FPInnovation Pty Ltd v Registrar of Trade Marks
[2013] FCA 826
FEDERAL COURT OF AUSTRALIA
FPInnovation Pty Ltd v Registrar of Trade Marks [2013] FCA 826
Citation: FPInnovation Pty Ltd v Registrar of Trade Marks [2013] FCA 826 Parties: FPINNOVATION PTY LTD (ACN 121 215 209) v REGISTRAR OF TRADE MARKS File number: NSD 1477 of 2012 Judge: COWDROY J Date of judgment: 16 August 2013 Catchwords: ADMINISTRATIVE LAW – decision of delegate to the Registrar of Trade Marks to revoke acceptances of applications for registration of trade marks – decision of delegate to the Registrar of Trade Marks to revoke registration of trade marks – application for judicial review of decisions of the delegate – exercise of discretion to refuse relief where adequate forms of review are otherwise available Legislation: Administrative Decisions (Judicial Review) Act1977 (Cth) ss 10(2), 16(1)
Federal Court of Australia Act 1976 (Cth) s 37M
Trade Marks Act 1995 (Cth) ss 6, 12, 27, 30, 31, 33, 34, 35, 38, 43, 68, 72, 84A, 84C, 84D, 197
Federal Court Rules 2011 (Cth) rr 30.01, 34.24Cases cited: 1-800-Flowers.Com Inc v Registrar of Trade Marks (2012) 201 FCR 488
ActewAGL Distribution v Australian Energy Regulator (2011) 195 FCR 142
Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31
Boral Gas (NSW) Pty Ltd v Magill (1993) 32 NSWLR 501
CBS Productions Pty Ltd v O'Neill (1985) 1 NSWLR 601
Chanel Limited v FW Woolworths Co Ltd [1981] 1 All ER 745
Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60
Dalian Steelforce Hi-Tech Co Ltd (Cth) v Minister for Home Affairs (2012) 131 ALD 291
Du Pont (Australia) Ltd v Comptroller-General of Customs (1993) 30 ALD 829
Edelsten v Minister for Health (1994) 58 FCR 419
Hall v Nominal Defendant (1966) 117 CLR 423
Kamha v Australian Prudential Regulation Authority (2005) 147 FCR 516
Kelly v Coates (1981) 35 ALR 93
Kimberly-Clark Ltd v Commissioner of Patents (1988) 83 ALR 714
Malouf v Malouf (1999) 86 FCR 134
Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519
Tepko Pty Ltd v Water Board (2001) 206 CLR 1
Wyeth Australia Pty Ltd v Minister for Health and Aged Care (2000) 61 ALD 372Date of hearing: 3 June 2013 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 62 Counsel for the Applicant: Mr M Hall Counsel for the Respondent: Mr GR Kennett SC with Ms A Mitchelmore Solicitor for the Applicant: Hazan Hollander Solicitor for the Respondent: Australian Government Solicitor
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1477 of 2012
BETWEEN: FPINNOVATION PTY LTD (ACN 121 215 209)
ApplicantAND: REGISTRAR OF TRADE MARKS
Respondent
JUDGE:
COWDROY J
DATE OF ORDER:
16 AUGUST 2013
WHERE MADE:
SYDNEY
THE COURT ORDERS THAT:
1.The Amended Originating Application filed by the Applicant on 26 March 2013 be dismissed pursuant to r 30.02(b) of the Federal Court Rules 2011 (Cth).
2.Costs of the proceedings be reserved.
3.The effect of Order 1 be stayed for a period of 28 days after final determination of the proceedings.
4.The hearing on costs be heard on a day to be fixed within 7 days by arrangement between counsel and the Court.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
NSD 1477 of 2012
BETWEEN: FPINNOVATION PTY LTD (ACN 121 215 209)
ApplicantAND: REGISTRAR OF TRADE MARKS
Respondent
JUDGE:
COWDROY J
DATE:
16 AUGUST 2013
PLACE:
SYDNEY
REASONS FOR JUDGMENT
Before the Court is an interlocutory application brought by the respondent (‘the Registrar’) for the determination of two questions as a preliminary issue pursuant to r 30.01(1) of the Federal Court Rules 2011 (Cth) (‘the Rules’).
FACTS
The applicant (‘FPInnovation’) commenced proceedings seeking judicial review of the decision of the Registrar made on 3 September 2012 (‘the Registrar’s decision’), insofar as such decision:
(a)Revoked the registration of eight registered trade marks held by FPInnovation, being 1295224, 1300339, 1314372, 1323584, 1323765, 1326770, 1332227 and 1333731 (together ‘Group A marks’), and revoked the acceptance of those trade marks pursuant to ss 84C and 84A respectively of the Trade Marks Act 1995 (Cth) (‘the TM Act’); and
(b)Revoked the acceptance of four accepted trade mark applications lodged by FPInnovation, being trade mark applications 1335206, 136243, 1337662 and 1347918 (collectively ‘Group B marks’), pursuant to s 38 of the TM Act.
In the amended originating application filed on 26 March 2013, FPInnovation seeks relief under s 16(1) of the Administrative Decisions (Judicial Review) Act1977 (Cth) (‘the ADJR Act’) to quash or set aside the Registrar’s decision, to prohibit the Registrar from implementing the revocations and to direct the Registrar to register the Group B marks. A declaration is also sought that the notices which the Registrar issued on 12 August 2010 implementing her decision was at all times invalid and of no force or effect.
The questions raised by the Registrar on this application are:
(a)Insofar as the proceeding relates to the revocation of registration of the Group A marks, should this proceeding be dismissed on discretionary grounds pursuant to ss 10(2)(b)(ii) or 16(1) of the ADJR Act?
(b)Insofar as the proceeding relates to the revocation of the acceptance of the Group B marks, should this proceeding be dismissed on discretionary grounds pursuant to s 16(1) of the ADJR Act?
As a preliminary issue, FPInnovation submits that the Court should refuse to entertain the above questions, and in the alternative submits that the questions should be heard and determined with the originating application.
LEGISLATIVE FRAMEWORK
A person may apply for the registration of a trade mark in respect of goods or services in certain circumstances by virtue of s 27 of the TM Act. Section 30 requires that the Registrar publish the particulars of such an application in accordance with the Trade Marks Regulations1995 (Cth). Further, by s 31 the Registrar must examine and report on whether the application has been made in accordance with the TM Act and whether there are grounds for rejecting the application. Should the Registrar find the application to be properly made, and no grounds of rejection apply, the application must be accepted as provided for by s 33.
The grounds for rejecting an application are contained within ss 39 to 44. Relevantly, s 43 provides that an application for the registration of a trade mark in respect of particular goods or services must be rejected if the use of such mark, or sign within such mark, in relation to those goods or services would be likely to deceive or cause confusion. Should the Registrar reject an application for the registration of a trade mark, or accept it subject to certain conditions, an applicant may appeal to this Court or the Federal Circuit Court of Australia (‘FCCA’) by way of s 35.
Provided an application passes the examination stage, and in accordance with s 34, the Registrar will notify the applicant in writing that the application has been accepted and advertise her decision in the Official Journal. At any time prior to the registration of a trade mark however, the Registrar may, by s 38(1), revoke the acceptance of the application if she is satisfied that:
(a)the application should not have been accepted taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b)it is reasonable to revoke the acceptance, taking account of all the circumstances.
In this event, by virtue of s 38(2)(a), the application is deemed to have never been accepted.
No statutory mechanism exists to appeal from a revocation by way of s 38, but following such a revocation, the Registrar must re-examine and accept or reject the application in accordance with ss 31, 33 and 34. Accordingly an applicant is afforded the right of appeal under s 35 in respect of any adverse decision against its application following this process.
If an application is accepted for registration following its examination, and such registration is either unopposed or all oppositions are unsuccessful, the Registrar must register the trade mark: s 68. Upon registration, s 71 requires the Registrar to advertise the registration in the Official Journal and provide the registered owner of the trade mark with a certificate of registration.
Under s 84A(1) the Registrar is empowered to revoke a registration of a trade mark within 12 months of the registration of the trade mark if she is satisfied either that: the trade mark should not have been registered after taking into account the circumstances which existed when the trade mark became registered; or it is reasonable to revoke the registration of the trade mark, taking into account all the circumstances.
Whilst such criteria is similar to that which the Registrar must be satisfied of to revoke an accepted application for registration under s 38, ss 84A(2) and 84A(3) provide additional non-exhaustive lists of circumstances to be considered by the Registrar when assessing the criteria under s 84A(1).
Further, ss 84A(4) and 84A(5) require the Registrar to give notice of the proposed revocation of the registered trade mark, and an opportunity to be heard, to the registered owner of such mark and any person recorded under Part 11 as claiming a right or interest in the mark. If thereafter the Registrar proceeds to revoke the trade mark, it is, subject to some limited exceptions, as if the trade mark had never been registered: s 84C. Prima facie, the trade mark then reverts to the status of an accepted application for registration for consideration under s 68. This will not occur where the Registrar decides to also revoke the acceptance of the application for registration of the trade mark as envisaged by s 84C(5). If the Registrar so decides, she may, but need not, re-examine the application under s 31. This is so despite the operation of s 38(2)(b), which would otherwise deem it mandatory for the Registrar to examine the application under s 31 in circumstances where the Registrar had revoked the acceptance of an application for registration.
Section 84D provides a right of appeal to this Court or the FCCA from a decision to revoke the registration of a trade mark under s 84A.
THE REGISTRAR’S DECISION
As referred to above, the outcome of the Registrar’s decision was to:
(a)revoke the registration of the Group A marks;
(b)revoke the acceptance of the applications for registration of the Group A marks; and
(c)revoke the acceptance of the applications for registration of the Group B marks.
The revocations under ss 38(1)(a) and 84A(1)(a) of the TM Act were made on the ground that the trade marks were likely to deceive or cause confusion, contrary to s 43.
In relation to the Group A marks, the Registrar did not refuse to re-examine the trade marks pursuant to s 84C(5) of the TM Act. As a result, the effect of the decision was to return the Group A marks to examination under ss 31, 33 and 34 of the TM Act: see [12]–[13] above.
In respect of the Group B marks, the decision resulted in the revocation of the acceptance of the applications for registration. Accordingly, such trade marks are also to be returned to be examined under ss 31, 33 and 34 of the TM Act: see [7]–[9] above.
SUBMISSIONS OF THE REGISTRAR
The Registrar moves the Court to exercise its discretion not to grant the application for judicial review by FPInnovation on the basis of ss 10(2)(b) and 16 of the ADJR Act. It is submitted that such discretions to refuse relief where an alternative remedy is available is underpinned by three policy considerations as follows:
(a)Judicial review should be a remedy of last resort: Boral Gas (NSW) Pty Ltd v Magill (1993) 32 NSWLR 501 at 508-511 (‘Boral Gas (NSW)’).
(b)The Court should give effect to a ‘manifest legislative purpose and policy that [an act’s] review provision be followed’: Wyeth Australia Pty Ltd v Minister for Health and Aged Care (2000) 61 ALD 372 at [44] (‘Wyeth Australia’).
(c)In exercising supervisory jurisdiction, a court should not intervene prematurely where the decision is a step in a complex administrative process and a decision ‘which, in itself, is not finally determinative’: Du Pont (Australia) Ltd v Comptroller-General of Customs (1993) 30 ALD 829 at 832 (‘Du Pont’).
Section 10(2)(b) of the ADJR Act
Section 10(2)(b) of the ADJR Act authorises the Court to refuse an application for judicial review in circumstances, relevantly including where ‘…adequate provision is made by any law other than [the ADJR] Act under which the applicant is entitled to seek a review by the court, by another court, or by another tribunal, authority or person, of that decision, conduct or failure’: s 10(2)(b)(ii).
Whilst the word ‘review’ in this context is defined by s 10(3) to include ‘a review by way of reconsideration, re-hearing, appeal, the grant of an injunction or of a prerogative or statutory writ or the making of a declaratory or other order’, such list is not exhaustive. Rather, the review referred to by s 10(2)(b)(ii) has previously been understood to be a review involving an ‘independent exercise of powers directly affecting the decision reviewed’: Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31 at 33 (‘Bragg’); Dalian Steelforce Hi-Tech Co Ltd (Cth) v Minister for Home Affairs (2012) 131 ALD 291 at [31].
FPInnovation is entitled to appeal the Registrar’s decision to revoke the registration of the Group A marks to this Court or the FCCA under s 84D of the TM Act. Section 197 confers broad powers upon the courts on such an appeal, including the power to admit evidence, permit the examination and cross-examination of witnesses, and order issues of fact to be tried. The hearing on appeal is therefore a hearing de novo, the same as a hearing on appeal pursuant to s 35 of the TM Act: see Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 180 FCR 60 at [14] (‘Chocolaterie Guylian NV’); Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 at [24]. An appeal under s 84D therefore falls squarely within the meaning of review in s 10(3) of the ADJR Act.
FPInnovation did not exercise the right of appeal under s 84D. The time in which do so was 21 days from the date of the revocation decision: r 34.24 of the Rules. For the purposes of determining whether to exercise the Court’s discretion in s 10(2)(b) however, it is not relevant that the time in which to appeal has expired: Kimberly-Clark Ltd v Commissioner of Patents (1988) 83 ALR 714 at 718–719 (‘Kimberly-Clark’); ActewAGL Distribution v Australian Energy Regulator (2011) 195 FCR 142 at [191] (‘ActewAGL’).
Section 16 of the ADJR Act
Separate from the restricted discretion contained within s 10(2)(b) of the ADJR Act, s 16 of the ADJR Act confers a general discretion upon the Court to grant relief. The Registrar submits that the general discretion should be exercised to refuse relief in respect of the Registrar’s decision to revoke the acceptance of trade mark applications for both the Group A and Group B marks.
The extent to which there is a relationship between ss 10(2)(b) and 16 was explained by Emmett, Allsop (as he then was) and Graham JJ in Kamha v Australian Prudential Regulation Authority (2005) 147 FCR 516 (‘Kamha’). Their Honours said at [87]:
The grant of relief under the ADJR Act is discretionary. That is consistent with the principles concerning the grant of relief under the prerogative writs. There was a discretion for a court to refuse prerogative relief where an alternative remedy was available. That principle is also the origin of the express discretion conferred by s 10(2)(b). Nevertheless, that express discretion does not derogate from the general discretion arising under s 16. Section 16 undoubtedly reserves a discretion to the court as to whether to grant relief in a particular case. While s 10(2)(b) is directed to the specific circumstance where adequate provision is made by another law for an applicant to seek review of a decision and giving rise to an express discretion to refuse relief, the absence of engagement of that provision does not preclude the exercise of the residual discretion conferred on the court by s 16.
As noted above, the effect of the Registrar’s decisions to revoke the acceptances of the applications for both the Group A and Group B marks results in those trade marks being returned for re-examination under s 31 of the TM Act. Save for this judicial review application which has stayed the process of re-examination, the next step for the Registrar would be to either accept or reject the trade marks under s 33. After providing FPInnovation with an opportunity to be heard, should the Registrar then decide to reject the trade marks, FPInnovation would have the right to appeal that decision to this Court or the FCCA pursuant to s 35.
As referred to above, such an appeal is a hearing de novo. This was explained by Sundberg J in Chocolaterie Guylian NV at [14]:
In hearing an appeal pursuant to s 35, the court exercises its original jurisdiction and conducts a hearing de novo. It is to determine on the merits the same question that was before the Registrar – namely, whether or not the trade mark should be accepted – and in doing so, it is to apply the same legal criteria that the Registrar is required to adopt under the Act. The Registrar’s decision is not to be presumed correct but the court is entitled to have regard to the Registrar’s opinion as that of a skilled and experienced person in the field of trade mark registrations: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [33] per French J.
[Reference inserted]
The Registrar submits that FPInnovation should have allowed the review procedure prescribed by the TM Act to take its course rather than launch a judicial review proceeding. Even if the trade mark applications were rejected by the Registrar after re-examination, the priority dates of the trade marks would not be affected if the decision of the Registrar was in effect reversed upon an appeal pursuant to s 35. The rights conferred upon a trade mark owner upon registration are taken to be effective from the filing date of application regardless of any intervening rejections or revocations: see ss 6, 12 and 72(1) of the TM Act.
SUBMISSIONS OF FPINNOVATION
FPInnovation raises both preliminary and substantive submissions against the interlocutory application. Each group of arguments will be considered in turn.
Preliminary objections
FPInnovation argues that the Court should refuse to entertain the questions proposed by the Registrar as preliminary issues in view of the fact that they were previously raised soon after the application was filed, but dismissed by the Court. In the alternative, it is submitted that if the questions are to be entertained, they should be heard and determined with the originating application.
The originating application was filed on 28 September 2012, with the matter first returnable before the Court for directions on 7 November 2012. The Registrar asserted orally at the directions hearing that the proceeding should be dismissed as a matter of discretion. The Court requested both parties to provide brief written submissions on the issue. Having received and reviewed the written submissions, on 16 November 2012 the Court determined that the proceeding should continue in accordance with the short minutes of order provided by FPInnovation. Such orders set out a timetable for the inspection of documents relevant to FPInnovation’s originating application.
The Registrar filed the present interlocutory application on 2 April 2013. Comprehensive written submissions were received from both parties, with the application heard on 3 June 2013. The oral submissions of the parties were extensive. FPInnovation submits that no circumstances have changed in the intervening period and that accordingly, the Registrar should not be permitted to bring this further application on the same issue that was raised at the first directions hearing.
No interlocutory application was filed by the Registrar when the issue was first raised late in 2012. The Court was not then fully aware of the reasons which would warrant any preliminary issue being determined at that early stage of the proceeding. With the filing of an application, and having detailed submissions from both parties, the Court is better placed to make its decision.
The Court is mindful of the principle of practice referred to in Chanel Limited v FW Woolworths Co Ltd [1981] 1 All ER 745 at 751 (‘Chanel Limited’) by Buckley LJ, namely that proceedings should not be fought over again ‘unless there has been some significant change in circumstances or the party has become aware of facts which he could not reasonably have known or found out in time for the first encounter’, and of similar statements in Hall v Nominal Defendant (1966) 117 CLR 423 (‘Hall’) and in Malouf v Malouf (1999) 86 FCR 134 (‘Malouf’). Crucially however, there is no absolute bar to making a further interlocutory application on the same terms as a previous application. Rather, these cases reflect that such further interlocutory applications may often be fruitless as a practical matter.
In Chanel Limited, a party that had given undertakings sought to alter those undertakings. The response of Buckley LJ at 751, as extracted above, is understandable in those circumstances. In Hall, the primary issue was the characterisation of the order from which a party sought to appeal as being interlocutory or final. In that context, Taylor J at 440–441 (with Owen J concurring at 447) considered that a second application for an extension of time by the appellant would likely be ‘fruitless’ in the absence of additional facts, but was not barred. Windeyer J expressed a similar sentiment at 444. In Malouf, an applicant sought to appeal as of right a decision of the Federal Court refusing pre-trial discovery. In considering whether the decision below was final or interlocutory, Beaumont, Lee and Dowsett JJ stated at [36]:
There is nothing in the rule currently under consideration which would preclude an applicant from making more than one application thereunder. No doubt, an application based on the same grounds as a previous application would be unsuccessful, but for the reasons advanced by the High Court, that is not relevant. The order is interlocutory.
It follows that the Registrar was not barred from filing the present interlocutory application.
In the alternative FPInnovation submits that the conditions for a hearing of separate questions have not been met. This is said to be because there is no real prospect of saving time or expense as the Court would be required to examine the issues on the originating application, and would do so without reference to relevant documents or evidence. FPInnovation refers to the statement of Kirby and Callinan JJ in Tepko Pty Ltd v Water Board (2001) 206 CLR 1 at [168] where their Honours said:
The attractions of trials of issues rather than of cases in their totality, are often more chimerical than real. Common experience demonstrates that savings in time and expense are often illusory, particularly when the parties have, as here, had the necessity of making full preparation and the factual matters relevant to one issue are relevant to others, and they all overlap.
Such observation serves to highlight that before a Court allows a separate question to be determined in advance of a hearing on the merits of an application, it must be satisfied that the issues that the separate question or questions are directed toward are truly separate. As Kirby P (as he then was) stated in CBS Productions Pty Ltd v O'Neill (1985) 1 NSWLR 601 at 606:
A matter is “ripe” for separate an preliminary determination where it is a central issue in contention between the parties, the resolution of which will either obviate the necessity of litigation altogether or substantially narrow the field of controversy.
The Court is satisfied that the present proceeding is such a matter. The preliminary questions require the Court to determine whether the TM Act provides for an adequate form of review of the decision of the Registrar such that the Court might refuse to grant the relief sought by FPInnovation in the originating application regardless of the merits of that application. Contrary to the submissions of FPInnovation, such an inquiry does not necessitate a review of the evidence that the parties would call at a trial on the merits. For the purposes of exercising its discretion, the Court assumes that FPInnovation’s grounds of review would ultimately be successful: Edelsten v Minister for Health (1994) 58 FCR 419 at 422. Further, the determination of the preliminary questions promotes the overarching purpose of the civil procedure provisions of this Court: s 37M of the Federal Court of Australia Act 1976 (Cth).
For these reasons, the Court will determine the preliminary questions proposed by the Registrar.
Submissions of FPInnovation on the preliminary questions
FPInnovation opposes the relief sought by the Registrar. It submits that it is entitled to elect between methods of review that are available to it, and relies upon the decision in Kimberly-Clark. In such decision the applicant sought review of the refusal of the Commissioner of Patents to grant an extension of time in which to lodge a notice of opposition to a patent application. The patent applicant sought to have the proceeding dismissed by exercise of the Court’s discretion under s 10(2)(b) of the ADJR Act, as the applicant could have sought review of the Commissioner’s decision before the Administrative Appeals Tribunal.
In refusing to dismiss the proceeding, Jenkinson J considered the discretion contained in s 10(2)(b) and referred at 719 to Toohey J in Kelly v Coates (1981) 35 ALR 93, who said at 94 ‘[o]ne starts with the proposition that an applicant may rely upon any or all of the remedies available, review by this court and review or appeal elsewhere’. In considering the applicant’s election to seek review by the Court, his Honour continued:
[The applicant’s] choice has not been shown to have been unreasonable or to have been influenced by an improper motive. Neither of the protagonists was shown to be likely to be embarrassed by legal costs and no evidence was adduced that [the patent applicant] is likely to suffer irrecoverable damage by delay in the grant of the patent.
The Registrar did not seek to argue that FPInnovation’s application to this Court was unreasonable or influenced by an improper motive, but submitted that Kimberly-Clark must be regarded as having been overtaken in this regard by later decisions that proceed on the basis that an applicant’s actions need not be so infected for the discretion to refuse relief to be exercised.
It is not disputed that FPInnovation is entitled to apply under the ADJR for judicial review of the Registrar’s decisions. As stated by Katzmann J in ActewAGL at [195]:
It cannot be the purpose of s 10(2)(b)(ii) to invariably require an applicant to exhaust whatever rights of review (s)he or it has before making an application under the ADJR Act because that would require everyone with alternative remedies who seeks judicial review to apply for an extension of time as a matter of course.
The same may be said in relation to the exercise of discretion under s 16 of the ADJR Act. This does not prevent the Court exercising its discretion to refuse relief. To suggest otherwise ignores a plain reading of s 10(2)(b), and the long standing principles that guide the granting of prerogative relief as explained by Emmett, Allsop (as he then was) and Graham JJ in Kamha at [87].
Whether an applicant seeking judicial review can be shown to have been unreasonable or to have been influenced by an improper motive is merely a factor that may go toward the Court’s determination to exercise its discretion. Such consideration was a factor in the decision of Jenkinson J in Kimberly-Clark, and his Honour’s reasons show that it appeared to be one of considerable influence, but it was not determinative. Subsequent decisions have not attributed such importance to the factor, and indeed have not referred to it at all: see Boral Gas (NSW) at 508–512; Du Pont at 831–832; Edelsten at 424; Wyeth Australia at [43]–[48]; ActewAGL at [190]–[197]; 1-800-Flowers.Com Inc v Registrar of Trade Marks (2012) 201 FCR 488 at [59] and [65] (‘1-800-Flowers’) at [60]–[71]. The weight to be attributed to whether an applicant has been unreasonable or to have been influenced by an improper motive in launching a judicial review proceeding is a matter to be determined on the circumstances of each case.
Secondly, FPInnovation contends that the grounds of review upon which it relies, and by extension the declaratory relief that it seeks, are not available upon re-examination by the Registrar under s 31 of the TM Act, or upon an appeal de novo to this Court or the FCCA under ss 35 and 84D. For this reason, it is submitted that the alternative methods of review are not adequate to justify the Court exercising its discretion to refuse relief.
The grounds of review that FPInnovation rely upon in its amended originating application may be summarised as follows:
(a)The revocation of the trade marks was an improper exercise of power as the Delegate took into account irrelevant considerations, and failed to take into account relevant considerations, when exercising the Registrar’s powers of revocation;
(b)The Delegate misconstrued provisions of the TM Act when invoking the revocation procedures, thereby falling into an error of law;
(c)The Delegate’s decision in relation to the revocation of the acceptances of the Group B marks was an unauthorised exercise of the power conferred by the TM Act and involved an error of law;
(d)The revocation procedures were improperly invoked;
(e)There was no evidence to support the invocation of the revocation procedures; and
(f)The Delegate so delayed the making of the decision that the decision was not based on, and did not take into account, the submissions made by FPInnovation at the hearing, such that FPInnovation was denied the opportunity to be heard and was denied natural justice.
The Registrar’s submissions insofar as they apply to the revocation of the acceptances of the applications for the Group A and Group B marks mirror those that were made to the Court in 1-800-Flowers, a decision which also concerned an application for the judicial review of a decision by the Registrar to revoke a trade mark application under s 38 of the TM Act. In 1-800-Flowers it was claimed by the applicant that a delegate of the Registrar failed to take into account relevant considerations; that the decision was so unreasonable that no reasonable person could have so exercised the power of revocation; and that the delegate identified and took into account an incorrect issue. After considering the merits of, and dismissing, the application, Katzmann J found that even if the applicant had made out its claim, her Honour would have nevertheless refused to grant the relief sought in exercise of her discretion under s 16 of the ADJR Act. Her Honour said at [60]–[61]:
60. Shortly put, the registrar’s argument was that the decision was not determinative of the applicant’s rights. The delegate did not reject the applications. The effect of his decision was to require the applications to be examined afresh. At this point all the applicant’s concerns can be put before the examiner. If the application is rejected, the applicant has a right to appeal under s 35 of the Act, and the appeal is in the nature of a hearing de novo (Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 at [24] per Kenny J). There is a legislative policy or intention that the appeal process for which the Act provides be utilised. Cf Wyeth Australia Pty Ltd v Minister for Health and Aged Care (2000) 61 ALD 372.
61. In my view, the argument is a powerful one and should be accepted.
Katzmann J also considered the applicant’s submission that the discretion to refuse relief should not be exercised as there was no right to appeal directly on the merits from a decision under s 38 of the TM Act, and it would be improper to do so where the Registrar or the delegate had misconstrued the powers of revocation. Her Honour said at [67]–[70]:
67. It is true that the Act does not provide for a right of appeal from a decision of the registrar to revoke the acceptance of an application for registration. But doubtless that is because there is a full right to appeal from any subsequent decision to reject the application. The legislative purpose is clear. Parliament intended that any challenges be made to the decision to refuse or limit registration, not to the anterior decision to revoke acceptance. The only prejudice the applicant could identify if relief were refused on discretionary grounds was in costs, although there was no evidence about the amount of additional costs likely to be incurred. That inconvenience should yield to the legislative intention.
68. In Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31 at 34, a case dealing with the discretion conferred by s 10(2)(b) of the ADJR Act, Davies J said that it was “generally desirable that the time of this court should not be taken up with issues for the determination of which the legislature has established adequate administrative remedies”. His Honour went on to observe that:
It has been said in a number of reported cases that the burden lies upon a respondent to show that the court should not exercise the jurisdiction conferred upon it … Nevertheless, the general practice of the court is not to consider, in the first instance, a dispute for the resolution of which a satisfactory administrative remedy has been provided.
69. Here, there is such a remedy.
70. In Stack v Commissioner of Patents (1999) 55 ALD 654 at [14] Drummond J said of an application under the ADJR Act for the review of a decision of a delegate of the Commissioner of Patents to refuse summary dismissal of an opposition:
Such a decision, while no doubt a decision to which the AD(JR) Act applies, is not determinative of the rights of either of the parties to the proceeding before the delegate … The applicants have full opportunity in the final hearing to [sic] which they are entitled to pursue all the arguments they wish to raise against the sustainability of the notice of opposition, including those they have raised for the first time in this court. Even if the continuing pendency before the commissioner of the applicants’ claim for the extension of time does not enliven the special discretion conferred on the court by s 10(2)(b) the AD(JR) Act, I consider that the policy considerations underlying that provision and which were referred to in Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31 at 34 are of relevance in the circumstances of this case to the exercise of the more general discretion conferred on this court by s 16(1) the AD(JR) Act.
[Additional references removed]
The circumstances presently before the Court with respect to the revocation of the acceptances of the applications of the marks are substantially the same as those before Katzmann J in 1-800-Flowers. FPInnovation draws a distinction however, submitting that the decision in 1-800-Flowers was based on the fact that all of the applicant’s concerns in that case could be put before the examiner upon re-examination: see 1-800-Flowers at [60]. FPInnovation submits that the issues arising from the grounds of review in the present proceeding (for instance the validity of certain notices in the revocation process, the Registrar’s obligation to register under s 68 of the TM Act, and the alleged failure of the delegate to afford natural justice to FPInnovation) would not be able to be put before the examiner in re-examination and therefore re-examination would not be an adequate form of review. For this reason, it is submitted that the Court should not exercise its discretion to refuse relief.
The adequacy of an alternative form of review is not dependant upon all grounds of review raised in a judicial review application being available to the applicant. Rather, the issue is whether there is a ‘satisfactory administrative remedy’ otherwise available: Bragg at 34. This principle clearly extends to satisfactory remedies available from a court or tribunal. Such practice exists so that judicial review does not interfere with a decision that is only a step in a complex administrative process and ‘which, in itself, is not finally determinative’: Du Pont at 832. For instance, in Edelsten, Northrop J rejected a submission by the applicant that the inability of a review tribunal (to which the applicant was entitled to appeal) to consider an alleged denial of natural justice by the decision-maker meant that the review tribunal was not an adequate form of review: Edelsten at 424.
The legislative purpose is, as Katzmann J said at [67] in 1-800-Flowers, clear. Parliament intended with respect to decisions to revoke the acceptance of applications for registration ‘that any challenges be made to the decision to refuse or limit registration, not to the anterior decision to revoke acceptance’. The intent with respect to decisions to revoke the registration of trade marks is equally as clear; that is, the affected trade mark owner should file an appeal under s 84D. Such processes are, in the words of Finn J in Wyeth Australia at [44], ‘deliberately contrived’ by the legislature. It is against this background that the Court must consider the prejudice claimed by FPInnovation.
Any prejudice suffered by FPInnovation due to the invalidity of certain notices in the revocation process, or the possible failure of the Registrar to comply with her obligation to register under s 68 of the TM Act, and any errors of law by the Delegate in making the decisions and the failure of the Delegate to afford natural justice to FPInnovation, would be cured upon a re-examination of the merits of the applications. Should the Registrar decline to accept the applications, then FPInnovation would have a right of appeal to this Court or the FCCA under s 35 of the TM Act. If the Registrar or the Court on appeal found in favour of FPInnovation, then as noted at [29] above, the original priority dates for the trade marks would not be affected.
FPInnovation also submitted that should the trade marks be re-examined, it would lose any benefit that it had attained by way of the previous successful examinations of the trade marks. It also referred to the fact that the trade mark applications would again be able to be opposed by a third party.
The potential for the Group A and B marks to be subject to objections upon such marks being re-examined is a real possibility. This is not a factor however that weighs heavily on the Court’s consideration. The possibility of further objections is a necessary consequence of the process prescribed by the TM Act, a process which, as noted above at [54], has been ‘deliberately contrived’ by the legislature: Wyeth Australia at [44]. Accordingly, this is not a matter which the Court considers should prevent the exercise of its discretion to refuse the relief sought by FPInnovation.
Further, FPInnovation contends that certain factual findings would again have to be contended for should re-examination of the trade mark applications occur. Whilst this is true, it is a necessary consequence of the process of review intended by Parliament. It also ensures that the central issue in the overall dispute between the parties is resolved, namely whether the trade marks should ultimately be registered, and as a corollary, whether those trade marks in relation to the categories for goods and services for which they were, or were proposed to be, registered are likely to deceive or cause confusion. These are questions that the Court cannot entertain on judicial review.
Finally, FPInnovation submitted that it would be unreasonable to have expected it to appeal to this Court or the FCCA in relation to the revocation of registration of the Group A trade marks, and at the same time pursue administrative remedies before the Registrar with respect to the re-examination of the applications of the Group B trade marks. It is contended that the judicial review application permits all of the issues to be determined in the same forum.
Such submission falls away in light of the central issue in the dispute identified immediately above. Although the Court accepts the practical difficulties of having the review of the Group A and Group B trade marks occurring in different forums, a determination of the present application will not resolve whether those marks should be registered.
The Court considers that, on balance, and for the reasons referred to, the Court would exercise its discretion to refuse to grant the relief sought by FPInnovation in its amended originating application with respect to the Group A and B marks. This being the case, it follows that the whole of the proceeding is dismissed pursuant to r 30.02(b) of the Rules.
Counsel for FPInnovation requested that the Court reserve the question of costs in the event that the Court decided to dismiss the proceeding. The Court will provide for such an opportunity to both parties, and therefore reserves costs.
I certify that the preceding sixty-two (62) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Cowdroy.
Associate:
Dated: 16 August 2013
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