Case: Currie v Dempsey [1967] 69 SR NSW 116
Outcome: cited
The right to obtain relief for infringement seems to me to be necessarily bound up with the grant of exclusive rights conferred by s 20(1). Since the grant of those exclusive rights is expressly subject to s 25 of the Act which, if satisfied, meets head on the exclusive rights conferred by s 20(1), it seems to me that proof of the subsistence of the exclusive rights is an essential element of the cause of action. In other words, the allegation made by the respondent is a denial of an essential ingredient in a cause of action and once raised and an evidential onus discharged, the persuasive onus falls upon the applicant. The structure of ss 20(1), 25 and 120(1) seem to fall within the general rule Walsh JA had in mind in Currie v Dempsey [1967] 69 SR NSW 116 at 125; [1967] 2 NSWR 532 when his Honour said: But, if recourse is had to the rules of pleading, the fixing of the burden of proof is not always to be tested simply by asking which party is alleging the affirmative. In Purkess v Crittenden it was said that the proposition there quoted from Phipson on evidence, 10 th Ed, par. 92, has been frequently acknowledged. The proposition was that the expression 'the burden of proof' as applied to judicial proceedings, 'has two distinct and frequently confused meanings: (1) the burden of proof as a matter of law and pleading the burden, as it has been called, of establishing a case, whether by preponderance of evidence, or beyond reasonable doubt; and (2) the burden of proof in the sense of introducing evidence'. The author went on to say, and this was also approved in the case last cited, that the burden of proof in the first sense is always stable, but the burden of proof in the second sense may shift constantly. In my opinion, the burden of proof in the first sense lies on a plaintiff, if the fact alleged (whether affirmative or negative in form) is an essential element in his cause of action, e.g., if its existence is a condition precedent to his right to maintain the action. The onus is on the defendant, if the allegation is not a denial of an essential ingredient in the cause of action, but is one which, if established, will constitute a good defence, that is, an 'avoidance' of the claim which, prima facie, the plaintiff has. 113 The respondent seeks to avoid the plaintiff's claim by demonstrating that s 25 applies with the result that the applicant does not have any exclusive rights. Whilst it is, of course, true that the respondent seeks to avoid the plaintiff's claim in that way, the matters raised by the respondent having regard to s 20 and s 25 are properly characterised as a denial of an essential ingredient in the cause of action. Although s 120(1) does not speak in terms of the exclusive rights of the registered owner of the trade mark, the right to obtain relief is predicated upon and is conferred in support of the exclusive rights of the registered owner. If the registered owner, by operation of s 25, does not have any exclusive rights, it would be an odd notion that the registered owner could seek and obtain relief in respect of the use by a respondent of a substantially identical trade mark. Accordingly, it seems to me that once the respondent puts the elements of s 25 in issue and adduces evidence of those matters, the persuasive onus falls upon the applicant. 114 In any event, in this matter the parties agree that the disposition of the controversy does not in any sense turn upon the discharge of the burden of proof wherever it lies. There is an abundance of evidence going to the question in controversy and the findings I have made are supported by a clear body of evidence.