' proprietor," which would include not only st registered proprietor under this Bill, but also a registered proprietor under a State Act.

Mr Isaacs - I have taken a note of that point.

Mr. LONSDALE(New England). - I think that something should be done to protect the rights of those who have registered under State Acfs. Honorable members will notice that as soon as a person registers under this Bill the registration of his trade mark under a State Act ceases. It seems to me that we should protect existing rights. In the interests of those who have registered under State Acts, it appears to me that an office should be provided in each State, at which they can register under this Bill.

Mr Isaacs - I think there should be only one office for registration;

Clause, as amended, agreed to.

Clause 9 -

(1)   The proprietor of a trade mark in use in any State at the commencement of this Act may make application for the registration of his trade mark under this Act.

(2)   The application shall, subject to paragraphs (3), (4), and (5) of this section, be dealt with in the same manner as other applications for registration of trade marks.

(3)   The trade mark may be registered if it could have been lawfully registered under the State Trade Marks Act in force, at the commencement of this Act, in the State 'in which the trade mark was then used had an application for its registration been made before the commencement of this Act.

(4)   If the trade mark does not contain the essential particulars required by this Act, it' may nevertheless be registered subject to such conditions and limitations as to mode or place, or period of user, as the Registrar, Law Officer, or Court thinks fit to impose.

(5)   Where the trade mark, or a nearly identical trade mark, was, at the commencement of this Act, common to the trade in another State, the registration under this Act shall confer no exclusive rights in that State on the registered proprietor, and that State may be excepted from the registration under this Act.

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