Clark Stasiw and Australian Securities and Investments Commission The Trustee for Mackay Force Trust OTHER PARTY
[2015] AATA 328
•15 May 2015
[2015] AATA 328
Division GENERAL ADMINISTRATIVE DIVISION File Number(s)
2014/4208
Re
Clark Stasiw
APPLICANT
And
Australian Securities and Investments Commission
RESPONDENT
And
The Trustee for Mackay Force Trust
OTHER PARTY
DECISION
Tribunal The Hon. R Nicholson, Deputy President
Date 15 May 2015 Place Perth 1. The decision under review dated 12 August 2014 is set aside.
2. In substitution, the Tribunal sets aside the decision to register the disputed business name ‘Solar Repairs Perth’ and refuses the application for registration of that name as a business name.
......(Sgd) Hon. R Nicholson..................................................................
The Hon. R Nicholson, Deputy President
CORPORATIONS- Business names register – objection to registration of business name – unavailability of business name which identical or nearby identical to registered company name – whether Business Names Determination provides precise and exhaustive mechanism to decide objection – Determination limited to setting matters to be disregarded – manner in which comparison is to be carried out in absence of provision of matters to be considered.
LEGISLATION
Act Interpretation Act 1901 (Cth) – s 15AA
Business Names Registration Act 2011 (Cth) – s 3 – s 5(1) – s 6(1) – s 16(3) – s 17(2) – s 25 – s 25(a)(ii) – s 26 – s 28(6) – s 57(1) – s 57(6) – s 58(1) – s 66(1) – s 66(2)
CASES
Alcan (NT) Alumina Pty Ltd v Commissioner of Territory Revenue (2009) 239 CLR 27
Certain Lloyd’s Underwriters v Cross (2012) 248 CLR 378
Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355
Myenvironment Inc v VicForests [2013] VSCA 356; (2013) 306 ALR 624
Re B & L Whittaker Pty Ltd and Australian Securities and Investments Commission [2014] AATA 302; (2014) 106 IPR 361
Re Smith and Australian Securities and Investments Commission [2014] AATA 192
Re Swinburne and Australian Securities and Investments Commissions [2014] AATA 602
SECONDARY MATERIALS
Business Names Registration (Availability of Names) Determination 2012
Corporations Regulations 2011
Macquarie Dictionary (5th ed, Macquarie Library, 2009)
REASONS FOR DECISION
The Hon. R Nicholson, Deputy President
15 May 2015
The applicant applies to the Tribunal pursuant to s 58(1) of the Business Names Registration Act 2011 (Cth) (‘the BNR Act’) for review of a decision made on 12 August 2014 to affirm the decision to register the name ‘Solar Repairs Perth’ ‘(the Disputed Business Name’).
On 8 January 2003 the applicant, as the sole director, secretary and shareholder of Solar Repairs Pty Ltd (‘the Company Name’) registered that name.
On 8 August 2013 the Other Party applied to the respondent to register the business name ‘Solar Repairs Perth’ (‘the Disputed Business Name’) pursuant to the BNR Act. The respondent registered the Disputed Business Name to the Other Party on 9 October 2013.
On 11 October 2013 the applicant’s company Biotech Medical (Aust) Pty Ltd applied to the respondent to register the business name ‘Solar Repairs’ (the applicant’s Business Name). On 13 October 2013 the respondent registered the applicant’s Business Name.
On 11 July 2014, shortly after becoming aware of the Disputed Business Name, the applicant applied to the respondent pursuant to s 57(1) of the BNR Act seeking an internal review of the decision to register the Disputed Business Name.
On 12 August 2014, following an internal review, the respondent’s delegate affirmed the respondent’s decision to register the Disputed Business Name.
The applicant then applied for the present review.
The applicant was called as a witness. The respondent did not call any witnesses.
In addition to the BNR Act, reference will also be made to the Business Names Registration (Availability of Names) Determination 2012 (the Determination) and the Corporations Regulations 2001.
APPLICANT’S EVIDENCE
The applicant testified that the applicant’s Company repaired solar hot water systems and solar power systems. He stated it was the largest independent solar hot water repair company in Western Australia and was located in Perth. The company has three trucks, many vehicles and vans. They fix and replace hot water systems, thermostats, tanks, panels, parts, valves.
In respect of the applicant’s Business Name, the applicant said that it was registered by Biotech Medical (Aust) Pty Ltd.
The applicant has known the Other Party since about mid-2013 through Mr McKay and knows him as a dealer of Conergy, a solar hot water company.
In cross-examination the applicant testified that as the sole director of Biotech he had been trading under the name Solar Repairs since about the year 2000.
Further the applicant said that his company had done some regional work, in Pinjarra, Mandurah and Lancelin, but did not elsewhere.
Before the registration of the applicant’s Company Name he had been giving some consideration to expanding the trading activities of his business.
He also testified that he had registered a number of business names of Solar Repairs, qualified in each case by the name of a place in Australia. He thought he had done this last year. This was after he had been told ‘another company was trading as my name’ in late 2013. He had talked to other people in the industry outside Western Australia. He confirmed the registration of 10 such business names. He had not yet commenced trading under any of these.
The applicant testified that he had taken steps a couple of years ago to apply for the name Solar Repairs as a trademark.
The applicant said that he took the actions in relation to the additional business names and the trademark because he considered that he had right or entitlement to trade under the name Solar Repairs.
In re-examination the applicant testified that he had personally entered the information into the computer to complete the application registrations for Biotech-Medical (Aust) Pty Ltd and for Solar Repairs Pty Ltd. He considered these two companies as one and the same entity.
He understood that if he registered a name it would be his name and no one else’s. Because he thought that registration was a protective measure, he registered the additional business names in mid-2014. He considered a company and a business were one and the same thing.
APPLICANT’S CONTENTIONS
The applicant contends that the sole issue requiring determination in this proceeding is whether the Disputed Business Name (Solar Repairs Perth) is identical or nearly identical to the applicant’s company name (Solar Repairs Pty Ltd) for the purposes of the BNR Act.
In support of the applicant’s contention that the answer to this issue is ‘yes’, reliance is placed on the registration of the applicant’s company name some 11 years prior to the registration of the Disputed Business Name.
Further the applicant states that the decision under review was legally flawed in that the respondent’s delegate incorrectly compared the Disputed Business Name to the applicant’s Company Name and in doing so applied the wrong principles, being those applicable to comparison of business names.
In the applicant’s submission the Disputed Business Name is ‘nearly identical’ to the applicant’s Company Name. Therefore the Disputed Business Name was not available to be registered to the Other Party for the purposes of s 25 of the BNR Act.
Accordingly the applicant contends that the decision under review should be set aside and in substitution the Tribunal should set aside the decision to register the Disputed Business Name and refuse the registration of it on the basis of reasoning put forward by Deputy President Alpin in Re Swinburne and Australian Securities and Investments Commission [2014] AATA 602.
The applicant does not contend that the decision in Re Swinburne is binding. On the contrary, the applicant accepts that all of the decisions of the Tribunal on this aspect of the Act can be distinguished on the basis of their facts as they all relate to comparison of a registered business name with another business name. Here the comparison is between a registered company name and a later registered business name. The other two decisions, being ones on which the case of the respondent relies, are Re Smith and Australian Securities and Investments Commission [2014] AATA 192 and Re B & L Whittaker Pty Ltd and Australian Securities and Investments Commission [2014] AATA 302; (2014) 106 IPR 361.
In the submission of the applicant it is unnecessary for the Tribunal here to consider the interpretive approach in Smith or Whittaker because both decisions turned on the presence (or absence) of a particular word within the Schedule referred to in s 6 of the Determination, applicable only when comparing business names to business names. The applicant argues that the purposive approach adopted in Swinburne is consistent with s 15AA of the Acts Interpretation Act 1901 (Cth) and should be the preferred.
RESPONDENT’S CONTENTIONS
The respondent accepts that none of the three decided cases – Smith, Whittaker or Swinburne – considered the application of the terms ‘identical or nearly identical’ in the exercise of comparing a business name with a company name registered on the national company register.
The respondent argues that, contrary to the approach taken in Swinburne, the relevant terms take their meaning from the particular meaning and operation of the rules set out in the Determination.
Further, the respondent says that the decision in Swinburne should be distinguished. Firstly, because the BNR Act and the Determination do not require an interpretation of the words ‘nearly identical’ such that they suggest that the rules in the Determination are not exhaustive. Additionally, Swinburne related to the comparison of a business name with another business name whereas the decision subject to review here involves comparison of a company name with a business name requiring the application of a different statutory text and a distinct statutory meaning to the relevant facts.
The respondent’s central contention is that the rules set out in the Determination are clear and unambiguous for the purposes of whether a business name is available for registration under the BNR Act. After the items are disregarded and the assessment is complete there is left for consideration the difference between the two names. In this case the distinguishing word is ‘Perth.’ Therefore says the respondent the Business Name was available for registration under s 25(a)(ii) of the BNR Act.
STATUTORY AND REGULATORY PROVISIONS
The BNR Act contains the following provisions said to be relevant to this application:
a.In the Dictionary in s3 the following:
i. available: a business name is available to an entity in the circumstances set out in:
1. section 25 and subsection 31(3) of this Act; and
2. item 21 of Schedule 1 to the Transitional Act.
ii. identical: means identical under rules made by the Minister under section 26.
iii. nearly identical: means nearly identical under rules made by the Minister under section 26.
b.In Division 5 the Objects of the BNR Act are set out in s16:
(1) The objects of this Act are:
(a) to ensure that if an entity carried on a business under a business name, those who engage or propose to engage with that business can identify the entity and how the entity may be contacted; and
(b) to remove the inconvenience caused by the registration of business names under the law of more than on jurisdiction within Australia.
(2) These objects are achieved by requiring an entity that intends to carry on a business under a business name to register the business name on a nationally established and maintained register of business names.
(3) The objects of this Act are also:
(a) to avoid confusion by ensuring that business names that are identical or nearly identical are not registered; and
(b) to ensure that business names that are undesirable (for example, because they are offensive) are not registered; and
(c) to ensure that business names that should be restricted for any other reason (for example, because they might mislead consumers) are not registered.
(4) The objects mentioned in subsection (3) are achieved by rules dealing with the availability of business names.
c.In s 17(2) of the same Division it is provided:
‘An entity does not acquire property in a business name, or in a word or an expression that constitutes or is included in a business name, because the name is registered to the entity under this Act or the Transitional Act.’
d.Relevantly, s 25 provides that a business name is available to an entity if:
(a) ‘the name is not identical or nearly identical to:
(ii) a name that is reserved or registered under the Corporations Act 2001 for another body.’
e.Section 26 provides the Minister may, by legislative instrument, make rules for determining whether a name is identical or nearly identical to another name.
f.Section 66(1) provides that the respondent may arrange for the use, under its control, of computer programs for any purposes for which the respondent may make decisions under the BNR Act or Transitional Act other than under ss 57(6) or subitem 28(6) of Schedule 1 to the Transitional Act. Section 66(2) provides that a decision made by the operation of a computer program under an arrangement made under ss 66(1) is taken to be a decision made by the respondent.
Section 4 of the Determination provides that for section 26 of the BNR Act, the rules for determining whether a business name is identical or nearly identical to another name are set out in Part 2. Division 1 of that Part relates only to determining identicality or near identicality to names other than company names. Division 2 of that Part provides:
When comparing a business name with a company name to determine whether the names are identical or nearly identical, the rules in Part 1 of Schedule 6 to the Corporations Regulations 2001 (Rules for ascertaining whether names are identical) apply as if they had been made for subparagraph 25 (a) (ii) of the Act.
The Corporations Regulations provide in comparing one name with another certain matters are to be disregarded. Relevantly, among those are the use of ‘Pty’ and ‘Ltd,’ and also ‘the type, size and case of letters…used in one or both names.’
RESOLVING THE CONTENTIONS
The respondent argues that the statutory and related provisions are in terms which make clear beyond argument that the legislature has occupied the field and made mandatory the application of the tests of identicality and near identicality for which it has provided, leaving no room for a decision maker to weigh factors of any sort beyond those for which such provision has been made. There is no question that the legislation was read in that manner in the decisions of two Deputy Presidents of this Tribunal in Smith and Whittaker.
The different view, at least where two business names were under consideration, was in Swinburne. Accepting that decision is not a binding authority on this application where the registered name is a corporate name, it is nevertheless necessary to understand the reasoning in that decision in order to properly consider the submissions.
In Swinburne the Deputy President accepted that the definitions of the terms ‘identical’ and ‘nearly identical’ in s 3 of the BNR Act are exhaustive. Further that the word ‘under’ when used in those definitions should be taken to mean that the meaning of those terms is governed by the rules. However, the Deputy President then asked what do the rules provide, saying that the definitions beg the question. Her position was that the fact that the definitions exhaustively define those terms by reference to the rules does not mean that the rules are exhaustively determinative of the questions of whether names are ‘identical’ or ‘nearly identical.’ She pointed to the prefatory words employed in both ss5(1) and 6(1) of the Determination which refer to ‘when comparing’ one name with another name ‘to determine whether’ the names are identical or nearly identical. She reaches the preliminary conclusion that these words point to the fact that an exercise in comparison is to be undertaken. She states that it is clear from the express terms of ss 5(1) and 6(1) that those rules are of a prescriptive character and are not, as the respondent had there submitted, exhaustively determinative of the question of whether names are identical or nearly identical. Rather, in her view, the rules merely require that certain matters be taken into account in making the requisite comparison.
The respondent submits that the applicant’s submissions should be not accepted because they do not observe the principles applicable to the character of the Determination. It argues that the applicant has added two glosses to the accepted principles. The first is the introduction of a test as to what is the natural and ordinary meaning of the language enhanced in a statutory framework. The second is a primacy placed on a purposive approach and the erection of s 15AA of the Act Interpretation Act 1901 (Cth) beyond its legitimate role. The respondent relies upon what was said by French CJ and Hayne J in Certain Lloyd’s Underwriters v Cross (2012) 248 CLR 378 at 388-390 where their Honours emphasized that statutory construction must begin with consideration of the text itself and that the identification of statutory purpose and legislative intention is the product of those processes, not the discovery of some subjective purpose or intention. The respondent argues that this statement qualifies what was said in Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 and draws upon what was stated in Alcan (NT) Alumina Pty Ltd v Commissioner of Territory Revenue (2009) 239 CLR 27 at 46-47 [47]. Reliance is also placed by the respondent on Myenvironment Inc v Vicforests [2013] VSCA 356; (2013) 306 ALR 624 at 624-630 per Warren CJ and at 661-668 per Tate JA. With these submissions in mind, I turn to the statutory text here.
The provision in the rules as it appears in Division 2 of the Determination, addresses only matters to be disregarded when comparing business names with company names. The matters appearing in Part 1 of Schedule 6 of the Corporation Regulations are necessarily limited to the same type of matters. The result is that when matters have been disregarded as these provisions require, the decision-maker has no further directive on further steps to be taken in terms of matters to be considered.
The Disputed Business Name Solar Repairs Perth is here to be compared with the Company Name Solar Repairs Pty Ltd. Applying the matters which must be disregarded as specified in section 7 of Division 2 of the Determination, has the effect of requiring ‘Pty’ and ‘Ltd’ to be disregarded. It also requires a disregarding of differences in typeface.
It is apparent from both section 7 in Division 2 of the Determination and the opening words of Part 1 of Schedule 6 of the Corporations Regulations that what is required is a comparison to be made between the Disputed Business Name and the Company Name. However, in the case of a company name there is no statutory provision in relation to the matters to be taken into account in that comparison.
What is apparent, however, is that a comparison must be made. This appears from the opening words of s 7 of Division 2 of the Determination (‘when comparing a business name with a company name…’) and of Part 1 of Schedule 6 of the Corporation Rules (‘in comparing one name with another…). I am left in no doubt by these provisions that it is expected that there will be a comparison of the business name in issue with the company name in issue. This is simply an application of the statutory language used in those provisions. It is not an application of any subjectively derived purpose applicable to the legislation and rules.
It is then clear from the same provisions what matters are to be disregarded. Thereafter there is no provision, such as appears in ss 5 or 6 of the Determination in the case of comparison of a business name with another business name, directing attention to matters to be considered.
It follows in my view from examination of the texts relevant here that the BNR act of comparison has not therefore taken place or, if it has to any extent, it is not complete.
That position is reached without reliance upon the reasoning in Swinburne. Rather it follows in my view from the provisions of the applicable law.
I accept the submission for the applicant that the Tribunal must prefer an interpretation of the terms ‘identical’ and ‘nearly identical’ which best achieves the purposes or objects of the BNR Act. In particular, the objects in s 16(3) of that Act to avoid confusion and to ensure that business names that might mislead consumers should not be registered. I do not read s 16(4) which provides that the objects in s 16(3) are achieved by rules dealing with the availability of business names as precluding the application of the objects in areas of law lying beyond the provisions in the rules.
Those purposes or objects are those enacted in the relevant text. As has been said, they are not the product of some subjective search.
Approaching the concepts of ‘identical’ and ‘nearly identical’ I consider they are separate concepts.
The applicant rightly accepts that, based on the ordinary meaning of ‘identical’ the Disputed Business Name is not identical to the applicant’s Company Name. This concession is founded on the definition of ‘identical’ in the Macquarie Dictionary (5th edition) as, among other things, ‘corresponding exactly in nature, appearance, manner etc’ and ‘the very same’.
The question of what is ‘nearly identical’ is a question of fact to be informed by the objects of the BNR Act, particularly that which relates to the avoidance of confusion. I agree with Deputy President Alpins when she stated in Swinburne :
‘A name is “nearly identical” to another name if it almost, but not quite, achieves a state of identity with that name…The collocation “identical or nearly identical” therefore, by operation of ss 24(1) and 25(a)(i) of the Act, precludes registration if a name is either precisely the same as a registered name or is close to being so. It follows that the fact a name is merely similar to a registered name will not preclude registration.’
‘Similarity’ is defined by the Macquarie Dictionary (5th edition) as ‘having likeness or resemblance, especially in a general way.’ I agree with the submission of the applicant that there is no general resemblance between the two names in this application; they are identical but for the addition of one word to the Disputed Business Name.
On the question of what is to be understood by ‘confusion’ I also agree with Deputy President Alpins when she stated:
‘In my view, the relevant confusion which is intended to be avoided by the refusal of registration of names that are identical or nearly identical to registered names is confusion first in the sense of a failure to distinguish between the business carried on by the entity carrying on business under a registered name and that carried on by another entity applying for registration of an identical or nearly identical name, either by mistaking one business for the other, mistakenly believing that they are both the same business or mistakenly believing that they are both carried on by the same entity. It also encompasses confusion in the sense of being uncertain as to which business one is engaging with or proposing to engage with or the identity of the entity carrying on such a business…’
I accept the applicant’s submission that due to the closely related services provided by the applicant’s business and the Other Party’s business and geographical proximity of the two, confusion is likely to arise for both consumers and suppliers due to a failure to distinguish between the applicant’s business and the Other Party’s business or by mistaking one business for the other or by mistakenly believing that the businesses are the same or are in some way related.
Accordingly I agree in the conclusion submitted by the applicant that the Disputed Business Name is ‘nearly identical’ to the applicant’s Company Name for the purposes of section 25(a)(ii) of the BNR Act according to the ordinary meaning of that term having regard to its legislative purpose.
I therefore find that the Disputed Business Name was not available to be registered to the Other Party for the purposes of section 25 of the BNR Act.
CONCLUSION
For these reasons I conclude that the decision under review should be set aside and, in substitution, the Tribunal will set aside the decision to register the Disputed Business Name and refuse the application for registration of the Disputed Business Name.
I certify that the preceding 56 (fifty -six) paragraphs are a true copy of the reasons for the decision herein of The Hon. R Nicholson, Deputy President ....(Sgd) A Tran....................................................................
Associate
Dated 15 May 2015
Date(s) of hearing 22 April 2015 Date final submissions received 27 April 2015 Solicitors for the Applicant Mr R Lilley Counsel for the Respondent Mr R L Hooker Solicitors for the Respondent Mr M Povey Other party In Person
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