3D Geoshapes Australia P/L v Registrar of Designs

[1994] FCA 1037

3D GEOSHAPES AUSTRALIA PTY LTD v. REGISTRAR OF DESIGNS AND ANOR
No. VG362 of 1994
FED No. 1037/94
Number of pages - 5
Copyright and Designs
(1995) AIPC 91-125

(1994) 30 IPR 474

COURT

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
NORTHROP J

CATCHWORDS

- Appeal from the Registrar of Designs refusing to
grant an extention of term - whether informant should be added as a party to the appeal in circumstances where a costs order had been made in his favour

Designs Act 1906 s27A, s42A
Federal Court Rules O 54B r3

HEARING

MELBOURNE
#DATE 14:11:1994

Counsel for the Applicant: Mr B.J. Hess

Solicitor for the Applicant: Alfred Tatlock

Counsel for the Respondent: Mr A. Santospirito

Solicitor for the Respondent: Australian Government Solicitor

JUDGE1

NORTHROP J This is the first directions hearing in an application brought by the applicant under subsection 27A(11) of the Designs Act 1906. The application names the respondent, the only respondent, as the Registrar of Designs, being the person who, by a Delegate, refused to grant an extension of time for the registration of a design. At the directions hearing, questions arose as to who were the proper parties to the appeal, what directions should be given at this stage, whether the normal directions as to the filing of affidavits and other interlocutory steps should be given, whether another person should be added as a respondent and several other matters. The Court, of its own motion, directed the parties to make submissions as to the formalities of the parties and submissions have been made accordingly.

1. In order to understand the position, it is useful to make a very brief reference to some relevant facts. The applicant was the registered proprietor of a design No 117292. The initial registration was granted pursuant to subsection 27A(1) of the Designs Act for a period of one year commencing on 8 June 1993. The application for the registration of the design was made on 1 September 1992 in the sense that it was lodged on that day. Under subsection 27A(1) it was deemed to have come into force on the date on which the application for registration of the design was lodged under the Act, that is, 1 September 1992, and, subject to the Act, shall cease to be in force on the expiration of a period of 12 months commencing on the date on which the registration is made in the Register. The registration was made on 8 June 1993. Therefore the period of the registration was deemed to have commenced on 1 September 1992 and was to last until the end of the period of 12 months after 8 June 1993.

2. Under subsection 27A(2) an application may be made to the Registrar for an extension of the period of registration of a design referred to in subsection (1) and that period may be extended for further periods, see subsections (12) and (13). On 30 March 1994, under subsection 27A(4) of the Designs Act, Edward Henry Harvey, who was referred to in the course of the submissions as the informant, lodged a notice and accompanying documentation with the Registrar. That subsection, in effect, allows any person, before the expiration of a period of 11 months commencing on the date on which the registration of design was made in the Register, to lodge at the Design Office a notice in accordance with the prescribed form setting out matters which could be used for the purpose of refusing to register the design. I do not need to go into the grounds upon which the informant relied. Thereafter, directions were given as to the proceedings before the Registrar in relation to the extension of time. Under section 46 of the Act, the Registrar is not allowed to exercise a power adversely to a person, in this case the applicant, without giving to that person an opportunity of being heard. Pursuant to that power, the Registrar gave notice to the applicant of his proposal not to grant the extension of time. Thereafter, a hearing took place in Canberra before a Delegate of the Registrar in which the applicant was represented and the informant was allowed to be represented by a solicitor who made submissions in relation to the extension of the time. Further information was lodged by the informant.

3. There appears to be nothing in the Designs Act providing for the hearing of an application for an extension of the time under section 27A. There is nothing equivalent to provisions contained in the Patents Act 1990 whereby opponents are treated as parties in proceedings before the Commissioner of Patents. What happened in the present case was a Delegate of the Registrar conducted a type of hearing in which the applicant for the extension and the informant were represented and made submissions in support of and in opposition to the extension respectively.

4. On 28 September 1994 the Registrar, by his Delegate, found that the design "is not a new or original design over the disclosure of GP provisional specification 5126/72". Therefore he refused to grant an extension of time. At the same time he made an order that the applicant pay the informant's costs of the hearing before the Delegate.

5. The power to order costs is contained in section 42A of the Act, the relevant provision being:
   

"42A The Registrar may, for the purposes of this Act -

(a) ...

(d) award costs against a party to proceedings before him."

1. In that provision, reference is made to a party. It appears that the Delegate considered the informant to be a party. Since the informant had won the issue before him, the Delegate ordered that the unsuccessful applicant pay the informant's costs of those proceedings.

2. The applicant has appealed from that decision and it is useful to look at the actual application itself. As I said earlier, the only respondent to the appeal is the Registrar of Designs. The decision appealed from, as set out in the notice of appeal is the decision under section 27A:
   

"(a) to refuse to extend the period of registration of the design;

(b) to allow the informant/notifier (Edward Henry Harvey) to be represented at the hearing and to make submissions on

(i) the application;

(ii) costs;

(c) to award costs against the applicant as registered owner of the design in favour of the informant/notifier."

1. The orders sought include, in substance, an order setting aside the decision of the Registrar, an order extending the period of registration of the design pursuant to sections 27A and 40J of the Act, an order setting aside the decision of the Registrar that the applicant pay the costs of the informant/notifier and an order that the Respondent, that is, the Registrar of Designs, pay the costs of the applicant of the appeal.

2. The questions of parties arises because of an apparent ambiguity in the provisions of Order 54B of the Federal Court Rules, now Order 58, being the Order dealing with intellectual property. In the Rules, the word "Commissioner" is defined to include the Registrar of Designs and the Order applies to intellectual property cases. That phrase is defined to include the type of matter presently before the Court. Subject to Order 54B or 58 and to any other law of the Commonwealth, the other Orders of the Federal Court Rules apply to intellectual property cases. The ambiguity arises from the application of rule 3. That rule reads:
   

"The Commissioner may appear and be heard in any proceedings but is not a party to proceedings other than an appeal:

(a) from a decision of the Commissioner; and

(b) in which there is no party in opposition to the party bringing the appeal."

1. On their face Rules 3(a) and (b) appear to be cumulative. In other words, in any matter in an intellectual property case, the Commissioner may appear and be heard but is not to be treated as a party. He is to be treated as a party only in those cases where the intellectual property case is an appeal from a decision of the Commissioner and in which there is no party in opposition to the party bringing the appeal.

2. In the present case, the question arises as to whether this is a proper matter for the joining of the informant as a party. There is much to be said for the view that in proceedings before the Registrar in cases of this kind, the Registrar is not a party in any proper sense of that word. The Registrar is an administrator deciding whether to Register a design or, in this case, to extend the term of registration of a registered design. In making that decision, it is quite obvious that the Registrar is entitled to the benefit of submissions put on behalf of the applicant for the extension of time, and one would have thought, possibly, from any informant, pursuant to powers conferred by subsection 27(4) of the Designs Act. In one sense, those persons are like parties before the Registrar acting as an administrator, but the Registrar is certainly not a party. Even though there appears to be an absence of clear provisions in the Designs Act specifying the status of an informant, it may well be that the informant has certain rights similar to that of a party in a hearing before the Registrar, although that is one of the issues raised by the notice of appeal in this case.

3. The applicant claims that the informant is not a party, that the Registrar had no power to treat him as a party, and that the Registrar had no power to order that the costs of the informant be paid by the applicant. Those issues will need to be dealt with at the hearing of this appeal. In the meantime it should be noted and stressed that there is an order in favour of the informant that the informant receive his costs of the proceedings before the Registrar from the applicant. At the very least, natural justice would require that the informant have the opportunity of being heard in any hearing before this Court in which the applicant sought to have that order set aside.

4. More importantly, at this stage of the proceedings, the question arises whether it is appropriate that the informant be added as a respondent to the appeal.

5. As I have indicated there is force in an argument that the informant should be added as a respondent. This can be done pursuant to Order 6, rule 8, of the Federal Court Rules on the motion of the Court itself.

6. In considering this matter I do not propose to discuss the nature of an appeal except to say that there is strong support for the view that any appeal is on the basis of a rehearing de novo on material put before the Court. This is a necessary concomitant, based on the concept that the decision by the Registrar is of an administrative kind. In hearing the appeal the Court is exercising judicial power and exercising the original jurisdiction of the Court. This is made clear from a number of authorities which I do not need to refer to at this stage.

7. Form 58A, in the Schedule to the Rules, which is the appropriate form for a notice of appeal, itself is not very explicit. It is a form of appeal to be used in all cases whether the appeal is from the Commission of Patents, the Registrar of Designs, or any of the other officers administering the intellectual property matters. The form does not give much assistance as to who should be named as a respondent to the appeal. It is necessary to come back to rule 3 which provides that the Commissioner is not a party to proceedings other than an appeal from a decision of the Commissioner and in which there is no party in opposition to the party bringing the appeal. On the face of it this is such a case. In reality, the informant, in my view, must be treated as if he were a party for the procedural purposes of being named as a respondent in this case. At a later stage it may be necessary for the Court to determine whether the Registrar of Designs should remain as a party or not. Much might depend on whether the informant continues as a party, or seeks to be removed for various reasons. As long as the informant continues to press for the enforcement of his orders for costs it would appear that he could not cease to be a respondent.

8. The traditional view, in my opinion the correct view, is that where, in a case of this kind there is no opposing party to put submissions against that of an applicant the Court is assisted by submissions on behalf of the Commonwealth officer, in this case the Registrar of Designs. As I understand the practice, if there is an opposing party in the sense to which I have referred, the officer of the Commonwealth does not play any active role in that appeal. These matters which will need to be considered later during the course of this proceeding.

9. At the present time, on the information presently before the Court, and, despite the absence of clear provisions in the Designs Act, but having regard to the normal procedures to be followed and the provisions of Order 54B rule 3 of the Federal Court Rules, this is a case where the demands of natural justice require the informant to be added as a respondent. What steps that respondent takes in the future remains to be seen and depends upon advice given to him by his legal advisers. What action the Registrar of Designs is to take in the future depends upon advice received. But it is proposed to order the joinder of the informant as a respondent giving directions as to the service on that added respondent of a copy of the notice of appeal as amended, the affidavit in support and a copy of this Order. The directions hearing will be adjourned to the next intellectual property list day on 12 December. A direction is given that the added respondent attend at that directions hearing, and in the absence of attendance, orders may be made in his absence. There is also a direction that before appearing at that directions hearing an appearance must be entered. That time is only four weeks away and it is anticipated that at that directions hearing, directions can be given for a speedy hearing of this matter having regard to the fact that the registration is no longer in operation and the applicant desires to have the issue determined as speedily as possible so that, if successful, registration can be effected.

10. Order accordingly.