Decorative Imaging Pty Limited and Australian Securities and Investment Commission - [2018] AATA 4668

Decorative Imaging Pty Limited and Australian Securities and Investment Commission [2018] AATA 4668 (21 December 2018)
Division:TAXATION AND COMMERCIAL DIVISION
File Number(s):2018/2884
Re:Decorative Imaging Pty Limited
APPLICANT

AndAustralian Securities and Investment Commission
RESPONDENT

DECISION
Tribunal:Deputy President Ian Hanger AM QC
Date:21 December 2018
Place:Sydney

The decisions for review are affirmed.
.........................[sgd]...................................
Deputy President Ian Hanger AM QC
Catchwords
BUSINESS NAMES REGISTRATION – Business Names Registration Act 2011 (Cth) – objection to registration of business name –availability of business names that are “identical” or “nearly identical” – whether business name available for registration – decision under review affirmed
Legislation
Business Names Registration Act 2011 (Cth)
Business Names Registration (Availability of Names) Determination 2015
Corporations Act 2001 (Cth)
Cases
Boyce and Australian Securities and Investments Commission [2015] AATA 768
Clark Stasiw and Australian Securities and Investments Commission [2015] AATA 328
GC Swinburne and F J McFarlane and Australian Securities and Investments Commission [2014] AATA 602
Perth Martial Arts Academy and Australian Securities and Investments Commission [2018] AATA 3664
REASONS FOR DECISION
DEPUTY PRESIDENT IAN HANGER AM QC
21 DECEMBER 2018
INTRODUCTION

This matter raises yet again the issue of the interpretation by a computer of the validity of a proposed business name.
The applicant sought to register with Australian Securities and Investment Commission (ASIC) the business names “Deco” and “Deco Australia” (the proposed business names).
The application was lodged by an online transaction through ASIC’s online lodgement service. ASIC refused to register the proposed business name “Deco” on the basis that the name is identical or nearly identical to the name of a registered company “De.Co Pty Ltd”. It also refused to register the proposed business name “Deco Australia” on the basis that the name is identical or nearly identical to the registered business name “Aus Deco”.
ASIC commenced its responsibility for the business names register under the Business Names Registration Act 2011 (Cth) (BNR Act) on 28 May 2012. The objects of the BNR Act as set out in section16 thereof are to ensure that if an entity carries on a business under a business name, people who engage with the business can identify the entity and know how it may be contacted. It was hoped that the BNR Act would remove the inconvenience caused by registration of business names under the law of more than one jurisdiction within Australia and thus avoid confusion. A further object was to ensure that business names that are undesirable or might mislead should not be registered.
The registration of a business name does not affect the rights of any entity in relation to the business name[1]. In the interest of efficiency, the determination in the first instance of whether a name is acceptable for registration or not is made by a computer which of course applies rigid rules without a discretion. Human intervention may take place thereafter but the question that arises in this case and has arisen in a number of previous decisions is the extent to which there is a discretion in a decision maker or thereafter in this Tribunal to make a different decision.
[1] Business Names Registration Act 2011 (Cth) s 17.
Section 23(1) of the BNR Act provides for an entity to lodge an application for a name to be registered as a business name.
Section 24 of the BNR Act provides:
“(1)ASIC must register the business name to the entity if ASIC is satisfied that:
(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.
...”
Section 25 of the BNR Act provides so far as is relevant as follows:
“A business name is available to an entity if:
(a)the name is not identical or nearly identical to:
(i)a business name registered to another entity; or
(ii)a name that is reserved or registered under the Corporations Act 2001 for another body;
...”
Section 26 of the BNR Act provides:
“The Minister may, by legislative instrument, make rules for determining whether a name is identical or nearly identical to another name”.
The term “identical” is defined in section3 of the BNR Act to mean “identical under rules made by the Minister under section 26”; “nearly identical” is defined to mean “nearly identical under rules made by the Minister under section 26”.
Pursuant to section 26 of the BNR Act, the Minister has by legislative instrument made rules and they are to be found in Business Names Registration (Availability of Names) Determination 2015. (BNRD)
Section 5A of BNRD provides:
“5A Determining if business names are identical or nearly identical
A business name is identical or nearly identical to another name (other than a company name) if, and only if:
(a)after comparing the business name with the other name by:
(i)disregarding the matters set out in subsection 5(1); and
(ii)apply subsection 6(1);
The names are the same; or
(b)subsection 6(2) applies.”
Section 5 of BNRD then prescribes the matters which are to be disregarded as required by section 5A(a)(i) as follows:
“5. Matters to be disregarded
(1)The following matters are to be disregarded:
(a)the use of the definite or indefinite article unless it is the whole name;
(b)the use of ‘Association’, ‘Co-operative’, ‘Incorporated’, ‘Ltd’, ‘No Liability’, ‘NL’, ‘Proprietary’ or ‘Pty’ in one or both names;
(c)whether a word is in the plural or singular number in one or both names;
(d)the size of characters, and the type and case of letters, any accents, spaces between characters and punctuation marks, used in one or both names;
(e)the order of words in the names;
(f)whether one or both names includes a host name such as ‘www’ or a domain extension such as ‘net’, ‘org’ or ‘com’.
(2)For paragraph (1) (e), each of the following is to be treated as a word:
(a)a character separated by spaces;
(b)a group of characters separated by spaces;
(c)an abbreviation;
(d)an acronym”.
Section 6 of the BNR Act provides:
“6. Matters to be considered
(1) A word or expression in an item in Schedule 1 is to be taken to be the same as each other word or expression in the item”.
Schedule 1 sets out a long list of words that are to be taken to be the same words. For example, to take one item in the Schedule:
“Item 243 is ‘Australian’, ‘Australia’, ‘Aussie’, ‘Aus’, ‘Aust’”
CONSTRUCTION OF THE ACT
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.
Furthermore, I am fortified in this view by the observation of Senior Member, Dr M. Evans, in Re Perth Martial Academy and ASIC 2017/5166 in which he said:
“Additionally, s16(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.” (para 36(e))
While the approach that I have adopted will at times lead to results that a decision maker, if not bound by by 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.
I have been referred to a number of decisions on the interpretation of the BNR Act and BNRD, several of which take the approach that I am adopting and several take a less restrictive and more discretionary approach. With the greatest respect I prefer the approach taken in Boyce v ASIC [2015] AATA 768 and more recently Perth Martial Arts Academy v ASIC [2018] AATA 3664 to the approach taken in GC Swinburne and F J McFarlane v ASIC [2014] AATA 602 and Clark Stasiw v ASIC [2015] AATA 328, for the reasons which I have set out above. The scheme of the BNR Act and the BNRD is prescriptive.
THE DECISION
Proposed Business Name “Deco”
The name “De.Co Pty Ltd” is a name that is registered to a body under the Corporations Act (Cth). In comparing the proposed business name “Deco” to the name of the registered company “De.Co Pty Ltd” the use of “Pty” and “Ltd” are to be disregarded. On disregarding “Pty” and “Ltd” from the registered company name “De.Co Pty Ltd” and in comparing the proposed business name “Deco” to the name of the registered company “De.Co” punctuation marks are to be disregarded. Therefore, under the rules for determining identical and nearly identical names the proposed business name “Deco” is identical or nearly identical to the name of the registered company “De.Co Pty Ltd”. Therefore, the proposed business name “Deco” is not available for registration.
Proposed Business Name “Deco Australia”
The business name “Aus Deco” is a business name registered to another holder. The proposed business name “Deco Australia” contains words or expressions mentioned in an item in Schedule 1 of the Determination i.e. the word “Australia”. Therefore, the word “Australia” is to be taken as the same as “Aus”. The word “Deco” is used in both names and so there are no other words differentiating the names. The order of words is to be disregarded by virtue of section 5(1). Therefore, the name “Deco Australia” is not available for registration.
Therefore, the decisions under review are affirmed.

I certify that the preceding 25 (twenty-five) paragraphs are a true copy of the reasons for the decision herein of Deputy President Ian Hanger AM QC

..........................[sgd]............................
Associate
Dated: 21 December 2018

Date of hearing: 12 December 2018

Solicitor for the Applicant: Mr Horton

Counsel for the Respondent: Ms M Ellicott

Solicitor for the Respondent: Ms A Rees