Page:JT International SA v Commonwealth of Australia.pdf/79

Heydon J

good faith for value (s 22(3)). Each trade mark owner could authorise others to use its mark (s 26).

Each proprietor which owned copyright had property rights. Copyright is personal property, transmissible by assignment, by will and by devolution by operation of law (Copyright Act 1968 (Cth), s 196). Copyright is the exclusive right to carry out various acts in relation to works (s 31).

The proprietor which owned a registered design had property rights. Its rights in the registered design were exclusive (Designs Act 2003 (Cth), s 10(1)). The rights were personal property, capable of assignment and of devolution by will or by operation of law (ss 10(2) and 11).

Each proprietor which owned patents had property rights – exclusive rights to exploit the invention and to authorise others to do so (Patents Act 1990 (Cth), s 13(1)). These rights were personal property, capable of assignment and devolution by law (s 13(2)).

All these property rights could be employed by the proprietors on their cigarette packets – not on all the external surfaces, because there already existed legislation requiring that part of the surfaces be used for health warnings, but on some areas of them. Some of these property rights could be employed on the surfaces of the cigarette themselves. And the proprietors were at liberty to develop, and did develop, common law rights in marks and get-up in relation to those areas. Those rights were in certain circumstances assignable. They could be utilised on the cigarette packets and the cigarettes.

For those reasons, the proprietors had property within the meaning of s 51(xxxi) – which protects "property" in its broadest sense.

The Commonwealth submitted that the intellectual property legislation gave no positive rights to use, only a right to exclude others. The relevant legislation is not expressed in that way. For example, s 20(1)(a) of the Trade Marks Act provides that the registered owner of a trade mark has rights "to use the trade mark". And a right to exclude others from use is not of value unless the owner of the right can engage in use.

The Commonwealth submitted that the proprietors' rights were not "property" which could be acquired for s 51(xxxi) purposes because they were inherently susceptible to modification or extinguishment – at least in the interests of (local) public health. To this there are four short answers. First, the Commonwealth admitted in its defences that the trade marks, registered design