Beling v Sixty International S.A.

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FEDERAL COURT OF AUSTRALIA

Beling v Sixty International S.A. [2015] FCA 250

Citation: Beling v Sixty International S.A. [2015] FCA 250
Parties: JOEL BELING v SIXTY INTERNATIONAL S.A.
File number: VID 626 of 2014
Judge: MORTIMER J
Date of judgment: 20 March 2015
Catchwords: COSTS – Appeal from Registrar of Trademarks’ decision as to costs – litigant in person – solicitor litigant exception to principle that successful self-represented litigants not entitled to costs – applicability of exception to awards of costs under Trade Marks Act 1995 (Cth)
Legislation:

Federal Court of Australia Act 1976 (Cth) s 43
Trade Marks Act 1995 (Cth) ss 54, 56, 201, 202, 203, 206, 221, 222

Trade Mark Regulations 1995 (Cth) Pt 5, regs 21.12, 21.13(1), 21.15, Sch 8

Cases cited:

A & D Douglas Pty Ltd v Lawyers Private Mortgages Pty Ltd [2006] FCA 690
Cachia v Hanes (1994) 179 CLR 403
Cashman and Partners v Secretary, Department of Human Services and Health (1995) 61 FCR 301
Dobree v Hoffman (1996) 18 WAR 36
George v Fletcher (Trustee) (No 2) [2010] FCAFC 71
Guss v Veenhuizen (No 2) (1976) 136 CLR 47
Re New Tel Ltd (in liq) (No 4) [2008] FCA 1085
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020
Secretary, Department of Foreign Affairs and Trade v Boswell (No 2) (1992) 39 FCR 288
Tyne v UBS AG (No 2) [2014] FCA 1228

R v Hardie [2003] NZIPOTM 39

Date of hearing: 5 February 2015
Date of last submissions: 5 February 2015
Place: Melbourne
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 91
Counsel for the Applicant: The Applicant appeared in person
Counsel for the Respondent: Dr L Duncan
Solicitor for the Respondent: M+K Lawyers

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

VID 626 of 2014
BETWEEN:

JOEL BELING
Applicant
AND:

SIXTY INTERNATIONAL S.A.
Respondent

JUDGE:

MORTIMER J

DATE OF ORDER:

20 MARCH 2015

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

1.Appeal allowed.

2.The decision of the delegate of the Registrar of Trade Marks as to Trade Mark Application Number 1441489 made on 16 October 2014 is set aside only insofar as the delegate declined, in paragraph [37] of the decision, to make an award of costs to the applicant.

3.The Registrar is directed, whether through a delegate of the Registrar or otherwise, to reconsider the applicant’s application for costs in accordance with the reasons of the Court on this appeal.

4.The respondent is to pay the applicant’s professional costs of and incidental to the appeal on and from 12 January 2015 and disbursements incurred in the appeal, such costs and disbursements to be fixed by the Court in accordance with directions given.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.


IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

GENERAL DIVISION

VID 626 of 2014
BETWEEN:

JOEL BELING
Applicant
AND:

SIXTY INTERNATIONAL S.A.
Respondent

JUDGE:

MORTIMER J

DATE:

20 MARCH 2015

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Details
Case
[2015] FCA 250
Decision Date

CaseChat Overview and Summary

The matter of Beling v Sixty International S.A. involved an appeal against a decision made by a delegate of the Registrar of Trademarks regarding costs associated with a trade mark registration application. The applicant, Mr Beling, represented himself in the proceedings and sought costs above the scale provided under the Trade Marks Regulations 1995. The respondent opposed the application for registration but provided little material to substantiate its opposition, and the delegate of the Registrar ultimately determined that the respondent had not established any ground of opposition under the Trade Marks Act 1995 (Cth).

The legal issues in the case centered around the applicability of the solicitor litigant exception to awards of costs under the Trade Marks Act. This exception, which precludes self-represented litigants from claiming costs incurred, is well-established in Australian law. However, the court had to determine whether this exception should apply to awards of costs under s 221 of the Act, which grants the Registrar the power to award costs against a party to proceedings brought before her. The court also considered whether the respondent's delay in filing evidence and the lack of meaningful material in opposition justified an award of costs above scale.

The court found that the delegate of the Registrar had failed to apply the correct legal principles in declining to order costs to Mr Beling. The court held that the solicitor litigant exception should not apply to awards of costs under the Trade Marks Act, and that the Registrar has the discretion to award costs to a self-represented litigant who is a lawyer. The court further found that the respondent's delay in filing evidence and the lack of meaningful material in opposition justified an award of costs above scale. The appeal was allowed, and the decision of the delegate of the Registrar as to the applicant's application for costs was set aside. The Registrar was directed to reconsider the applicant's application for costs in accordance with the reasons of the Court on this appeal. The respondent was ordered to pay the applicant's professional costs of and incidental to the appeal on and from 12 January 2015 and disbursements incurred in the appeal, such costs and disbursements to be fixed by the Court in accordance with directions given.

Orders

Orders of the court

1. Appeal allowed.

2. The decision of the delegate of the Registrar of Trade Marks as to Trade Mark Application Number 1441489 made on 16 October 2014 is set aside only insofar as the delegate declined, in paragraph [37] of the decision, to make an award of costs to the applicant.

3. The Registrar is directed, whether through a delegate of the Registrar or otherwise, to reconsider the applicant’s application for costs in accordance with the reasons of the Court on this appeal.

4. The respondent is to pay the applicant’s professional costs of and incidental to the appeal on and from 12 January 2015 and disbursements incurred in the appeal, such costs and disbursements to be fixed by the Court in accordance with directions given.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

For the reasons given below, the appeal should be allowed on the basis that the Registrar’s delegate failed to apply the correct legal principles to his decision to refuse to order costs to Mr Beling. Whether or not the applicant will secure an order for costs, and if so, in what amount, are matters for the exercise of discretion by the Registrar, or her delegate. BACKGROUND On 12 August 2011, the applicant applied to the Registrar to register a trade mark for an apparel business logo under, it appears, s 27 of the Trade Marks Act 1995 (Cth) (the Act). The trade mark was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 December 2011. On 1 March 2012, the respondent filed a notice of opposition to the registration of the trade mark pursuant to s 52 of the Act. In the proceeding before the Registrar, the respondent was granted a number of extensions of time to file supporting evidence, which was ultimately filed on 18 January 2013. That material consisted of a statutory declaration by a Mr Norman Bruce Morcom, the respondent’s patent and trade marks attorney. Mr Beling then put on responding material, including what he described in his affidavit on this appeal as “only … preliminary submissions on the question of costs”. Despite the respondent applying for an extension of time to file evidence in reply, no such evidence was forthcoming. The time taken by the respondent in filing its evidence was one of the matters the applicant highlighted on the appeal to this Court as justifying an order for costs above scale. Mr Beling filed further submissions in the proceeding before the Registrar on 18 March 2014.THE REGISTRAR’S DECISION On 16 October 2014, more than three years after the application for registration, a delegate of the Registrar determined that the respondent had not established any ground of opposition under the Act and directed that the applicant’s trade mark application could proceed to registration. It is apparent from the delegate’s reasons that the respondent provided little material to substantiate its opposition to the registration of the trade mark. This was another factor relied on by Mr Beling on the appeal as justifying a larger order for costs: in substance he submitted the respondent had delayed the entire process without submitting any meaningful material in opposition. The delegate considered the trade mark application and the costs issues on the papers. As I set out below, the applicant deposed on the appeal that after the written submissions were filed he was given no further opportunity to make submissions about costs prior to the issuing of the written decision and reasons. I accept that evidence. The delegate found the respondent had not established a ground of opposition under the Act, and directed that the trade mark application proceed to registration one month from the date of his decision. The delegate’s finding and reasons on costs were brief. He said (at [35]-[37] of his reasons):35.In the event that he was successful, the Applicant claimed “costs for all legal work undertaken calculated on a solicitor-client basis (even though the Applicant is representing himself), since the Applicant is an Australian legal practitioner…”36.Section 105 of the Act envisages a situation where full costs may be awarded outside the scale provided under Schedule 8 of the Trade Marks Regulations 1995. However, that section is not relevant to the current opposition. The applicable scale is that under Schedule 8 to the Regulations.37.As the Applicant is representing himself he cannot claim costs incurred (See Cachia v Hanes [1994] HCA 14; (1994) 179 CLR 403 and Bartlem Pty Ltd v Fisher 44 IPR 670). There does not appear to be any out of pocket expenses (such as hearing fees paid) that may be awarded to the Applicant. I decline to make an award of costs.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

In the proceeding before the Registrar, the respondent was granted a number of extensions of time to file supporting evidence, which was ultimately filed on 18 January 2013. That material consisted of a statutory declaration by a Mr Norman Bruce Morcom, the respondent’s patent and trade marks attorney. Mr Beling then put on responding material, including what he described in his affidavit on this appeal as “only … preliminary submissions on the question of costs”. Despite the respondent applying for an extension of time to file evidence in reply, no such evidence was forthcoming. The time taken by the respondent in filing its evidence was one of the matters the applicant highlighted on the appeal to this Court as justifying an order for costs above scale. Mr Beling filed further submissions in the proceeding before the Registrar on 18 March 2014.THE REGISTRAR’S DECISION On 16 October 2014, more than three years after the application for registration, a delegate of the Registrar determined that the respondent had not established any ground of opposition under the Act and directed that the applicant’s trade mark application could proceed to registration. It is apparent from the delegate’s reasons that the respondent provided little material to substantiate its opposition to the registration of the trade mark. This was another factor relied on by Mr Beling on the appeal as justifying a larger order for costs: in substance he submitted the respondent had delayed the entire process without submitting any meaningful material in opposition. The delegate considered the trade mark application and the costs issues on the papers. As I set out below, the applicant deposed on the appeal that after the written submissions were filed he was given no further opportunity to make submissions about costs prior to the issuing of the written decision and reasons. I accept that evidence. The delegate found the respondent had not established a ground of opposition under the Act, and directed that the trade mark application proceed to registration one month from the date of his decision. The delegate’s finding and reasons on costs were brief. He said (at [35]-[37] of his reasons):35.In the event that he was successful, the Applicant claimed “costs for all legal work undertaken calculated on a solicitor-client basis (even though the Applicant is representing himself), since the Applicant is an Australian legal practitioner…”36.Section 105 of the Act envisages a situation where full costs may be awarded outside the scale provided under Schedule 8 of the Trade Marks Regulations 1995. However, that section is not relevant to the current opposition. The applicable scale is that under Schedule 8 to the Regulations.37.As the Applicant is representing himself he cannot claim costs incurred (See Cachia v Hanes [1994] HCA 14; (1994) 179 CLR 403 and Bartlem Pty Ltd v Fisher 44 IPR 670). There does not appear to be any out of pocket expenses (such as hearing fees paid) that may be awarded to the Applicant. I decline to make an award of costs.

Ratio Decidendi

Legal Principle Established

The exception was subjected to rational and persuasive criticism in Dobree v Hoffman (1996) 18 WAR 36, especially at 41-48. I note but one of the persuasive observations made by Parker J (with whom Rowland and Steytler JJ agreed) at 41:While each member of the court [in Chorley] was adamant they were not establishing a privilege for solicitors, it must be accepted that non-solicitors would have difficulty seeing the result in any other terms, a perception which reflects poorly on the court and the administration of justice. By way of example, were a chartered accountant and a solicitor to engage in litigation against each other and were each to conduct their own case, from the viewpoint of the accountant there can be neither fairness nor logic in a rule of practice under which, should the accountant win, there would be no recompense for the time and effort expended by the accountant or his or her clerk, in conducting the case, but should the accountant lose the solicitor would be recompensed for the time and effort put in by the solicitor and his or her clerk, calculated on a basis which also allows the solicitor the ordinary profit as though acting for a client. The reality is unfairness and a privileged position for the court's officers.CONSIDERATION Although recognised as anomalous, in circumstances where courts have power to award costs, it is well established that this power may be exercised in favour of a self-represented party where that party is a lawyer. I have no difficulty in adding to the many judicial voices who have said this exception is unjustified, especially in contemporary litigation where it ignores the other aspects of the relationship of lawyer and client and the contractual basis for a party being liable to her or his lawyer for the cost of work performed. Lawyers, like anyone else, are capable of retaining legal representation if they wish to, and should, like anyone else, incur liability for such representation. If a lawyer wishes to represent herself or himself, in my opinion she or he should be treated like any other self-represented party. That is not, however, the law. Despite the persuasiveness of Dobree, and the fact that no such exception applies in Western Australia, so far as decisions of this Court are concerned the solicitor litigant exception continues to be recognised. The issue is whether the exception should be taken to apply to s 221 of the Act. There is no reported decision which has considered this issue. It is, however, difficult to see a principled basis on which a distinction could be made between the power in s 221 of the Act and the other statutory powers to award costs to which the principles have been applied. As the cases to which I have referred above demonstrate, the statutory power to award costs in the Federal Court of Australia Act has been seen as affected by the principles in Cachia and Guss. By s 201 of the Act, the Registrar has the powers and functions given to her under the Act, the Regulations or any other relevant act or regulations. Section 202 gives the Registrar some express powers and functions:202 Registrar’s powersThe Registrar may, for the purposes of this Act:(a) summon witnesses; and(b) receive written or oral evidence on oath or affirmation; and(c) require the production of documents or articles; and(d) award costs against a party to proceedings brought before the Registrar; and(e) notify, as he or she considers fit, any person of any matter that, in his or her opinion, should be brought to the person’s notice.