Opinion Number. 362



Key Legislation

TRADE MARKS ACT 1905, ss. 32, 33, 43, 44, 45. 47

The Minister for Trade and Customs

The Minister for Trade and Customs:

With reference to the opinion of the Crown Solicitor of 15 July 1907 and of the Secretary, Attorney-General's Department, 6 October 1909(1), the Minister for Customs forwards the file with the following memo:

Mr Hack has been informed that I do not consider it advisable to interfere in cases where an officer has discretionary powers given to him by law, as his remedy is provided for in the Act, but he contends that he could not appeal to the Court without technically admitting a 'refusal' of his application, and his contention is that as the Registrar's action was ultra vires (in his opinion) there could be no refusal as contemplated by the Act.

I am inclined to think there is some force in his contention, and would feel obliged if the Attorney-General would peruse the attached file, and favour us with his views thereon, especially as regards the extent to which the Minister can intervene in such cases.

In my opinion, it would be inexpedient, if not irregular, for the Minister to interfere with the discretion or responsibility of the Registrar under the Act.

Even the superintendence and direction of the Board of Trade (under English Acts) did not extend to interference with the personal responsibility of the Comptroller in individual cases, except when the matter came before the Board, in due course of appeal (Kerly, II, Law of Trade-Marks, Trade-Name, and Merchandise Marks, p. 75). The Trade Marks Act provides for appeals and there is the independent remedy of mandamus which seems open to the successful applicant under sections 32 and 33 if registration under section 47 be refused. The Court would not necessarily compel the Registrar to register, as mandamus is in the discretion of the Court, and the application for the writ may be refused if, on the facts then established, the Registrar would not have been justified (section 33 (3)) in accepting the application without modification or conditions.

The Registrar's discretion to accept or refuse is judicial. The application, therefore,ought to be granted, 'unless for some of the reasons contemplated by the Statute there is an objection to the registration' (per Lord Halsbury, the Fruit Salt Casei2); Kerly, p. 72). But if granted in error, in a case not contemplated, the Court may refuse the prerogative writ. Only in cases of manifest error should registration under section 47 be denied to a successful applicant. It is, of course, in general inexpedient to take notice of oppositions (to registration) not in accordance with the Act. But, as suggested, intervention of the Minister is inexpedient, in cases of complaint as to the way in which the Registrar's powers or duties are exercised or discharged. Personal conduct, or refusal to exercise his office, might call for ministerial interference, but neither seems to be in question here.

[Vol. 7, p. 289]

(1) Opinion No. 350.

(2) Eno v. Dunn 15 App. Cas. 252.