89.
The plaintiffs accepted that the right to use a registered trade mark did not carry with it any immunity in relation to other legal obligations such as those in respect of passing off[1] or copyright infringement or consumer protection.
The Commonwealth admitted that the property which the plaintiffs claimed under the Trade Marks Act (and other intellectual property legislation) was property for the purposes of s 51(xxxi). A sound basis for those admissions can be found in the authorities[2].
However, in referring to the scope of s 21 of the Trade Marks Act, the Commonwealth (supported by Queensland, intervening) advanced a proposition that the imposition of new restrictions on registered owners of trade marks under the Packaging Act takes nothing from the rights and interests granted to a registered owner under the Trade Marks Act, and that therefore no property is taken for the purposes of s 51(xxxi). This led senior counsel for the plaintiffs in the BAT proceedings to describe the Commonwealth's admission in relation to the Trade Marks Act as illusory. It is convenient to say something briefly about the rights and interests of an owner of a registered trade mark.
It was recognised by Windeyer J in Colbeam Palmer[3] that the negative right of a registered owner of a trade mark to restrain infringement had its origin in the equitable jurisdiction to protect a form of property in a trade mark gained by use and reputation, a jurisdiction which was exercised before trade marks were recognised by statute. In every reiteration of trade marks legislation in Australia, it has been provided, in substance, that any equities in respect of a trade mark may be enforced in the same way as equities in respect of other
- ↑ See New South Wales Dairy Corporation v Murray Goulburn Co-Operative Co Ltd (1990) 171 CLR 363 at 396–397 per Deane J; [1990] HCA 60.
- ↑ Colbeam Palmer Ltd v Stock Affiliates Pty Ltd ("Colbeam Palmer") (1968) 122 CLR 25 at 34 per Windeyer J; [1968] HCA 50; Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 at 68 [48]. See also Pacific Film Laboratories Pty Ltd v Federal Commissioner of Taxation (1970) 121 CLR 154 at 165–166, 169 per Windeyer J; [1970] HCA 36; Australian Tape Manufacturers Association Ltd v The Commonwealth (1993) 176 CLR 480 at 527 per Dawson and Toohey JJ; Burge v Swarbrick (2007) 232 CLR 336 at 344 [15]; [2007] HCA 17; Phonographic Performance Co of Australia Ltd v The Commonwealth (2012) 86 ALJR 335 at 352 [109] per Crennan and Kiefel JJ; 286 ALR 61 at 83–84; [2012] HCA 8.
- ↑ (1968) 122 CLR 25 at 33–34.
