606 HIGH COURT {HIGH COURT OF AUSTRALIA.} INNES . Crees i : : : . . APPELTAR APPLICANT, AND THE LINCOLN MOTOR COMPANY . - . Responpe OPPONENT, ON APPEAL FROM THE SUPREME COURT OF VICTORIA, H.C. or A, [rade Mark —Registration—Imposition of condition—Disclaimer of right to exc ee use of added matter—Discretion of Registrar and of Court—Bviden Marks Act 1905-1912 (No. 20 of 1905—No. 19 of 1912), secs. 4, 16 (1) (e), MELBOURNE, 'The appellant applied for the registration of a trade mark consisting of « design of which the word " Lincoln" was a most prominent feature, and th application was opposed. Nearly three years after the application was m: Baie, ' the Deputy Registrar decided that the mark should he registered, holding and Starke JJ. to a large section of the public the word '' Lincoln " in fact denoted the go of the appellant in the market. On appeal by the opponent, the Su Court of Victoria decided that the mark should be registered provided th applicant disclaimed any right to the exclusive use of the word " On appeal to the High Court, Held, that, as there was no evidence to justify a finding that the "Lincoln" in fact denoted the goods of the appellant in the market, was no reason for interfering with the exercise of the discretion given Supreme Court by sec. 24 of the Trade Marks Act 1905-1912 to impo condition as to disclaimer. Querre, whether evidence of user after the date of the application was adi sible to prove a right to exclusive use. Decision of the Supreme Court of Victoria (Irvine C.J.): In re Innes's Tra Mark, (1923) V.L.R., 359; 44 A.L.T., 174, affirmed. a 2 0.L.R.] OF AUSTRALIA, EAL from the Supreme Court of Victoria. On 17th September 1919 Charles Innes, who traded as the Lincoln otor Car Co., applied for the registration of a trade mark in respect motor-cars and motor-car chassis. An illustration of the mark ppears in a previous volume of the Commonwealth Law ports (1). In his application the applicant stated: "I do not im the registration of this trade mark under the special provisions of sec. 16 (1) (e) of the Trade Marks Act 1905-1912, in regard to names, signatures or words." The application was pposed by the Lincoln Motor Co. On 4th August 1922 the uty Registrar gave his decision dismissing the opposition and ing the application. From that decision the applicant appealed o the Supreme Court of Victoria. The appeal was heard by Irvine .J., who made an order that the trade mark should be entered pon the register 'only provided the . . . applicant disclaims ." otherwise the application should be dismissed : Jn re Innes's Trade Mark From that decision the applicant now, by special leave, appealed othe High Court. 'The other material facts appear in the judgments hereunder. en Divon K.C. (with him Robert Menzies), for the appellant. The appellant has a common law right to proceed against anyone vho uses the word " Lincoln" for passing-off purposes. He has also the right to apply for registration of the word " Lincoln " under 16 (1) (e) of the Lrade Marks Act 1905-1912 ; but the order in present form prevents him from doing so, for it involves a dis- mer of the whole right to the exclusive user of the word. Good on should be shown for imposing a disclaimer (In re Albert Baker £ Co.'s Application for a Trade Mark (3)). The Registrar having xercised his discretion under sec. 24, the Court should not interfere hout paying great attention to his decision. It is inexpedient: ) place on the register unnecessary disclaimers (In re Cadbury ers' Application (4) ). The position of the High Court is the l) (1921) 29 C.LR., 277, at p. 278. (3) (1908) 2 Ch., 86. (2) (1923) V.L.R., 359; 44 A.L,T.,174. (4) (1915) 2 Ch., 307. bynes v LixcoLy Moror Co. H.C. or A. 1923. ~~ INNES v. Lincoin Moror Co. Nov. 8. HIGH COURT same as that of the Supreme Court with regard to the exer is jurisdiction by the Registrar. [Counsel also referred to Rose Reynolds (1); In re Diamond T Motor Car Co.'s Trade Ma Kerly on Trade Marks, 5th ed., p. 246.] Latham K.C. (with him Dean), for the respondent the oppon The applicant is attempting to get the benefit of sec. 16 (1) (e) of Trade Marks Act without taking the burden of it (see Trade M Regulations 1913, vegs. 22, 41). The mark in this case is word mark and not a device mark. There is no evidence that { particular mark in respect of which the application was made ] ever been used. In considering whether there should be a condi of disclaimer the Court should take into consideration the facts tl a surname is the prominent feature of the mark, that the surna is such as to be likely to be used by other traders in the ordin course of business in connection with their own goods and w any improper motive, and that in the particular case the publi likely to be misled. The power to order disclaimer is wide enou to include cases where there is no finding adverse to the applica exclusive right (Kerly on Trade Marks, 5th ed., p. 253). [Couns also referred to Innes v. Lincoln Motor Co. (3); In re Albert Baker Co.s Application for a Trade Mark (4); In re Cadbury Broth Application (5); In re H. G. Burford & Co.'s Application (6); In Diamond T Motor Car Co.'s Trade Mark (7); Re Benz et C Application for a Trade Mark (8).| E Ian Macfarlan, for the Registrar of Trade Marks. Unless claimer is absolutely necessary it should be kept off the regi Robert Menzies, in reply. Cur. adv. The following written judgments were delivered :— trar of Trade Marks to register a trade mark, but adding a conditi (1) (1892) 2 Ch., 301. (5) (1915) 2 ee at p. 311. (2) (1921) 28. (3) (1921) 29 © (4) (1908) 2 Ch. (7) (1921) 2 (8) (1913) 30 LR.) OF AUSTRALIA. the applicant make a certain disclaimer—" only provided the bove-named applicant disclaims any right to the exclusive use of he word 'Lincoln'." The applicant appeals from the imposition this condition, and asks that the decision of the Deputy Registrar favour of registration simpliciter be restored. The matter comes before us under special leave to appeal granted nder sec. 35 (1) of the Judiciary Act. Our right to hear the appeal on sec. 73 of the Constitution; and where the order of the eme Court has been made in pursuance of a discretion granted ) it, we have no right to allow the appeal and reverse the order on e mere ground that if the discretion had been granted to us we hould have exercised it differently. We are a Court of appeal s to law, not as to discretion. Now, the power to order disclaimer has been granted by sec. 24 f the Prade Marks Act 1905-1912 :—* (1) If a trade mark (a) con- Ss parts not separately registered by the proprietor as trade , or (b) contains matter common to the trade or otherwise of a listinctive character. the Registrar or the Law Officer or the , in deciding whether the trade mark shall be entered pon the register, may in his or its discretion require, as a condition f its being upon the register, that the proprietor shall disclaim any ight to the exclusive use of any of those parts, or of that matter, shall make such other disclaimer as they think needful for the se of defining his rights under the registration. Provided ys that no such disclaimer shall affect any rights of the proprietor e section is substantially copied from sec. 15 of the British Act of 1905, but the British Act did not contain the words " in his or its discretion," or, until 1919, their equivalent. By the British Act of 1919 (c. 79, sec. 8) it was provided that "In any appeal from the m of the Registrar to the Court . . . the Court shall we and exercise the same discretionary powers as under the pal Act or this Act are conferred upon the Registrar." So take it that both in Australia and in Britain the Court— vhether the High Court of Australia or the Supreme Court of Vie- a (sec. 4)---acting as a Court of first instance, has conferred on it H. C. op A. 1923. Lixcon Motor Co. Higgins J. H.C. of A. 1923. INNES Lrxcon Motor Co. Higgins J. HIGH COURT a right of original and independent discretion, notwithstanding | the Registrar has already exercised his discretion. There is, th Judge of the Supreme Court was "wrong in... overr the exercise of the discretion of the Registrar." But our posit as a Full Court sitting as an appeal Court under the Constitutic very different. We must not interfere with the discretion 7 Supreme Court in its exercise of this Federal jurisdiction und Trade Marks Act, unless the Supreme Court has " manifestl ceeded on a wrong ground" or * manifestly erroneous princi p (Crowther v. Elgood (1)). Tn the case of costs which are dis ary, the decision of the primary Court will not be reviewed misapprehensio facts" (Alexander Ferguson & Co. v. Daniel Crawford & Co. (: It is not contended by the appellant that the order of the Sup Court was made without jurisdiction to make it, but that it was wrongly. é The facts are, briefly, that in June 1918 Mr. Innes in Austr manufactured his first car, and on 17th September 1919 made application for the registration of this mark in respect of mot cars and cha: there was a "disregard of principle" or a It contains a five-barred figure in grey-blue, an oblong figure in red superimposed containing the word " Li sec. 16 (1) (e) of the Trade Marks Act 1905-1912 in regard to name signatures or words "—no doubt because such a claim for a na word would necessitate a special order (sec. 16 (1) (e) ). His ela for the mark as a whole, not for the word " Lincoln," or word " Australia"; it is made, without limitation of colour, therefore, if registered, the mark is to be deemed to be registei all colours (sec. 21). Even without the colours, I concur with Chief Justice of Victoria in his view that the mark as a whole is tinctive within the meaning of sec. 16—it is " adapted to disting the goods of the proprietor of the trade mark from those of 0 (1) (1887) 34 Ch. D., 691, at p. 697. (2) (1910) 10 C.L.R., 207. is C.L.R.] OF AUSTRALIA. ms." If the mark be registered, there can be no trade mark regi identical with it (in respect of the same kind of goods) or so early resembling it as to be likely to deceive (sec. 25); and under in the mark ; egistration has the effect, in itself, of preventing them from using the word "Lincoln" will not injure Innes in the exercise of his legitimate out ensemble, an "altogether"; but he has no exclusive right to the word "Lincoln." It may be that if there were no disclaimer that exclusive right, the legal result would be the same ; but the laimer is, as I understand. ordered for greater caution. Under former system, before 1905, the applicant had to state, as in in itself distinctive. In effect, the Chief Justice has said to the applicant—'t You say that you do not claim an exclusive right to ename 'Lincoln'; very well, in ordering the registration of your ark, as it makes the word ' Lincoln' so very prominent, it ought to be made clear that you do not claim the name." The Registrar id not order the disclaimer, because he found that "to a large ion of the public the word ' Lincoln' in fact denotes the goods of is finding ; and the Chief Justice does not express himself as agree- with it. The Registrar, in his reasons for his decision (4th August 1922) relies on four years' user by the applicant. A trade mark, if registered, is registered as on the date of the lodging of the application, 17th September 1919 (sec. 47); and it is hard to see how title can be acquired on that date by virtue of user after that Lixcouw Moor Co. Higgins J. Lixcoin Moror Co. Higgins J. - date. But even if the subsequent user can be regarded, there HIGH COURT iit in my opinion, no evidence to justify the finding that the "Lincoln " in fact denotes the goods of the applicant in the mark In my opinion, the conclusion to which the Chief Justice came i amply supported by the reasoning in the most recent case to whi he refers—In re Diamond T Motor Car Co.'s Trade Mark (| coln" in capital letters inside a diamond across the face of the sta and the word " Australia " in smaller letters in an oval below the the word "* Lincoln" is a most conspicuous feature of the device The Deputy Registrar of Trade Marks decided to register the mar! without requiring any disclaimer, but upon appeal to the Suprei Court of the State of Victoria (Irvine C.J.) the decision of the Dep Registrar was varied, and the appellant was required to discla any right to the exclusive use of the word " Lincoln." From judgment of Irvine C.J. an appeal has been brought by special lea to this Court. It has not been argued before us, as it was below, that the dev as a whole is not a distinctive mark within the provisions of th Trade Marks Act, and all we have to consider is whether the o1 requiring the appellant to disclaim the right to the exclusive the word " Lincoln" was a proper order in the circumstances of case, The Deputy Registrar found that the word " Lincoln " denote to a large section of the public, the goods of the appellant in th (1) (1921) 2 Ch., 583. (2) (1921) 29 C.L.R., at p. 278. C.L.R.] OF AUSTRALIA. 613 market, and he finally said that the evidence established the dis- H. ¢ tinctiveness of the name as denoting motor-cars of the appellant's manufacture or selection in the Australian market. The learned Chief Justice did not specifically deal with these findings, but in our opinion they are quite untenable. The word "Lincoln" is ordin- arily used as a geographical name or a surname, though it might a acquire in trade a secondary and distinctive meaning, as referring to a particular manufacturer. But the burden of proving that it has acquired such a meaning is " extremely difficult to discharge ' (see Cellular Clothing Co. v. Maxton & Murray (1); 8. Chivers & Sons -y. S. Chivers & Co. (2) ), and the evidence in the present case fails to satisfy us that the appellant had any right to the exclusive use of the word " Lincoln," and indeed convinces us that he had not. He first used the word in the year 1918, and in Jume of that year he manufactured a motor-car bearing the name " Lincoln," which was exhibited in Sydney in October 1918. In an affidavit sworn in March 1922, the appellant says that his business has gradually improved, and that by that date he had manufactured and disposed of over 160 motor-cars bearing this name. He also states that he dvertised his business "freely and continuously in daily news- apers, trade journals, and elsewhere in Australia since the beginning 1918." Assuming (without deciding the point) that the appellant an call in aid the development of his business since the date of his cation for registration, we think that the affidavits on which he relies are insufficient for his purpose. They are very general in their statements, and strangely lacking in details, as to the business _ transacted in the several States of Australia, and do not, in our opinion, establish any secondary or distinctive use of the word _ " Lincoln," or show that in Australia it has come to refer exclusively to the goods of the appellant. Now the Trade Marks Act 1905-1912, sec. 24, enables the Court, _ inits discretion, to require a disclaimer of any right to the exclusive use of any matter of a non-distinctive character, if it holds that _ the proprietor or applicant for the registration of a mark is not "entitled to the exclusive use of that matter. Irvine C.J. exercised (1) (1899) A.C., 326, at p, 343. (2) (1900) 17 R.P.C., 420. 614 HIGH COURT (Ig H.C. or A. this discretion against the appellant, and required a dise 1923. and, in the circumstances of the case, we see no reason for interferi with his decision. The appeal ought to be dismissed. v. Lixcotn Moror Co. Appeal dismissed with co ty Bourke. Solicitor for the respondent, F. B. Waters. 3 Solicitor for the Registrar of Trade Marks, Gordon H. Cas Crown Solicitor for the Commonwealth.