Australian Appaloosa Association Ltd and Australian Securities & Investments Commission
[2019] AATA 2195
•25 July 2019
Australian Appaloosa Association Ltd and Australian Securities & Investments Commission [2019] AATA 2195 (25 July 2019)
Division:TAXATION AND COMMERCIAL DIVISION
File Number(s): 2018/5585
Re:Australian Appaloosa Association Ltd
APPLICANT
AndAustralian Securities & Investments Commission
RESPONDENT
DECISION
Tribunal:Member W Frost
Date:25 July 2019
Place:Canberra
The Tribunal affirms the decisions under review pursuant to section 43(1)(a) of the Administrative Appeals Tribunal Act 1975.
............................................................
Member W Frost
Catchwords
BUSINESS NAMES REGISTRATION – Business Names Registration Act 2011 (Cth) – objection to registration of business name – whether business name is available for registration - whether business names are ‘identical or nearly identical’ – decision under review affirmed
Legislation
Administrative Appeals Tribunal Act 1975
Business Names Registration Act 2011
Business Names Registration (Availability of Names) Determination 2012
Corporations Act 2001
Corporations Regulations 2001
Cases
Alzheimer’s Association of Queensland Inc and ASIC [2018] AATA 2403
Boyce and ASIC [2015] AATA 768
Clark Stasiw and ASIC [2015] AATA 328
Decorative Imaging Pty Limited and ASIC [2018] AATA 4668
GC Swinburne and F J McFarlane and ASIC [2014] AATA 602
Hazeldine and ASIC [2019] AATA 366
Perth Martial Arts Academy and ASIC [2018] AATA 3664
Smith and ASIC [2014] AATA 192
Secondary Materials
Australian Securities & Investment Commission Regulatory Guide 235: Registering your business name (August 2013)
REASONS FOR DECISION
Member W Frost
25 July 2019
INTRODUCTION
This decision concerns the registration by the Australian Securities & Investments Commission (ASIC) of two business names containing the word Appaloosa.
The Appaloosa is a breed of horse with a distinctive spotted coat and a long history. Appaloosa horses are said to have descended from wild mustangs in the Nez Percé Indian territory in the Northeast of the United States of America. The name ‘Appaloosa’ is derived from the Palouse River running through this area.[1]
[1] Encyclopaedia Britannica, accessed 27 June 2019.
The Applicant, Australian Appaloosa Association Ltd, is an incorporated company and not-for-profit membership-based organisation that has been operating for forty-five years. The Applicant maintains the national database and stud book (or official records) for Appaloosa horses, organises shows and events, secures sponsorship and arranges insurance for riders and horses.
The Applicant sought review by the Tribunal of two decisions of a delegate of ASIC dated 19 July 2017 affirming ASIC’s determination on 3 April 2017 to register two business names, ‘Appaloosa Association of Australia’ and ‘Appaloosa Australia’ (Business Names) pursuant to the Business Names Registration Act 2011 (BNR Act).
The Applicant contends that the Business Names were ‘identical or nearly identical’ to its name and that they were therefore not relevantly ‘available’ to be registered under s 24(1) of the BNR Act. ASIC asserts that its decisions were the correct and preferable ones because the Business Names were ‘available’ pursuant to the BNR Act.
ISSUE
The issue before the Tribunal is whether the business names ‘Appaloosa Association of Australia’ and ‘Appaloosa Association’ are ‘identical or nearly identical’ to the Applicant’s name, being the registered company ‘Australian Appaloosa Association Ltd’ (Company Name) and therefore not relevantly ‘available’ for the purposes of s 24(1)(c) of the BNR Act.
BACKGROUND
On 2 April 2017, the Applicant held its Annual General Meeting at which, it was claimed, a ‘failed coup’ to spill the Board was attempted by a former director, Ms Debrah Ebbett and other then members of the Applicant.
The day after this purported attempted takeover of the Applicant, Ms Ebbett applied to ASIC to register two business names on its business names register (Business Names Register). These names were: ‘Appaloosa Association of Australia’ and ‘Appaloosa Australia’, which are the Business Names the subject of the review application before the Tribunal. ASIC registered the Business Names on that date, 3 April 2017, and Ms Ebbett is listed as the ‘business name holder’ for each of the Business Names in the ASIC ‘Current and historical business name extract’ dated 21 May 2019 for each of the Business Names. These names are not associated with the Applicant. The Applicant alleged that the Business Names were registered by Ms Ebbett to establish an organisation in direct competition to the Applicant.
On 15 June 2017, and separately to the earlier registration of the identical business name under the Business Names Register, a company named ‘Appaloosa Association of Australia Ltd’ was registered under the Corporations Act 2001. This company remains registered and Ms Ebbett is listed as a director of the company. The Tribunal is satisfied on the information before it that Ms Ebbett, or those associated with her, applied to ASIC for registration of this company name on 15 June 2017 in addition to applying for the registration of the Business Names on 3 April 2017. The registration of this company name, ‘Appaloosa Association of Australia Ltd’, is not relevant to the determination of the application before the Tribunal, which concerns the two decisions of ASIC made under the BNR Act to register the Business Names. Therefore, the Tribunal does not in this decision consider the registration of the company, which occurred pursuant to the Corporations Act 2001. For completeness, the Tribunal notes that its jurisdiction in this matter arises under s 58(1) of the BNR Act, which relevantly provides that an application may be made to the Tribunal for review of a decision made or taken to have been made by ASIC under s 57 of the BNR Act. Section 57 provides for the internal review by ASIC of its decisions under the BNR Act.
On 27 June 2017, the President of the Applicant, Ms Anna Duin, lodged an application with ASIC seeking internal review by ASIC of its decisions to register the Business Names (T2, pp 23-24).
On 19 July 2017, ASIC affirmed its decisions to register the Business Names.
On 16 August 2018, ASIC cancelled one of the business names the subject of this review application, being ‘Appaloosa Association of Australia’ (T11, p 47). The renewal date for registration of the business name was 3 April 2018. There are a number of statutory bases upon which a business name may be cancelled, including under s 49 of the BNR Act in circumstances where the registration has expired. Whilst the business name, ‘Appaloosa Association of Australia’ has been cancelled, the company name, ‘Appaloosa Association of Australia Ltd’, remains registered under the Corporations Act 2011 as does the business name ‘Appaloosa Australia’ under the BNR Act (T12, p 48).
On 31 August 2018, the Tribunal granted the Applicant an extension of time to bring the application for review of ASIC’s decisions to register the Business Names (T1, pp 12-22), and on 21 September 2018, the Applicant applied to the Tribunal for review of the decisions (T1, pp 1-8).
On 27 June 2019, the Tribunal held a hearing of the application for review of ASIC’s decisions.
LEGISLATIVE INSTRUMENTS
In July 2009, the Commonwealth and the States and Territories signed the Intergovernmental Agreement for Business Names Agreement, which agreed to establish a national system for business name registration to be implemented by Commonwealth legislation. Prior to achieving national uniformity, each State and Territory had its own system of registering business names.
In 2011, to give effect to the Intergovernmental Agreement, the Commonwealth Parliament passed the BNR Act and, subsequently, other associated legislative instruments including the Business Names Registration (Availability of Names) Determination 2012, which was replaced in 2015 (Determination).
In May 2012, the new national Business Names Register scheme commenced, with ASIC having responsibility for its administration pursuant to s 22 of the BNR Act.
The BNR Act
The objects of the BNR Act are set out in s 16 and include the proper identification of a business and the streamlining of registration across Australia via one national register. Section 16(3) states that one object is ‘to avoid confusion by ensuring that business names that are identical or nearly identical are not registered’. The other objects in that subsection are to ensure business names that are ‘undesirable’ are not registered and to restrict names ‘for any other reason (for example, because they might mislead consumers)’.
The Tribunal notes that s 66 of the BNR Act provides that ASIC can use computer programs ‘for any purposes for which ASIC may make decisions’ under the BNR Act and that a decision made by a computer program ‘is taken to be a decision made by ASIC’. ASIC’s computer systems and programs maintain the Business Names Register, process transactions and make decisions under the BNR Act. Upon receiving an application for registration through the online portal ‘ASIC Connect’, an automated system determines the availability of the business name for registration by checking it against the Business Names Register and the register of companies and by applying the rules made under the Determination.
Upon receipt of an application to register a business name to an entity, ASIC must register the name if ASIC is satisfied that it meets the requirements in s 24(1) of the BNR Act, namely:
(a)the entity has an ABN; and
(b)the registration fee has been paid; and
(c)the name is available to the entity; and
(d)the entity is not disqualified.
The only criteria in s 24(1) of the BNR Act that is challenged by the Applicant is whether or not the Business Names were ‘available’ pursuant to s 24(1)(c); the other criteria in s 24(1) are not in dispute between the parties. Section 25 of the BNR Act provides that a business name is ‘available to an entity’ if the name is ‘not identical or nearly identical’ to, amongst others, a business name registered to another entity (s 25(a)(i)) or a name that is reserved or registered under the Corporations Act 2001 for another body (s 25(a)(ii)).
Section 26 of the BNR Act allows the Minister to make rules by legislative instrument for determining ‘whether a name is identical or nearly identical to another name’. To this end, the definition in s 3 of the BNR Act of the terms ‘identical’ and ‘nearly identical’ is the definition of those terms ‘under rules made by the Minister under section 26’.
The Determination
The rules made by the Minister pursuant to s 26 of the BNR Act are contained in the Business Names Registration (Availability of Names) Determination 2015 (at T19, pp 155-172). Because the Applicant has a company name, not a business name, section 7 of the Determination is the relevant provision in relation to the application before the Tribunal; it sets out the rules that must be applied by ASIC for determining whether business names are ‘identical or nearly identical’ to company names as follows:
A business name is identical or nearly identical to a company name if, and only if, the names are the same after comparing the business name with the company name by applying the rules in Part 1 of Schedule 6 to the Corporations Regulations 2001 (Rules for ascertaining whether names are identical) as if they had been made for subparagraph 25 (a) (ii) of the Act.
The Regulations
As set out in section 7 of the Determination, the rules in Part 1 of Schedule 6 to the Corporations Regulations 2001 (Regulations) also need to be applied in determining whether names are identical or nearly identical. The Regulations relevantly provide that, when comparing one name with another, the following matters are to be disregarded:
(a)the use of the definite or indefinite article as the first word in one or both of those names;
(b)the use of 'Proprietary', 'Pty', 'Limited', 'Ltd', 'No Liability' or 'NL' in one or both of the names;
(c)whether a word is in the plural or singular number in one or both names;
(d)the type, size and case of letters, the size of any numbers or other characters, and any accents, spaces between letters, numbers or characters, and punctuation marks, used in one or both names;
(e)the fact that one name contains a word or expression in column 2 of the following table and the other name contains an alternative for that word or expression in column 3:
Column 1
Item
Column 2
Word or expression
Column 3
Alternative
1
Australian
Aust
2
Company
Co or Coy
3
Co
Company or Coy
4
Coy
Company or Co
5
Number
No
6
And
&
7
Incorporated
Inc
8
Corporation
Corp
9
Australian Company Number
ACN
The ASIC Regulatory Guide
While not a legislative instrument, the Applicant placed great weight on the information provided to it, and the community generally, regarding the registration of business names in ASIC Regulatory Guide 235, entitled ‘Registering your business name’, dated August 2013 (Regulatory Guide).
Despite the Applicant’s contention, the Regulatory Guide does not state that a proposed business name that is ‘similar’ to an already registered business or company name will not be registered by ASIC. The Regulatory Guide at paragraph 235.59 states that:
We will conduct a number of checks on your proposed business name to determine whether it is ‘available’ to be registered. This includes checking if the name is:
(a)identical (or nearly identical) to a business name already registered to another entity under the Business Names Registration Act or the Corporations Act;
(b)undesirable (e.g. offensive);
(c)made up of words that are not in the Macquarie Dictionary;
(d)made up of, or includes, a ‘restricted word or expression’ (e.g. the words ‘Commonwealth’ or ‘Federal’); or
(e)currently under review with another application.
Note 1: This is not an exhaustive list of what we will consider in determining whether a business name is available to be registered. For more information on business names availability, visit our website at
Note 2: In determining whether a proposed business name is identical or nearly identical, or is undesirable, and what are restricted words or expressions, we will apply the rules under the Business Names Registration (Availability of Names) Determination 2012.
The approach set out in the Regulatory Guide reflects the approach prescribed by the BNR Act and the associated Determination and Regulations. That is, ASIC will allow a proposed business name if it is ‘available’ to be registered. This availability will be resolved by applying the Determination, which states that a business name is identical or nearly identical to a company name ‘if, and only if, the names are the same’, after applying the rules for ascertaining whether names are identical that are set out in the Regulations. Therefore, a business name will be registered if the proposed name is not the same as an existing business or company name, provided it meets all of the other criteria for registration.
COMMON LAW
The Tribunal has considered the registration of business names by ASIC on many occasions since the commencement of the Business Names Register. While earlier decisions of the Tribunal, namely GC Swinburne and F J McFarlane and ASIC [2014] AATA 602 and Clark Stasiw and ASIC [2015] AATA 328, took a less prescriptive approach to the interpretation of the legislative regime establishing the Business Names Register, it is clear from the accepted authorities since the Tribunal’s decision in Boyce and ASIC [2015] AATA 768, which was also informed by Smith and ASIC [2014] AATA 192, that consideration of whether a business name is ‘identical or nearly identical’ is to be determined solely by applying the rules set out in the Determination. That is, there is no discretion or consideration in determining an application for the registration of a business name outside of the strict legislative regime established under the BNR Act. As a consequence, the Tribunal adopts the approach set out in Boyce, and followed by subsequent decisions of the Tribunal, in determining the current application.
In Boyce, the Tribunal stated that the predecessor rules to the Determination ‘are both exclusive and exhaustive, such that it is unnecessary and unwarranted to make inquires beyond their scope’.[2] For example, the Tribunal in Boyce did not consider that the business name ‘Rainbow Beach Plumbing’ was identical, or nearly identical, to the company name ‘Rainbow Beach Plumbing Services Pty Ltd’ and concluded that[3]:
the comparison envisaged by s 25(a) is to be undertaken by reference to the rules as set out in Part 2 of the Determination. Those rules are exclusive (by reason of the legislative intent signalled by s 16(4)) and exhaustive (by reason of the definitions in s 3 and the drafting of the rules, with their deliberate inclusion and exclusion of matters to be considered in undertaking the comparison).
[2] Boyce v ASIC [2015] AATA 768 at [34].
[3] Boyce and ASIC [2015] AATA 768 at [47].
In Perth Martial Arts Academy and ASIC [2018] AATA 3664, the Tribunal considered an application for review of ASIC’s decision to register the business name ‘Perth Martial Arts Centre’. The Applicant contended that this business name was identical or nearly identical to its registered business name, ‘Perth Martial Arts Academy’ and that ‘Perth Martial Arts Centre’ was ‘playing on the name and reputation of’ the Applicant and affecting its business. The Tribunal observed in Perth Martial Arts Academy[4] that:
Unfortunately for the Applicant, whether the two business names are identical or nearly identical is not simply a matter of common sense based on a simple comparison of the extent of the similarities between two business names. If one were to ask a person on the street whether the business names Perth Martial Arts Academy and Perth Martial Arts Centre were identical or nearly identical, they may very well agree that they were.
The approach that is required to be taken when comparing business names under the BNR Act and the Determination is substantially narrower than such a common sense approach and is constrained by ASIC having a lack of discretion under the BNR Act and the Determination. Indeed, in Smith and ASIC and Amee Donohoe Trading as Central Coast Surf Academy [2014] AATA 192 (Smith), Senior Member McCabe (now Deputy President McCabe) was required to consider whether the names “Central Coast Surf School” and “Central Coast Surf Academy” were identical or nearly identical. He stated, at [3] of Smith:
3. While I accept the two names are so similar they might confuse or mislead, that is not the test. For the reasons I will explain, I am satisfied the two names are not identical or even nearly identical for the purposes of the Act. The name Central Coast Surf Academy is available to be registered by Ms Donohue.
[4] Perth Martial Arts Academy and ASIC [2018] AATA 3664 at [31] to [32].
The Tribunal in Perth Martial Arts Academy agreed with the approach adopted in Boyce to interpreting the BNR Act and the Determination and observed[5] that:
Pursuant to s 24(1) of the BNR Act, ASIC must register the business name if it is satisfied that the business name is available, that the entity has an ABN, the registration fee has been paid, and the entity is not disqualified. The word “must” indicates that ASIC has no discretion – if s 24(1) is satisfied, it must register the business name…
The lack of discretion indicated by the use of the word “must” in s 24(1) of the BNR Act is supported by s 66 of the BNR Act which provides that ASIC may use computer programs to make decisions under the BNR Act. Such an automated form of decision-making necessarily involves a lack of discretion…
A business name will not be available if it falls within any of the subsections in s 25 of the BNR Act, including s 25(a)(i) – if it is identical or nearly identical to a business name that is already registered. “Identical” or “nearly identical” are narrowly defined in s 3 of the BNR Act - as meaning “identical under rules made by the Minister...” or “...nearly identical under rules made by the Minister...” The Minister has made “rules” under s 26 of the BNR Act to determine whether a business name is identical or nearly identical to another business name. These are contained in the Determination. The words “identical under rules” or “nearly identical under rules” in s 3 of the BNR Act indicate that the rules are the exclusive means by which to determine whether a name is identical or nearly identical. As the BNR Act has clearly defined these terms, it is not necessary to look at the plain or ordinary meaning of “identical” or “nearly identical”. In this regard, the Tribunal respectfully disagrees with the approach taken by Deputy President Alpins in Swinburne & McFarlane and Australian Securities and Investments Commission [2014] AATA 602 (Swinburne) and Deputy President The Hon. R Nicholson in Stasiw and Australian Securities and Investments Commission [2015] AATA 328 (Stasiw).
Additionally, s 16(4) of the objects section of the BNR Act states that the objects in s 16(3) of the BNR Act are achieved by rules dealing with the availability of business names. As Senior Member Cotter indicated in Boyce at [38], the wording “are achieved by rules” is a further indication of the exhaustive and exclusive nature of the rules contained in the Determination.
Section 5A of the Determination states that a business name is identical or nearly identical “if and only if” having disregarded the matters in s 5(1) of the Determination…and applying s 6(1) of the Determination, “the names are the same”. Again, the words “if and only if” indicate a lack of discretion in that only the matters in s 5(1) and s 6(1) of the Determination (which incorporates Schedule 1) are relevant.
Finally, although the BNR Act and rules contained in the Determination are expressed somewhat narrowly and inflexibly in terms of their prescriptive nature and lack of discretion, as Senior Member Cotter states [in Boyce], there is no “ambiguity” or “mischief” to be resolved by looking for meaning outside of the BNR Act and Determination. This means that the plain and ordinary meaning of the terms “academy” and “centre” do not need to be considered, and in fact cannot be considered. In making this observation, the Tribunal is guided by s 15AA of the Acts Interpretation Act 1901 (Cth) and the decision of the High Court of Australia in Project Blue Sky Inc v Australian Broadcasting Authority [1998] HCA 28… As noted above, the objects of the BNR Act and specifically, how they are to be achieved, are clearly stated in s 16(3) and (4) of the BNR Act. Further, the approach adopted by the Tribunal in Smith, Boyce and Alzheimers Association, for the reasons outlined above, is the approach that is most “consistent with the language and purpose of all the provisions of the statute”.
[5] Perth Martial Arts Academy and ASIC [2018] AATA 3664 at 36(b) to (f) and (h).
In concluding, the Tribunal in Perth Martial Arts Academy confirmed that[6]:
the Tribunal is precluded by the relevant provisions of the BNR Act and the Determination from finding that the business names, Perth Martial Arts Academy and Perth Martial Arts Centre are identical or nearly identical.
[6] Perth Martial Arts Academy and ASIC [2018] AATA 3664 at 39.
The Tribunal’s decision in Alzheimer’s Association of Queensland Inc and ASIC [2018] AATA 2403 concerned the validity of the transfer of a registered business name. It was held that, if the criteria in s 24 of the Act were satisfied, ASIC must register the business name and has no residual discretion not to register the business name[7]:
To regard ASIC as having a broad discretion to be exercised in every application would be to frustrate the purpose of the Act. The evidence before me indicates that there are roughly 2.24 million business names on the BNR at present. If there was a discretion available in relation to each application, the burden imposed on ASIC would be oppressive…No reference was made in the explanatory notes to the Act regarding an undertaking of this nature. Furthermore, such a discretion would undermine Parliament’s intention of using an automated system to manage this register. Such a construction would oblige ASIC to undertake complex investigations as to which party is better entitled to a Business Name and it would make the Tribunal a forum for ventilating misleading and deceptive conduct, trademarks, branding and passing off actions. As mentioned previously, the Explanatory Memorandum explicitly states that the Act is not a mechanism under which proprietary rights to a name can be conferred.
…
A reading of sections 16 and 17 of the Act, and the second reading speech indicates that Parliament clearly intended an automated system of registration to simplify and unify the registration of business names throughout the Commonwealth. Section 16(2) of the Act provides that the objectives divulged in section 16(1), to ensure that if an entity carries on business under a certain name, those who engage with the business can identify the entity and to eliminate the inconvenience caused by registering business names in each State or Territory, are achieved by the establishment and maintenance of the national register. Section 16(4) of the Act provides that the objects mentioned in subsection (3), relevantly in this matter, to avoid confusion by ensuring business names that are identical are not registered, are achieved by the rules dealing with the availability of business names.
[7] Alzheimer’s Association of Queensland Inc and ASIC [2018] AATA 2403 at 52 and 56.
In Decorative Imaging Pty Limited and ASIC [2018] AATA 4668, the Tribunal followed the application of the legislative regime set out in Boyce and Perth Martial Arts Academy and stated that[8]:
The issue in this case is whether the decision maker in determining whether two business names are identical or nearly identical has a discretion to apply common-sense based on a simple comparison of the extent of the similarities between the two business names or whether the legislative scheme provides a code for such a determination to be made.
The BNR Act does not appear to encourage discretion. It is prescriptive. Under section 24(1) ASIC must register the business name if the business name is available and certain other formalities are complied with.
The term “identical” is defined as meaning “identical under rules made by the Minister”. The Minister has made the rules. The rules are prescriptive. Section 5A of BNRD provides that the name is identical or nearly identical “if, and only if”.... Section 5 of BNRD specifies that matters “are to be disregarded”. It does not use the word “may”. Section 6 of the BNRD uses the phrase “a word ... is to be taken to be the same ...”.
These are not words that give a decision maker a discretion.
…
While the approach that I have adopted will at times lead to results that a decision maker, if not bound by by [sic] the prescriptive provisions of the BNR Act would not make, it cannot be said to breach rules of statutory construction as explained by the High Court in Project Blue Sky Inc v Australian Broadcasting Authority (1998) HCA 28 at [69]. The rigid and prescriptive provisions of the Act are clear and are consistent with the clear intention of establishing an automatic system of registration to simplify and unify registration of business names.
[8] Decorative Imaging Pty Limited and ASIC [2018] AATA 4668 at [16]-[19] and [21].
This year, in Hazeldine and ASIC [2019] AATA 366, the Tribunal followed the line of authorities since the decision in Boyce and held that:[9]
The legislative framework established by the BNR Act constitutes a complete code with respect to applications for registration of business names. Once the program has determined the availability of a new business name, and, provided the entity has an ABN and has paid the registration fee, it follows that the name is available to the entity making the application and ASIC has no discretion to refuse registration. This conclusion follows from the objects of the Act, from s 23, s 24 and s 26 therein, and from the rules set out in the Determination.
…
The legislative scheme introduced by the BNR Act was intended by Parliament to displace, as far as possible, subjective considerations as to the identity or near identity of names, and to introduce instead an objective, computer-driven system for the registration of business names, regardless of anomalies that may result. The legislation was introduced to achieve nationwide uniformity and to cope with the anticipated large volume of applications for registration of business names. The use of computer programs is essential to the operation of the system introduced by the BNR Act, a fact clearly envisaged by its proponents.
The Tribunal is precluded by the relevant, aforementioned provisions of the BNR Act and of the Determination from finding that the business names Northern Beaches Private Tutoring Service and Northern Beaches Tutoring Services are identical or nearly identical.
CONTENTIONS & EVIDENCE
[9] Hazeldine and ASIC [2019] AATA 366 at [41] and [43]-[44].
Applicant’s Submissions
The Applicant contended that the entity applying to the Business Names Register must:
ensure they do not pass off as another business or mislead or deceive consumers…The publicly distributed comments through social media are just an [sic] small example of the activities and actions of directors of the Appaloosa Association of Australia that has caused almost 2 years of grief, hardship, consumer confusion, not to mention making false statements to clearly try to indicate that out [sic] Association was no longer operating.
1.(a) We believe this is one element that should have seen ASIC apply the rules applicable to them and at the very least hold over this application to register an “identical or near identical name” within the very same sphere of service provision being an association for Australian owners of registered stud book Appaloosa horses.
The Applicant extracted in its submissions what the Tribunal understands to be messages on social media platforms regarding the registration of the Business Names. This material was said to constitute ‘further evidence of misleading and deceiving consumers and other organisations’ for the purpose of causing ‘harm and detriment to our members and other equine organisations’. At hearing, the Applicant further contended that there was detriment to its members and the community, including widespread confusion about the correct entity people should engage with in relation to Appaloosa horses and associated events in Australia. The Applicant invited the Tribunal to look to the intent of the BNR Act and the associated legislative instruments in seeking to avoid the current uncertainty surrounding the Business Names and the Applicant’s Company Name.
ASIC’s Submissions
ASIC contended that, having regard to the Tribunal’s decision in Boyce, the question of whether the two names are ‘identical’ or ‘nearly identical’ must be undertaken exclusively by reference to the specific criteria prescribed in the Determination and the Regulations. ASIC referred to s 7 of the Determination which provides that a business name is ‘identical or nearly identical’ to a company name if, and only if, the names are the same after comparing the business name with the company name by applying the rules in the Regulations. As a result, ASIC asserted that it is unnecessary to go beyond the Determination when performing the exercise of comparison in order to determine whether names are ‘identical or nearly identical’ within the meaning of the BNR Act.
Witnesses
Ms Duin, who appeared on behalf of the Applicant at hearing, also provided the Tribunal with a witness statement dated 30 May 2019 in which many of the assertions from the Applicant’s written submissions were repeated and expanded, including the repetition of certain assertions regarding the conduct of ASIC and its representatives in handling this matter. For the avoidance of doubt, the Tribunal does not accept any of the Applicant’s submissions regarding the conduct of ASIC, its officers or representatives during this matter. From the material before the Tribunal, and having regard to the relevant legislative instruments in relation to the purpose and administration of the Business Names Register, the Tribunal is satisfied that there has been no untoward conduct by ASIC, its officers or representatives in this matter. They simply applied the law to the applications for the Business Names and have since put forward ASIC’s position in relation to the registering of the Business Names to both the Applicant and to the Tribunal.
Two members of the Applicant’s Board, Ms Debbie Pearson and Ms Marsha Lewis, gave evidence at hearing and confirmed that the Applicant has suffered as a result of the registration of the Business Names. Ms Lewis noted that the similarities between the business name, Appaloosa Association of Australia, and the Applicant’s Company Name, Australian Appaloosa Association Ltd, have caused confusion with the Applicant’s members and the broader equine industry. This has impacted on sponsorship money for various events and activities of the Applicant. Ms Pearson also confirmed the significant impact on the Applicant and its standing in the industry and Ms Duin noted that there was an application with the Australian Consumer and Competition Commission regarding a claim of passing off that is not before the Tribunal.
Mr Ruben Witte, an analyst in the Registry Team at ASIC with responsibility for (amongst other things) assessing complex applications to register business names provided an affidavit sworn on 6 February 2019. [10] Mr Witte also appeared at the hearing via telephone. Mr Witte relevantly stated in his affidavit that:
ASIC has developed 14 programmed system rules that apply the business name availability rules set out in the BNR Act and the Determination. ASIC’s computer systems perform the task of determining the availability of a proposed business name by applying the 14 programmed system rules.
…
ASIC has developed and published on its website a “check business name availability” search function. A person seeking to register a business name can check the availability of the proposed name using this search function on ASIC Connect. When a search is completed the system shows the availability of a proposed business name by the mechanism of a green, amber or red result, accompanied by text explaining the outcome. A green result means that the business name is available for registration. An amber result means that a decision on availability is required by an ASIC officer. A red result means that the business name is unavailable.
…
In the present case, the registered business name, ‘Appaloosa Australia’, produced a green result on ASIC’s business name availability tests, which indicated that the name was available for registration. The green result appeared after the programmed rules assessed the availability of the proposed business name, ‘Appaloosa Australia’, which in this case, was determined not to be identical or nearly identical to the company name, ‘Australian Appaloosa Association Ltd’.
In the present case, the business name, ‘Appaloosa Association of Australia’, produced a green result on ASIC’s business name availability tests, which indicated that the name was available for registration. The green result appeared after the programmed rules assessed the availability of the proposed business name, ‘Appaloosa Association of Australia’, which in this case, was determined not to be identical or nearly identical to the company name, ‘Australian Appaloosa Association Ltd’.
[10] Affidavit of Ruben Johannes Witte dated 6 February 2019.
CONSIDERATION
Having regard to the line of authorities from the Tribunal, it is clear that the BNR Act is a prescriptive regime and ASIC has no discretion to refuse registration of a proposed business name if it is determined to be available by the Business Names Register maintained by ASIC and has met all of the legislative requirements, including not having the exact same name as another entity. Accordingly, business names that might mislead and confuse, given the existence of similar business or company names, can be registered by ASIC pursuant to the BNR Act.
Is the name ‘Appaloosa Association of Australia’ identical or nearly identical to the Applicant’s Company Name, ‘Australian Appaloosa Association Ltd’?
The name of the Applicant, ‘Australian Appaloosa Association Ltd’ (that is, the Company Name) is a name registered under the Corporations Act 2001.
Pursuant to the Regulations, it is necessary to disregard the word ‘Ltd’ in the Applicant’s name, ‘Australian Appaloosa Association Ltd’, when comparing it with the Business Name ‘Appaloosa Association of Australia’.
Of the remaining words to be considered, two words, being ‘Appaloosa’ and ‘Association’, are used in both the Business Name and the Applicant’s Company Name.
The words ‘of’ and ‘Australia’ are used in the Business Name, but not in the Applicant’s Company Name. The word ‘of’ is not a word which must be disregarded pursuant to the Regulations.
The word ‘Australian’ is used in the Applicant’s Company Name, but not in the Business Name. The word ‘Australia’, used in the Business Name, is not considered under the Regulations to be an alternative for the word ‘Australian’, used in the Applicant’s Company Name.
Therefore, the Business Name ‘Appaloosa Association of Australia’ is not ‘identical or nearly identical’ to the Applicant’s Company Name, ‘Australian Appaloosa Association Ltd’. On the proper application of the legislative regime, the two names are not ‘the same’, as required under the Determination for the business name to not be registered.
Is ‘Appaloosa Australia’ identical or nearly identical to the Applicant’s Company Name, ‘Australian Appaloosa Association Ltd’?
Pursuant to the Regulations, it is necessary to disregard the word ‘Ltd’ in the Applicant’s name, ‘Australian Appaloosa Association Ltd’, when comparing it with the Business Name ‘Appaloosa Australia’.
Of the remaining words to be considered, only the word ‘Appaloosa’ is used in both the Business Name and the Applicant’s Company Name.
Further, the words ‘Australian’ and ‘Association’ are used in the Applicant’s Company Name, but not in the Business Name. The word ‘Australia’, used in the Business Name, is not considered under the Regulations to be an alternative for the word ‘Australian’, used in the Applicant’s Company Name.
Therefore, the Business Name ‘Appaloosa Australia’ is not ‘identical or nearly identical’ to the Applicant’s Company Name, ‘Australian Appaloosa Association Ltd’. Accordingly, on the proper application of the legislative regime, the two names are not ‘the same’, as required under the Determination for the business name to not be registered.
CONCLUSION
The terms of the BNR Act and the Determination are highly prescriptive and provide ASIC with no discretion to refuse registration of a business name if all of the legislative requirements are met. Although one of the business names the subject of this review (the now cancelled business name, Appaloosa Association of Australia) plainly had the potential to mislead and confuse people regarding its standing in the equine industry and, as a consequence, the standing of the Applicant, under the legislative regime the Tribunal must apply, the Business Names are not ‘identical or nearly identical’ to the Applicant’s Company Name. Therefore, the Tribunal must affirm ASIC’s decisions to register both of the Business Names.
As each of the proposed business names was ‘available’ within the meaning of s 24(1)(c) of the BNR Act, the Tribunal finds that each of ASIC’s decisions to register the Business Names was the correct or preferable decision.
DECISION
The Tribunal affirms the decisions under review pursuant to section 43(1)(a) of the Administrative Appeals Tribunal Act 1975.
I certify that the preceding 55 (fifty-five) paragraphs are a true copy of the reasons for the decision herein of Member W Frost.
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Associate
Dated: 25 July 2019
Date(s) of hearing: 27 June 2019 Date final submissions received: 28 June 2019 Counsel for Respondent: Ms Madeleine Ellicott Solicitors for the Respondent: Ms Alice Rees, ASIC Applicant: Ms Anna Duin, in person
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