Moorgate Tobacco Co Ltd v Philip Morris Ltd [1980] HCA 32

High Court of Australia Barwick C.J. Gibbs, Stephen, Mason, Murphy, Aickin and Wilson JJ. Moorgate Tobacco Co Ltd v Philip Morris Ltd [1980] HCA 32

ORDER The application for conditional leave to appeal to Her Majesty in Council is dismissed with costs including reserved costs.

Cur. adv. vult.

The following judgments were delivered:—

Sept. 2 Barwick C.J.

Moorgate Tobacco Co. Ltd. (the applicant) sued Philip Morris Ltd. and another (the respondents) in the Supreme Court of New South Wales, seeking a declaration that it is the proprietor of certain trade names as used in relation to cigarettes and that the respondent is not the proprietor of a certain trade mark. The applicant was unsuccessful in its suit which was dismissed by the Supreme Court (Helsham C.J. in Eq.). It applied to that Court for conditional leave to appeal to Her Majesty in Council. If the case were one which the Privy Council could properly entertain by way of appeal, the application for conditional leave would have to be granted, bearing in mind the terms of the Order in Council of 2nd April 1909.

However, the application for conditional leave was removed into this Court pursuant to s. 40 of the Judiciary Act 1903, as amended. This was done because it was asserted by the respondents that the Supreme Court in hearing and deciding the suit between the parties had been exercising federal jurisdiction vested in it by s. 39 of the Judiciary Act. If the respondents are correct in this contention, then the Privy Council is not competent to entertain the applicant's appeal.

The question for this Court therefore is whether in entertaining and deciding the suit the Supreme Court was exercising invested federal jurisdiction.

I have earlier expressed the view in Felton v. Mulligan [1] that although federal jurisdiction may initially be invoked there may exist in the long run in the litigation an independent and disparate cause of action of a non-federal kind. I confess to thinking that it must rarely be so but that it may be so must be conceded. It is worth recalling that the Privy Council, when deciding that it was denied jurisdiction in The Commonwealth v. Bank of New South Wales [2] , by reason of the presence of s. 74 in the Constitution, evidently thought that though an inter se question may have emerged at some stage of the litigation, if in the long run the claim or submission giving rise to such a question were abandoned, room was left for a non-inter se question to be kept alive between the parties. The final determination of that question so remaining in the case was contemplated as being within the competence of the Privy Council.