Case: Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1966] HCA 81 ; (1967) 116 CLR 254
Outcome: considered
Counsel referred to several authorities in relation to the meaning of 'use'. The term was considered by the High Court in Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1966] HCA 81 ; (1967) 116 CLR 254, where the respondent was an English manufacturer which sold its products to Australian retail traders for re-sale in Australia. In affirming the judgment of Windeyer J, the Full Court observed at 271 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 .' (Emphasis added.) Put another way, where an overseas company has registered a trade mark in Australia for products it exports to the Australian market, then it is that company, when and if it distributes the goods into Australia, which can be said to have 'used' its trade mark. 43 In R &amp; A Bailey &amp; Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701, Young J considered the authorities on this point, including Champagne Heidsieck et Cie Monopole Societe Anonyme v Buxton [1930] 1 Ch 330. In Bailey 4 NSWLR at 709-710, Young J concluded that the right to exclusive use of a trade mark in Australia only operates to prevent the sale of goods in Australia " which are not the proprietor's but which are marked with the proprietor's mark ". A similar statement was made by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56 ; (1977) 137 CLR 670 at 688 where, after referring to Estex [1966] HCA 81 ; 116 CLR 254, his Honour said: 'It was not necessary in that case to consider whether the retailer also used the mark because the only relevant question was whether the registered proprietor himself had used the mark in Australia. There is no doubt that if the retailer had on the same basis imported goods other than those of the registered proprietor but bearing its mark , he would have used the mark by infringing it.' (Emphasis added.) 44 In addition to the above, two other decisions of the Full Court of this Court are said to be relevant. The first is Transport Tyre Sales Pty Ltd v Montana Tyres Rims and Tubes Pty Ltd [1999] FCA 329 ; (1999) 93 FCR 421, where the Full Court confined the operation of Estex [1966] HCA 81 ; 116 CLR 254 " to the circumstances of that case ", and went on to hold at 440 that there had been 'use' of the trade mark by the retailer in Australia for the purposes of s 120 of the Act , but that it was excused by s 123. In Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721 ; (1999) 96 FCR 107, the Full Court observed at 119 that a trade mark is infringed if it is shown that the alleged infringer has used the trade mark in such a way as to indicate that it is the source or origin of the goods. 47 The authorities discussed above are different from the present case because here the foreign manufacturer manufactured the products, sold them without any branding and took steps to dissociate itself as the originator of the products. Brother did not in any way project or authorise the sale or distribution of the OEM products into the Australian market. Brother later became aware that, contrary to its policy, the product was retailed in Australia by Dynamic Supplies as a Brother-branded product in counterfeit packaging which prominently displayed the Brother name and trade mark. Authorities such as Estex [1966] HCA 81 ; 116 CLR 254 and Bailey 4 NSWLR 701 lay down principles in relation to their own peculiar facts and so the observations they make are not applicable to the facts of this case. The broad propositions noted above were made in quite a different commercial context.