Estex Clothing
Manufacturers Pty Ltd v Ellis & Goldstein Ltd [1967]
HCA 51
HIGH
COURT OF AUSTRALIA
BARWICK CJ, MCTIERNAN, TAYLOR AND OWEN JJ
THE
COURT:
The respondent is a public company which
manufactures in England and sells by wholesale women's dresses, jersey suits
and coats. It is also registered under the provisions of the Trade
Marks Act 1955-1958 Cth as the
proprietor of two trade marks, "Eastex", in
slightly different forms, in respect of garments of this character. The
appellant is a company which was incorporated in New South Wales on 20th June
1958 and it also manufactures articles of women's clothing.
On 31st July 1961 and again on 22nd October 1963,
the appellant applied to this Court for an order that each of the trade marks be removed from the Register on the ground that
in respect of each mark up to one month before the date of each application a
continuous period of not less than three years had elapsed during which the
trade mark was a registered trade mark and during which there was no use in
good faith of the trade mark by the registered proprietor or a registered user
for the time being in relation to the goods in respect of which it was
registered. The applications were made pursuant to s. 23 of the Act. The
learned judge of first instance having dismissed both applications these
appeals are brought from the orders of dismissal.
There is no doubt—and his Honour's findings to that
effect are not contested—that during the periods relevant to each of the
applications the respondent manufactured and sold to Australian retail traders
for re-sale in Australia substantial quantities of garments with
"Eastex" tags and labels sewn on or otherwise attached to the garments.
Equally, there is no doubt that during those periods such garments with such
tags and labels attached were displayed, offered for sale and sold in Australia
by such retail traders. On this evidence his Honour was of the opinion that
during the relevant periods there had been a use in Australia of the trade mark
by the registered proprietor.
However, counsel for the appellant contends that
this view is erroneous. He points out that the sales which it is proved were
made by the respondent to the several Australian retail houses were made in
England, the goods, in each instance, were the subject of an f.o.b. contract
and, presumably, the property in them passed upon shipment in London. That
being so, it is said, there was no act of the respondent in Australia which can
be said to constitute a use by it in Australia of the mark. For this
proposition we were referred to the decision in Badische
Anilin und Soda Fabrik v.
Basle Chemical Works, Bindschedler[1] where it was held that a manufacturer in
Switzerland who sold and delivered in that country to an English trader goods
manufactured according to an invention the subject of English letters patent
had not thereby infringed the rights of the holder of the patent by using or
vending the patent in England. But to apply the reasoning in that case in
solving the problem in the present case would be to misconceive the
significance of the word "use" when it is used in relation to a trade
mark.
By the Act a trade mark means "a mark used or
proposed to be used in relation to goods for the purpose of indicating, or so
as to indicate, a connexion in the course of trade between the goods and a
person who has the right, either as proprietor or as registered user, to use
the mark, whether with or without an indication of the identity of that
person" and "use" in s. 23 must be understood in this context.
Its denotation is not limited by any concept of the physical use of a tangible
object and we have no doubt that when an overseas manufacturer projects into the
course of trade in this country, by means of sales to Australian retail houses,
goods bearing his mark and the goods, bearing his mark, are displayed or
offered for sale or sold in this country, the use of the mark is that of the
manufacturer. Indeed, in this case, the respondent is
the only person who has the right to use the mark and the retailer to whom the
goods have been sold for re-sale does not, in any relevant sense, use it.
It is conceded that there is a use of the mark in
this country by an overseas proprietor where he advertises his mark in this
country. Further, it is conceded that there is a use by such a manufacturer of
his mark where the property in the goods sold by him by wholesale to traders in
this country does not pass until their arrival into Australia. It would, in our
view, be an extraordinary result if the maintenance of the Australian trade
mark of an overseas manufacturer who is projecting goods of his manufacture on
to the Australian market by means of sales to retail houses here can be made to
depend upon whether the property in the goods the subject of such sales passes
on shipment or upon or after their arrival in Australia. We agree with the
learned judge of first instance that it cannot and, therefore, are of the
opinion that the appeals should be dismissed.