Attorney-General (NSW) ex rel Tooth and Company Limited v Brewery Employees' Union of New South Wales [1908] HCA 94

Attorney-General (NSW) ex rel Tooth and Company Limited v Brewery Employees' Union of New South Wales [1908] HCA 94

By majority, Part VII of the Trade Marks Act 1905 (Commonwealth) is beyond the legislative competence of the Commonwealth Parliament under s.51(xviii) as 'workers' trade marks' or the 'union label', as defined in the Act, are not 'trade marks' within the meaning ascribed to that term in 1900 (the time of federation/the Constitution). The registration and enforcement of such workers’ marks does not fit the established indicia of a trade mark as a proprietary right connected to distinguishable goods of a particular trader, but rather amounts to regulation of internal trade—a matter reserved to the States. With necessary implication from sub-s.(i) of s.51 and s.107, power over purely...

Parties
Plaintiffs: Attorney-General for the State of New South Wales at the relation of Tooth and Company Limited and Others; Defendants: Brewery Employés Union of New South Wales, Stephen Hartley Watson (Secretary), and George Townsend (Registrar of Trade Marks for the Commonwealth)
Jurisdiction
Australia
Judgment Date
08 August 1908
Procedural Posture
Declaratory Relief/constitutional Challenge / Final Hearing Before the Full High Court (special Case/point of Law)
Outcome
Plaintiffs succeed. Part VII of the Commonwealth Trade Marks Act 1905 declared invalid; registration cancelled; injunction granted.
Legal Topics
Validity of Commonwealth Legislation, Trade Marks Definition, Powers of Parliament Regarding Trade and Commerce, Workers' Trade Marks/union Label, Federal Vs State Powers
Constitutional Law Intellectual Property Law Validity of Commonwealth Legislation Trade Marks Definition Powers of Parliament Regarding Trade and Commerce Workers' Trade Marks/union Label Federal Vs State Powers

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Parties

Attorney-General for the State of New South Wales at the relation of Tooth and Company Limited and Others

Plaintiffs

Brewery Employés Union of New South Wales, Stephen Hartley Watson (Secretary), and George Townsend (Registrar of Trade Marks for the Commonwealth)

Defendants

Procedural Posture

Declaratory Relief/constitutional Challenge / Final Hearing Before the Full High Court (special Case/point of Law)

Legal Issues

  1. 1 Is Part VII of the Trade Marks Act 1905 (Commonwealth)—concerning workers' trade marks/union labels—within the legislative power of the Commonwealth Parliament under s.51(xviii) of the Constitution?
  2. 2 Does the registration of a workers' trade mark by a union validly confer enforceable rights as a trade mark under the Constitution?
  3. 3 Are the plaintiff companies/persons aggrieved and does the Attorney-General for a State have standing?

Ratio Decidendi

By majority, Part VII of the Trade Marks Act 1905 (Commonwealth) is beyond the legislative competence of the Commonwealth Parliament under s.51(xviii) as 'workers' trade marks' or the 'union label', as defined in the Act, are not 'trade marks' within the meaning ascribed to that term in 1900 (the time of federation/the Constitution). The registration and enforcement of such workers’ marks does not fit the established indicia of a trade mark as a proprietary right connected to distinguishable goods of a particular trader, but rather amounts to regulation of internal trade—a matter reserved to the States. With necessary implication from sub-s.(i) of s.51 and s.107, power over purely...

Court Disposition

Plaintiffs succeed. Part VII of the Commonwealth Trade Marks Act 1905 declared invalid; registration cancelled; injunction granted.

Orders

  • Declaration that the defendant Registrar has no authority to keep a register of workers’ trade marks.
  • Declaration that the defendant union’s mark is not a trade mark within the meaning of the Constitution.