Crennan J
90.
personal property[1]. In the earlier iterations this provision was coupled with a provision concerning a registered owner's right to assign a trade mark[2].
There is no such thing as a trade mark in gross. At common law a trade mark could not be assigned except with the goodwill of the business in respect of which it was used, because it was feared that to do otherwise would engender deception and confusion[3]. The Trade Marks Act 1905 (Cth) adopted the same restriction in respect of registered trade marks[4]. At that time, and subsequently, it was further thought that the licensing of a trade mark would inevitably invalidate the registration of a trade mark for the reason that licensing would cause deception and confusion[5]. Accordingly, there was no analogue in the Trade Marks Act 1905 to the authorised user provisions in the Trade Marks Act.
Following legislation in the United Kingdom[6], both of these restrictions were relaxed under the Trade Marks Act 1948 (Cth), which relaxation continued under the Trade Marks Act 1955 (Cth). The changes fundamentally affected the nature of a trade mark, which was previously thought inseparable from the business of origin and associated goodwill. Once the changes were made, the value of a trade mark included its power to attract consideration for an assignment without goodwill and, more importantly for present purposes, its power to attract royalties.
Use of a trade mark is authorised only to the extent that the use is "under the control of the owner"[7]. Insufficient control by a licensor over the use of a trade mark might expose the registered owner to rectification or removal proceedings[8], for which reason a licensor will usually impose conditions as to
- ↑ Trade Marks Act 1905 (Cth), s 49(3); Trade Marks Act 1955 (Cth), s 57(2); Trade Marks Act, s 21(2).
- ↑ Trade Marks Act 1905, s 49(1); Trade Marks Act 1955, s 57(1).
- ↑ Mansell v Valley Printing Co [1908] 2 Ch 441 at 448 per Farwell LJ; cf Pinto v Badman (1891) 8 RPC 181. See also Henry Clay & Bock & Co Ltd v Eddy (1915) 19 CLR 641 at 655 per Isaacs J; [1915] HCA 33.
- ↑ Trade Marks Act 1905, s 58.
- ↑ Bowden Wire Ltd v Bowden Brake Co Ltd (1914) 31 RPC 385 at 392 per Earl Loreburn.
- ↑ Trade Marks (Amendment) Act 1937 (UK); Trade Marks Act 1938 (UK).
- ↑ Trade Marks Act, s 8(2).
- ↑ See Trade Marks Act, Pt 8.
