Case: Challender v Royle (1987) 4 RPC 363
Outcome: followed
The elements of s 129(1) are made out. The only issue arises under sub-s (4). Paragraph (a) of sub-s (4) requires the trade mark in question to be registered, however it is silent as to whether the registration must be a valid registration or whether an invalid registration will suffice. This issue was considered by the Court of Appeal in Challender v Royle (1887) 4 RPC 363. That case concerned the Patents, Designs, and Trade Marks Act 1883 (UK), s 32 of which has become s 129 of the present Act. Section 32 provided as follows: "Where any person claiming to be the patentee of an invention, by circulars advertisements or otherwise threatens any other person with any legal proceedings or liability in respect of any alleged manufacture use sale or purchase of the invention, any person or persons aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damages (if any) as may have been sustained thereby, if the alleged manufacture, use, sale, or purchase to which the threats related was not in fact an infringement of any legal rights of the person making such threats: Provided that this section shall not apply if the person making such threats with due diligence commences and prosecutes an action for infringement of his patent." 166 The question in that case was whether the defendant, in the course of defending the claim that he had made a threat to which s 32 applied, was entitled to attack the validity of the plaintiff's patent. Cotton LJ said, at 371, that: "the Court must be satisfied 'that the act complained of is not in fact an infringement of any legal right of the person making such threats' ... the question whether the patent of the person making the threats is a valid patent must come into consideration if the plaintiff in the action seeks it, because I cannot see how, if a patent is invalid, there can be any act done in infringement of a legal right when the legal right depends only on the validity of that patent." 167 The issue arose again in Pittevil &amp; Co v Brackelsberg Melting Processes Ltd (1931) 49 RPC 23. At this time the relevant act was the Patents and Designs Act 1907 1919 (UK), s 36 of which had been s 32 of the 1907 Act. The only relevant amendment to that section was that the words "any legal rights of the person making such threats" had been replaced by "the patent". It was argued that Challender v Royle did not apply since the term "patent" encompassed both inventions and alleged inventions. Thus, it was argued, the section applied even if the patent was invalid and so the validity of a patent could not be challenged in a threats case. The Court of Appeal did not accept this argument, holding that amendments otherwise having the effect of broadening the scope of the section should not be read as cutting down a right established by judicial authority, particularly since the amendment was contained only in the schedule to the amending act. Challender v Royle was therefore applied. 169 No cases have considered whether what had been said in Challender and Pittevil applied to the 1955 Act. However the first edition of D R Shanahan, Australian Trade Mark Law and Practice (1982) at 383 cited Pittevil , and concluded that "it is necessary that the registration be valid and it appears to be open to the plaintiff to plead the invalidity of the registration without actually seeking revocation". The present Act continued, in sub-s (4), the highlighted requirements of s 124 of the 1955 Act cited above. 170 The position established by Challender v Royle , that a defendant in a threat case may argue invalidity of the registration, is supported by sound policy considerations, as the passage from Cotton LJ cited at [166] demonstrates. It seems unlikely that subsequent re-workings of the original legislative provision, which have expanded and clarified the right to bring a proceeding where a threat is made, would have displaced what was said in Challender v Royle without clear words. Both the report of the Attorney-General's committee into the 1955 Act ("Report of the Committee Appointed by the Attorney-General of the Commonwealth to Consider what Alterations are Desirable in the Trade Marks Law of the Commonwealth (1954)" and the Explanatory Memorandum for the current Act are silent on the question. On their face, the meaning of the words in s 129(4)(a) - "the trade mark is registered" - is clear. However, when the history of the threat provision is examined, there is no basis for saying that any version of the trade mark legislation has changed the position set out in Challender v Royle and Pittevil . Further, the words in the emphasis in [168] "the acts ... constitute ... an infringement of the trade mark" seem to pick up the concept in the passage from Cotton LJ's reasons set out at [166]. In those circumstances the words should be understood as meaning "the trade mark is validly registered". It follows that the applicants have failed to make out par (a) of sub-s (4), since the trade mark is invalid.