Concerted Pty Ltd and Minister for Defence

Concerted Pty Ltd and Minister for Defence [2021] AATA 2950 (19 August 2021)
Division:General Division
File Number(s): 2020/5259
Re:Concerted Pty Ltd
APPLICANT

AndMinister for Defence
RESPONDENT

DECISION
Tribunal:Deputy President J W Constance
Date:19 August 2021
Place:Sydney

The reviewable decision made 7 April 2020, to refuse consent to the Applicant using the prohibited words Defence Force, is affirmed.
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Deputy President J W Constance
CATCHWORDS
DEFENCE REGULATIONS – use of prohibited words – Defence Force – whether the Applicant should be granted consent to use the words “Defence Force” in conducting its business of providing a corporate risk management service, including the registration and use of the domain name – matters to be considered – where likelihood that use of the words Defence Force will be confusing for members of the public – decision affirmed
LEGISLATION
Defence Act 1903 (Cth) s 124
CASES
Re Drake and Minister for Immigration and Ethnic Affairs (No 2) (1979) 2 ALD 634
SECONDARY MATERIALS
Australian Defence Force Brand Manual 2016
Defence Regulation 2016 r 74, 75, 76, 77, 78
Explanatory Statement to Defence Regulation 2016
REASONS FOR DECISION
Deputy President J W Constance
19 August 2021
A. INTRODUCTION

Regulations made in accordance with the Defence Act 1903 (Cth) (the Act) prohibit the use of certain words and letters in defined circumstances without the consent of the Minister for Defence, the Respondent to this application. Included in the list of words is “Defence Force”.
The Applicant conducts a business which provides corporate risk management services to other businesses. In February 2020 the Applicant sought the consent of the Minister to use the words “Defence Force” for various purposes in connection with its risk management business.
On 7 April 2020 a delegate of the Minister refused the Applicant’s request. I shall refer to the decision to refuse the request as the reviewable decision.
The Applicant has applied to the Tribunal to review the reviewable decision. For the reasons which follow the decision will be affirmed.
B. LEGISLATION , REGULATIONS AND RELATED DOCUMENTS
Defence Act 1903 (Cth)
Section 124 of the Act provides that the Governor-General may make regulations to give effect to the Act, including matters relating to:
The prohibition of the use, except as prescribed, of a word, group of letters, object or device which is descriptive or indicative of:
(i) a part of the Naval Forces, Military Forces or Air Forces of a part of the King’s dominions; or
(ii) a service or body of persons associated with the defence of Australia …… .[1]
[1] Paragraph 124(1)(nc).
Defence Regulation 2016
In accordance with this section the Governor-General has made Defence Regulation 2016, which provides, in part:
74 Prohibited words
The following are prohibited words:
(a) Active Reserve;
(b) Air Force;
(c) Air Force Reserve;
(d) Army Reserve;
(e) Australian Air Force;
(f) Australian Air Force Reserve;
(g) Australian Army;
(h) Australian Army Reserve;
(i) Australian Defence Force;
(j) Australian Defence Force Reserves;
(k) Australian Flying Corps;
(l) Australian Imperial Forces;
(m) Australian Military Forces;
(n) Australian Navy;
(o) Australian Regular Army;
(p) Defence Force;
(q) Defence Force Reserves;
(r) Defence Reserves;
(s) Her Majesty’s Australian Ship;
(t) High Readiness Reserve;
(u) HMA Ship;
(v) Naval Reserve;
(w) Permanent Air Force;
(x) Permanent Military Forces;
(y) Regular Army;
(z) Royal Australian Air Force;
(za) Royal Australian Naval Reserve;
(zb) Royal Australian Navy;
(zc) Specialist Reserve;
(zd) Standby Reserve.
75 Prohibited letters
The following are prohibited letters:
(a) ADF;
(b) AFC;
(c) AIF;
(d) AMF;
(e) ARA;
(f) HMAS;
(g) RAAF;
(h) RAN;
(i) RANR.
76 Use of prohibited words or letters
(1) A person commits an offence if:
(a) the person uses prohibited words or prohibited letters; and
(b) the use is in connection with:
(i) a trade, business, calling or profession; or
(ii) an organisation or body of persons; and
(c) the use is not in accordance with a consent obtained under section 77.
Penalty: 10 penalty units.
(2) Strict liability applies to paragraph (1)(c).
77 Consent to use prohibited words or letters
Application
(1) A person may apply to the Minister for consent to use prohibited words or prohibited letters in connection with:
(a) a trade, business, calling or profession; or
(b) an organisation or body of persons.
(2) An application under subsection (1) must:
(a) be in writing; and
(b) set out the prohibited words or prohibited letters to which the application
relates; and
(c) set out the proposed use of the prohibited words or prohibited letters.
Matters to which the Minister must have regard
(3) Without limiting the matters to which the Minister may have regard when deciding whether to approve the application, the Minister must have regard to the following:
(a) either:
(i) the trade, business, calling or profession of the applicant; or
(ii) the purposes, constitution and structure of the applicant;
(b) if the applicant has previously been given consent to use prohibited words or prohibited letters—the way in which the applicant used the prohibited words or prohibited letters to which the consent related;
(c) the period for which consent is sought.
Minister may request further information
(4) The Minister may, by written notice, require the applicant to give the Minister further information in connection with the application.
Consent may be subject to conditions
(5) Consent may be given subject to conditions, including but not limited to conditions about the following matters:
(a) notifying the Minister about any change to:
(i) the purposes, constitution or structure of the applicant; or
(ii) the trade, business, calling or profession of the applicant; or
(iii) any other matter, to the extent that the change may affect the ability of
the applicant to use the prohibited words or prohibited letters in the
applicant’s trade, business, calling or profession;
(b) the period for which consent is given;
(c) the way in which the applicant may, or may not, use the prohibited words or prohibited letters to which the consent relates;
(d) the protection and use of the prohibited words or prohibited letters to which the consent relates.
78 Review by Administrative Appeals Tribunal
Applications may be made to the Administrative Appeals Tribunal for review of:
(a) a decision of the Minister under section 77 to refuse an application for consent; or
(b) a decision of the Minister under section 77 relating to a condition.
Explanatory Statement to Defence Regulation 2016
The Explanatory Statement to the Regulation provides in part:
222. This Part replaces the Defence (Prohibited Words and Letters) Regulations 1957. The Part provides that certain words and letters cannot be used in trade, business, a calling or profession, or by an organisation or body of persons, without the consent of the Minister. The prohibited words and letters describe current or former parts of the Defence Force. The purpose of prohibiting the use of these words and letters is to prevent people from claiming an association with the Defence Force for the purposes of commercial gain, to avoid causing confusion to consumers who might otherwise think that a particular business or organisation is sponsored by or associated with the Defence Force, and to protect the Defence Force’s reputation from a situation where they are inadvertently associated with a business or organisation.
…
229. Most applications for consent under the Defence (Prohibited Words and Letters) Regulations 1957 are made by applicants who have been referred to Defence by IP Australia (when the applicant attempted to lodge a trademark), or by ASIC (when the applicant attempted to register a business name). In most cases, consent has been granted, as the use of the words or letters are either unrelated to the Defence Force or are purely descriptive of the activities to be undertaken by the applicant. A situation where consent might be refused is where the use of the words or letters suggests an endorsement by the Defence Force of the applicant’s activities, or an association with the Defence Force, where that endorsement or association does not exist.[2]
[2] Exhibit R1, S1 at 53-54.
Australian Defence Force Brand Manual 2016
The Manual came into effect on 27 June 2016. The stated purpose of Chapter 5 of the Regulation “is to establish the policy and procedure related to the use and consent to use words and letters relevant to more than one Service.”[3]
[3] Exhibit R1 at 71; Chapter 5, paragraph 5.1.
The Manual provides further:
Policy statement
5.2 The ADF is committed to protecting its reputation and the integrity of the ADF brand. The words and letters listed in the Regulations are integral to the ADF identity and, due to their specific nature, it is not appropriate for them to be used to identify external entities or where they may inaccurately imply ADF or Australian Government authority, endorsement, or an official connection with the ADF.
Use of words and letters
5.3 Joint Service words and letters are used to identify the ADF and their integrity is essential to the ADF reputation and brand.
5.4 Joint Service words and letters are not be used in connection with a trade, business, calling or profession, or by an entity where they may imply ADF authority, an official connection between the ADF and the entity, or may bring the ADF into disrepute.
…
Considerations
5.7 When considering whether to consent or refuse an application to use joint Service words and letters, the VCDF or VCDF delegate will consider:
a. The purpose for which the words or letters would be used
b. The purposes, constitution and structure of the entity
c. The trade, business, calling or profession of the entity
d. The financial resources of the entity, to the extent that those resources affect its ability to use the words or group of letters in its trade, business, calling or profession
e. If the entity has previously received a consent under the Regulations and the way in which the entity used the words or letters to which the consent related
f. The period for which consent is sought
g. Other matters including
(1) The potential degree of association use of the words or letters will have with the ADF
(2) The potential affect the use of the words or letters could have upon the ADF’s reputation, whether positive or adverse
(3) The bona fides of the applicant
(4) The need to avoid favouring or disadvantaging private commercial interests or political, charitable, ideological or religious causes.
C. BACKGROUND
The facts set out in this Part are not in dispute and I make findings of fact accordingly.
The Applicant is a management consultancy; it does not operate within the defence industry. As part of its business, the Applicant provides a corporate risk management service which is delivered by a select group of professionals working together as a multidisciplinary team. The members of the team make up a force providing a risk management solution for clients.[4]
[4] Exhibit R1 at T5.
By email of 27 February 2020 the Applicant applied for the consent of the Minister to use the words Defence Force to promote its corporate risk management service and to register and utilise the domain name >
By letter of 7 April 2020 a delegate of the Minister refused the consent requested.[5]
[5] Exhibit R1 at T3.
In the application to the Tribunal for review of the reviewable decision, Mr Feteris, the Chief Executive Officer of the Applicant, stated:
Included in my Minister Request was a substantial explanation supporting an undertaking with respect to "Confusion, passing off and Australian Defence Force reputation" (my Undertaking).
The basis for the Decision to not provide the consent as outlined in the decision letter is the very risk that I sought to address in my Undertaking. That is to say, the basis for the Decision is that the public maybe "misled into believing" my business is associated with The Australian Defence Force.
For Defence to not provide this consent is unreasonable because it means that I may not be able to operate the global "defence force" brand form[sic] Australia because my business is domiciled in Australia.
Also, any idea that people will be misled by my business will be easily allayed when any party goes to the website. I am not seeking to use the term "Defence" or "Australian Defence Force", but, rather, "defence force" in relation to a global brand that is, as I say, a well established generic term in the risk management industry.
The Minister could also seek specific conditions to particularise further the way in which passing off or misleading conduct does not occur, for example by way of a disclaimer as relates to Australia, or other conditions as provided for in section 77(5) of the Defence Regulation 2016.[6]
[6] Exhibit R1 at T1.
D. ISSUES FOR DETERMINATION
The following issues arise for determination.
(i)Should the Applicant be granted consent to use the words “Defence Force” in conducting its business of providing a corporate risk management service, including the registration and use of the domain name not, should the Applicant be granted consent to use the words Defence Force for the sole purpose of registering the domain name align="center">E. EVIDENCE AND FURTHER FINDINGS OF FACT
Evidence of Mr Feteris, Chief Executive Officer of the Applicant
Mr Feteris gave evidence at the hearing and affirmed statements of fact made in documents filed in these proceedings on behalf of the Applicant. I am satisfied he was an honest witness and I am satisfied of the facts set out in the following four paragraphs. The Minister did not challenge this evidence.
In August 2016 the Applicant registered the domain name defenceforce.com.au. This registration expired in September 2020.[7] In the intervening period, Domain Administration Ltd, the governor of the Australian domain name space, advised the Applicant that it was required to obtain the Minister’s permission to use the words Defence Force before the lease of the name would be renewed. This was the situation irrespective of whether the words were being used by the Applicant.
[7] Exhibit A2.
The Applicant is the registrant of the following domain names which have been acquired over time as a global "brand set”:
·defenceforce.com
·defenceforce.co.nz and defenceforce.nz
·defenceforce.co.uk and defenceforce.uk.
The term “three lines of defence” is a generic risk management term used in presenting risk management frameworks and services globally. It refers to a risk control model that is used by, but not associated with, the Australian Defence Force.[8]
[8] Exhibit A3.
In a letter to the Minister for Defence dated 27 February 2020, in which the Applicant applied for the consent referred to, Mr Feteris stated, in part:
I note that I am experienced in managing intellectual property. I understand common law and registered trademarks as they relate to market confusion, and I understand the common law tort of passing off.
Not only is it my intention that CONCERTED's proposed defence force risk advisor solutions do not mislead any audience by suggesting an association with the Australian Defence Force, my firm belief is that it will be necessary to develop a brand presentation that clearly distinguishes itself from the Australian Defence Force, for the proposed CONCERTED brand solution to be effective.
That is to say, as a naming solution, the brand potential is to present the words in a context that an audience does not expect. To deliberately or inadvertently suggest, infer or mislead an audience to think that the Australian Defence Force is associated with the service would weaken this intended effect. These are issues of branding and service proposition. I have the professional skills and communication judgement to ensure any brand presentation sets itself apart from the Australian Defence Force, and, again, this is my firm intention.[9]
Previous consents given by the Minister for Defence to the use of names and letters in accordance with the Regulation
[9] Exhibit R1 at 19.
On 22 November 2018 the Minister gave consent to Redcliffe and Northside Rheumatology “for the use of the acronym “ranr” for your website….”.[10]
[10] Exhibit A5.
On 26 November 2018 the Minister for Defence gave consent to Adelaide Football Club Ltd to use the letters “AFC” in its domain name. One of the conditions of the consent was that the Club notify the Minister of any changes in the purposes of the club, particularly if there was a change in its primary purpose from a non-profit organisation to a commercial, “for profit” focus.[11]
[11] Exhibit A7.
On 25 June 2019 the Minister for Defence gave consent to the Australian Doctor’s [sic] Federation to continue to use the letters “ADF” for the Federation’s current web domain name, Exhibit A8.

F. THE APPLICANT’S ARGUMENTS

Mr Feteris put detailed submissions on behalf of the Applicant in documents filed on its behalf and in oral submissions at the hearing. The detail of those submissions has been considered in preparing these reasons.

In summary, the Applicant argues:

·a registered domain name must be active and resolve to a website for it to be indexed by search engines and present information in any form to members of the public;
·the Tribunal’s decision should be consistent with the Explanatory Statement to the Regulation;
·the Tribunal’s decision should be consistent with the policy contained in the Australian Defence Force Brand Manual;
·the Tribunal should have regard to similar decisions made by Ministers for Defence;
·the Applicant is agreeable to conditions being imposed on the use of the prohibited words;
·consent to use the words Defence Force should be given, even if consent to use the words in relation to risk management services is refused.

The conditions which are acceptable to the Applicant are:

(a)not include images or metaphors obviously associated with Defence (e.g. ships, planes, soldiers, war) in any marketing communications that include use of the words Defence Force. This does not include:
(i)images of base-jumping, mountaineering or other extreme adventure sports; or
(ii)the “three lines of defence” risk control model used by large organisations, financial institutions and promoted by regulators;

(b)only use the words Defence Force in association with risk management services or publishing risk management information;
(c)not use any domain name that includes the words Defence Force as an address of a website that presents commentary or information relating to the Australian Defence Force;
(d)present a disclaimer on the home page of any website that uses the words Defence Force in its domain name that provides services in Australia, such as “this service is not affiliated with the Australian Defence Force”;
(e)not allow any domain name that includes the words Defence Force and an “.au” suffix to resolve or forward to any website unless it is one that makes it clear that it is not associated with the Australian Defence Force.[13]
[13] Exhibit A1 at [3].

G. CONSIDERATION

I accept the proposition put on behalf of the Minister that the words “Defence Force” are synonymous with the Australian Defence Force and the three Services which constitute the Force. I accept also that the words are important to the Defence Force’s identity, reputation and brand.

G.1. Matters to be considered

There is very little guidance given to the decision-maker (in this case the Tribunal) as to the factors to be considered in making a decision to give or to refuse consent.

Matters required to be considered by regulation 77(3)

Regulation 77(3) provides that the decision-maker must have regard to certain matters, namely:

(a)the trade, business, calling or profession of the applicant;
(b)the purposes, constitution and structure of the applicant;
(c)the way in which the prohibited words and/or letters have been used, either with or without Ministerial consent;
(d)the period for which consent is sought.

Conditions referred to in regulation 77(5)

Some further limited guidance is provided in the non-exclusive list of conditions referred to in this subsection.
The specific references to conditions that may be imposed on the giving of consent indicate that the following may be relevant considerations:
·the ability of an applicant to use the prohibited words or letters in the applicant’s trade, business, calling or profession;
·the way in which an applicant proposes to use the prohibited words or prohibited letters.
Explanatory Statement 2016[14]
[14] Exhibit R1, S1 at 53-54.
The Explanatory Statement accompanied the Regulation.
The Statement includes:
The prohibited words and letters describe current or former parts of the Defence Force. The purpose of prohibiting the use of these words and letters is to prevent people from claiming an association with the Defence Force for the purposes of commercial gain, to avoid causing confusion to consumers who might otherwise think that a particular business or organisation is sponsored by or associated with the Defence Force, and to protect the Defence Force's reputation from a situation where they are inadvertently associated with a business or organisation.[15]
[15] Exhibit R1, S1 at 53 [222].
Australian Defence Force Brand Manual 2016
This is a policy document which is not binding on the Tribunal. However, a government policy should be followed unless there is good reason for not doing so.[16] In this application there is no reason not to apply the policy.
[16] Re Drake and Minister for Immigration and Ethnic Affairs (No 2) (1979) 2 ALD 634 at 642.
The Manual includes the following:
The ADF is committed to protecting its reputation and the integrity of the ADF brand. The words and letters listed in the Regulations are integral to the ADF identity and, due to their specific nature, it is not appropriate for them to be used to identify external entities or where they may inaccurately imply ADF or Australian government authority, endorsement, or an official connection with the ADF.[17]
[17] Exhibit R1 at 70-72.
In summary
From the above the following considerations may be relevant in an appropriate case:
othe trade, business, calling or profession of the applicant;
othe purposes, constitution and structure of the applicant;
othe way in which the prohibited words and/or letters have been used, either with or without Ministerial consent;
othe period for which consent is sought;
othe ability of the applicant to use the prohibited words or letters in the applicant’s trade, business, calling or profession, taking into account the financial resources of the applicant, if relevant;
othe way in which an applicant proposes to use the words or letters;
owhether use of the words or letters is likely to allow the applicant to claim an association with the Defence Force for the purposes of commercial gain;
othe potential degree of association the use of the words or letters will have with the Australian Defence Forces;
othe bona fides of the applicant in seeking to use the words and/or letters;
owhether use of the words or letters is likely to cause confusion to consumers who might otherwise think that a particular business or organisation is sponsored by or associated with the Defence Force;
owhether refusal of consent to use of the words or letters is likely to protect the Defence Force's reputation from a situation where it is inadvertently associated with a business or organisation;
owhether use of the words or letters is likely to inaccurately imply Australian Defence Force, or Australian Government authority, endorsement of, or official connection with, the Australian Defence Force;
othe need to avoid favouring or disadvantaging private commercial interests or political, charitable, ideological or religious causes;
owhether the imposition of conditions is appropriate.
The above is not intended to be an exhaustive list of considerations.
G.2. Reasoning
Based on the evidence of Mr Feteris, I am satisfied that the Applicant conducts a corporate risk management service which does not operate within the defence industry. However, there is nothing to prevent the Applicant seeking to operate within the defence industry in future.
I am satisfied also that the Applicant has not been given consent by the Minister to use the words “Defence Force” or the word “defenceforce” in a domain name. The Applicant seeks consent to use the words for an indefinite period.
The Applicant has used the words Defence Force to register a domain name without the consent of the Minister, but this registration has expired. The name was never activated.
As the Applicant has not used the words as part of its business activity, I accept the Minister’s argument that there are no commercial reasons which weigh in favour of the Applicant being granted the consent it seeks. The Applicant has been operating successfully without the use of the prohibited words and there is no evidence to suggest that it will be unable to continue to do so.
The Applicant has placed considerable reliance on previous consents given to the use of prohibited words. However, each application for consent must be determined on its merits. The relevant circumstances of applications may vary. In addition, a decision-maker (whether it be the Minister or the Tribunal) is not bound by previous decisions.
In this regard, I note that conditions have been imposed which required an applicant to notify the Minister if it changed its primary purpose to a commercial focus. It is clear that there was concern about the giving of consent to organisations operating on a “for profit” basis.
I have given significant weight to the likelihood that use of the words Defence Force, be it in a domain name or in documents issued by the Applicant, will be confusing for members of the public. Of the many names and letters prohibited by the Regulation, Defence Force is among those most closely associated with the Australian Defence Force.
I agree with the Minister that use of the domain name defenceforce.com.au will suggest to those using the internet that the Applicant’s business has some association with the Australian Defence Force. It is reasonable to infer that most people entering the words Defence Force, defence force or defenceforce into a search engine in Australia would be seeking information on Australia’s Defence Force. The Applicant appears to accept the possibility of confusion arising. Mr Feteris stated that any misleading of people will be allayed when they visit the Applicant’s website. It is also proposed that conditions could be imposed requiring a disclaimer on the site. At this point it is too late – the confusion will have already occurred.
Mr Feteris further acknowledged that “it will be necessary to develop a brand presentation that clearly distinguishes itself from the Australian Defence Force, for the proposed CONCERTED brand solution to be effective.”[18]If the prohibited words are not used, the development of such a brand presentation will not be necessary.
[18] Exhibit R1 at 19.
I have given significant weight also to the consideration that granting permission for the Applicant to use the words Defence Force in a domain name without restriction would preclude the Australian Defence Force itself being able to register and use the name the Applicant seeks to register.
Having balanced the various arguments put forward by both parties, I am satisfied that the overwhelming weight of the arguments favour the conclusion that the consent sought by the Applicant be refused. The same considerations apply whether the words were to be used in the Applicant’s business operations or for the purpose of registering a domain name. I am not satisfied that the imposition of conditions will overcome the arguments in favour of refusing the consent sought.
H. CONCLUSION
The reviewable decision, made 7 April 2020, to refuse consent to the Applicant using the prohibited words Defence Force, will be affirmed.

I certify that the preceding 48 (forty -eight) paragraphs are a true copy of the reasons for the decision herein of Deputy President J W Constance

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Associate
Dated: 19 August 2021

Date(s) of hearing: 24 May 2021

Advocate for the Applicant: N Feteris

Counsel for the Respondent: D Robertson

Solicitors for the Respondent: T Galvin, Minter Ellison

[2021] AATA 2950

19 August 2021

Key Legal Topics

Areas of Law

Administrative Law

Statutory Interpretation

Legal Concepts

Judicial Review

Standing

Statutory Construction

Procedural Fairness

Consent

Remedies

Date(s) of hearing:	24 May 2021
Advocate for the Applicant:	N Feteris
Counsel for the Respondent:	D Robertson
Solicitors for the Respondent:	T Galvin, Minter Ellison