Discount Drugstores Pty Ltd v Registrar of Trade Marks
[2015] FCA 1159
•9 October 2015
FEDERAL COURT OF AUSTRALIA
Discount Drugstores Pty Ltd v Registrar of Trade Marks [2015] FCA 1159
Citation: Discount Drugstores Pty Ltd v Registrar of Trade Marks [2015] FCA 1159 Parties: DISCOUNT DRUGSTORES PTY LTD v REGISTRAR OF TRADE MARKS File number: QUD 435 of 2014 Judge: LOGAN J Date of judgment: 9 October 2015 Catchwords: INTELLECTUAL PROPERTY – trade marks – registration – appeal from decision of respondent to refuse to register applicant’s trade mark because it was insufficiently adapted to distinguish applicant’s business – parties reached agreed position as to registration of amended trade mark application before trial – powers of Federal Court under Trade Marks Act 1995 (Cth) to make consent orders in s 35 appeal – exercise of original jurisdiction – orders made in light of conceded fact that basis for rejecting trade mark application no longer existed Legislation: Administrative Appeals Tribunal Act 1975 (Cth), s 44
Trade Marks Act 1905 (Cth)
Trade Marks Act 1995 (Cth), s 33, s 35, s 41(4), s 197Cases cited: Blount Inc v The Registrar of Trade Marks (1998) 40 IPR 498 cited
Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590 applied
Irwin v Military Rehabilitation and Compensation Commission (2009) 174 FCR 574 consideredJafferjee v Scarlett (1937) 57 CLR 115 cited
Date of hearing: 9 October 2015 Place: Brisbane Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 18 Solicitors for the Applicant: Bennett & Philp Lawyers Counsel for the Respondent: Mr A M Musgrave Solicitors for the Respondent: Australian Government Solicitor
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 435 of 2014
BETWEEN: DISCOUNT DRUGSTORES PTY LTD
ApplicantAND: REGISTRAR OF TRADE MARKS
Respondent
JUDGE:
LOGAN J
DATE OF ORDER:
9 OCTOBER 2015
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.The decision of the Delegate of the Registrar of Trade Marks dated 22 July 2014 in relation to trade mark application number 1569888 be set aside.
2.Trade mark application number 1569888 be amended to conform with the following endorsement:
The trade mark consists of the colours PURPLE (Pantone 2612) and ORANGE (Pantone 1505) as shown in the representation attached to the application, used in combination where either colour forms a significant proportion of the overall combination on banners, signs, walls, and counters in retail stores, on staff uniforms, and on promotional and advertising material, including as shown in the illustrative examples, all used in connection with the services covered by the application.
3.Trade mark application number 1569888, as amended, be accepted for registration pursuant to s 33 of the Trade Marks Act 1995 (Cth) with a further endorsement to support the reasons for acceptance.
“Evidence and/or other circumstances provided under s 41(4)”
4.There be no order as to costs.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
QUD 435 of 2014
BETWEEN: DISCOUNT DRUGSTORES PTY LTD
ApplicantAND: REGISTRAR OF TRADE MARKS
Respondent
JUDGE:
LOGAN J
DATE:
9 OCTOBER 2015
PLACE:
BRISBANE
REASONS FOR JUDGMENT
(REVISED FROM TRANSCRIPT)
On 22 July 2014 the Registrar of Trade Marks (Registrar), for reasons then given, refused to register trade mark application 1569888 made by Discount Drugstores Pty Ltd (Discount Drugstores). Discount Drugstores then appealed to this Court against the Registrar’s decision to reject its application. That appeal was made pursuant to s 35 of the Trade Marks Act 1995 (Cth) (the Act).
In accordance with case management directions, affidavit evidence in chief was filed and a mediation conducted by a court registrar was held. As a sequel to that mediation a document entitled “Minutes of Proposed Consent Order” (Minute), signed by the solicitors for Discount Drugstores and separately by the Australian Government Solicitor on behalf of the Registrar, was lodged with the Court. That Minute reflects an agreed position between the parties which has resulted from the mediation.
Upon that Minute coming to my attention, it seemed to me that the order sought was not one which ought just to be made in chambers. Further, the view which I had was that the Court needed to be persuaded that it was lawfully possible to make the order in the terms sought by the parties. Accordingly, the case was listed for submissions today.
When Discount Drugstores invoked the jurisdiction of the Court under s 35 of the Act, it invoked the judicial power of the Commonwealth. The Registrar’s decision was an exercise of the executive power of the Commonwealth. The order sought is not simply an order which resolves a dispute between private parties in respect of a cause of action. Rather, what is entailed is an exercise of judicial power in respect of a matter touching upon the scheme for the registration of trade marks under the Act.
Neither the researches of the parties, nor my own, have disclosed direct authority in relation to what is called for in the exercise of judicial power when an appeal under s 35 becomes the subject of an agreed position as between the applicant, in this case Discount Drugstores, and the Registrar. To describe the jurisdiction invoked as an appeal, is strictly to conform with the language of s 35 but that description is nonetheless something of a misnomer in relation to the jurisdiction which must be exercised by the Court. For a start, the Court’s jurisdiction is not appellate but, rather, an exercise of original jurisdiction.
The nature of the jurisdiction which falls to be exercised is apparent from s 197 of the Act, which provides:
197Powers of Federal Court and Federal Circuit Court on hearing an appeal
On hearing an appeal against a decision of the Registrar, the Federal Court or the Federal Circuit Court may do any one or more of the following:
(a)admit evidence orally, or on affidavit or otherwise;
(b) permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar;
(c)order an issue of fact to be tried as it directs;
(d)affirm, reverse or vary the Registrar’s decision or direction;
(e)give any judgment, or make any order, that, in all the circumstances, it thinks fit;
(f)order a party to pay costs to another party.
Such is the extent of the powers exercisable on an appeal by virtue of s 197 that the Court must “determine for itself, on the material before it, whether the applicant’s application to register its trade mark should be accepted or rejected”: Blount Inc v The Registrar of Trade Marks (1998) 40 IPR 498 at 506 per Branson J. In this regard, the position under the present Act in relation to an appeal does not differ from that which prevailed under the original Act, the Trade Marks Act 1905 (Cth): Jafferjee v Scarlett (1937) 57 CLR 115. The proceeding might more aptly be described as a statutory appeal in which, in the exercise of an original jurisdiction, the Court must decide for itself whether or not the application should be accepted or rejected.
Another type of statutory appeal in which the Court is called upon to exercise an original jurisdiction is the jurisdiction conferred by s 44 of the Administrative Appeals Tribunal Act 1975 (Cth). The nature of that statutory appeal is very different to an appeal under s 35. In the case of an appeal in respect of a decision of the Administrative Appeals Tribunal, the essence of that appeal is a question of law which calls for a narrower exercise of jurisdiction than s 35 of the Trade Marks Act, where the Court in effect, and in the exercise of judicial power, stands in the shoes of the Registrar in relation to the making of an acceptance or rejection decision.
Even so, there is in my view, an analogy to be drawn in relation to the approach which the Court must take where the parties to the statutory appeal have reached a consensual position as to the manner of the disposition of the appeal. This flows, in my view, from a common feature of the two appeals, which is that each entails an exercise of judicial power. In relation to an appeal under s 44, the Full Court has observed, in Irwin v Military Rehabilitation and Compensation Commission (2009) 174 FCR 574 at [15], and after consideration of earlier authority, that:
It is accordingly necessary for this Court, where the question whether the Tribunal has erred in law is before it, to address the matter for itself. That is not to say that the court may not deal with the matter more briefly in its reasons than it otherwise would, or that it may not specifically state that there has been no real contradicter, so that courts subsequently considering the decision may take that into account.
In that case, the subject of whether the tribunal had erred in law, upon which the Court had to address itself, flowed from the nature of the statutory appeal before it. Here, and as I have already observed, the nature of the appeal is different but all that that means is that the question which must be addressed by the Court itself in the exercise of judicial power is different. The question which must be addressed and answered in the exercise of judicial power, even where the parties promote, as they do here, a consensual decision, is whether the application should be accepted or rejected.
To give context to the question which must be addressed it is important to appreciate the process by which an application for registration of a trade mark under the Act comes to be determined. The legislative scheme under the Act is described by French CJ and Gummow, Heydon and Bell JJ in Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590 at [22] to [26]:
22.Secondly, the legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.
23.This concern and this interest are reflected in the following scheme. If an application is made to have a mark registered which does not meet the criteria for registration, there are two opportunities for registration to be prevented. And if a mark has been registered which does not meet the criteria for remaining on the Register, a further opportunity exists to have the Registrar adjust it.
24.The first opportunity arises when an application is lodged. Section 31 of the Act creates a duty on the Registrar to examine and report on whether the application has been made in accordance with the Act, and whether there are grounds under Pt 4 Div 2 for rejecting it. The Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or there are grounds for rejecting it (s 33).
25.Even if the application is accepted, a second opportunity arises. Section 34 creates a duty on the Registrar to advertise the decision to accept the application in the Official Journal of Trade Marks. This enables those who wish to oppose registration to do so pursuant to s 52 of the Act. Section 52 has no standing requirement. If opposition proceedings are not brought, or if they fail, the trade mark is registered (s 68).
26.However, a third opportunity to ensure the purity of the Register arises, for recourse can be had to s 88 or s 92. Those sections require applicants under them to be “aggrieved”. It is not the case that any applicant who wants the Register rectified or a mark removed is “aggrieved” merely by reason of that desire: the word has a filtering function. But against that legislative background, it is not clear why the word should be construed restrictively rather than liberally.
[footnote references omitted]
The reference in the passage quoted to the “purity” of the register and the public interest in that purity underscores why it is that the Court is not a mere cipher in respect of a position consensually reached in an appeal.
The consent lodged is in the following terms:
1.The decision of the Delegate of the Registrar of Trade Marks dated 22 July 2014 in relation to trade mark application number 1569888 be set aside.
2.Trade mark application number 1569888 be amended to conform with the following endorsement:
The trade mark consists of the colours PURPLE (Pantone 2612) and ORANGE (Pantone 1505) as shown in the representation attached to the application, used in combination where either colour forms a significant proportion of the overall combination on banners, signs, walls, and counters in retail stores, on staff uniforms, and on promotional and advertising material, including as shown in the illustrative examples, all used in connection with the services covered by the application.
3.Trade mark application number 1569888, as amended, be accepted for registration pursuant to s 33 of the Trade Marks Act 1995 with a further endorsement to support reasons for acceptance.
“Evidence and/or other circumstances provided under s 41(4)”.
4.There be no order as to costs.
Implicit in the Registrar’s signing by her solicitor of the consent is a concession, inter partes, and, it must be emphasised, at this stage only of the application process, that, as a matter of fact, there is no longer, as was once apprehended to be, a basis for being satisfied that the trade mark applied for does not, in terms particularly of s 41(4) of the Act, distinguish Discount Drugstores’ goods or services. That concession in no way binds the Registrar to adhere to that position for cause in the event of there being, at a later stage in the registration process, a notice of opposition given by another party.
The Registrar’s position and that of Discount Drugstores has been reached in light of the affidavit evidence filed to date. In my view, it is not necessary for the Court to examine, either in detail or at all, that affidavit evidence in order to be satisfied that the application is one for acceptance insofar as a factual foundation is needed. That foundation in my view is to be found in the concession which is implicit in the consensual position reached in respect of the appeal reflected in the consent minute.
It is important also to recall the terms of s 33:
33 Application accepted or rejected
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.(2) The Registrar may accept the application subject to conditions or limitations.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
In particular, the present is now a case where an obligation to accept the application arises because, as a matter of conceded fact, there is no longer a basis for being satisfied that there are grounds under the Act for rejecting the application. Because, on the basis of the concession, I am not satisfied there are grounds under the Act for rejecting the application, it necessarily follows that, in the exercise of judicial power in disposing of the appeal, that its disposition must resonate in an order that the application be accepted. The particular resonance flowing from the concession is set out in the terms of the order promoted by the parties.
It is, in my view, apt in that order to record the endorsement sought in para 3 of the proposed order, because the concession has flowed as a sequel to a much greater body of evidence, namely, that filed in Court, than that with which the Registrar was in the first instance concerned. It may well be that a party concerned to decide whether or not to oppose registration might, in light of that endorsement, be disposed to seek access to the affidavits filed in Court, either if the Registrar is not disposed herself to make those available in whole or in part, or in any event. If so, any such application will have to be considered by the Court on its merits and under the provision in the rules in respect of access by non-parties to affidavit material filed but not read in a Court proceeding.
The disposition of any such application for access may well call for an opportunity to be heard to be extended, both to Discount Drugstores and to the Registrar. It would be quite inappropriate to consider what might be the fate of any such application by a person not a party to the appeal proceeding. I do nothing more than recognise the contingency of such an application, having regard to what I regard as an apt endorsement in respect of the acceptance for registration of trade mark application number 1569888.
For these reasons then, there will be an order in terms of that promoted by the parties.
I certify that the preceding eighteen (18) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Logan. Associate:
Dated: 29 October 2015
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