Fry and Australian Securities & Investments Commission
[2024] AATA 2509
•16 July 2024
Fry and Australian Securities & Investments Commission [2024] AATA 2509 (16 July 2024)
Division:TAXATION AND COMMERCIAL DIVISION
File Number(s): 2022/5326
Re:Stephen Fry
APPLICANT
AndAustralian Securities and Investments Commission
RESPONDENT
DECISION
Tribunal:Member Lee Benjamin
Date:16 July 2024
Place:Brisbane
The decision under review is affirmed.
..................................[SGD]......................................
Member Lee Benjamin
Catchwords
BUSINESS NAME REGISTRATION – where business name registration cancelled after failure to renew – where Applicant attempted to re-register business name and ASIC refused – whether proposed business name is identical or nearly identical to third party company name – where Applicant ownership of trade mark not relevant to determination – ASIC prohibited under Business Names Registration Act 2011 to register proposed business name – decision affirmed
Legislation
Business Names Registration Act 2011 (Cth)
Business Names Registration (Availability of Names) Determination 2015 (Cth)Corporations Act 2001 (Cth)
Cases
Boyce v ASIC [2015] AATA 768
Elevate Education Pty Ltd and ASIC [2023] AATA 84
Perth Martial Arts Academy and ASIC [2018] AATA 3664Smith v ASIC [2014] AATA 192
Secondary Materials
Explanatory Memorandum to the Business Names Registration Bill 2011 (Cth)
REASONS FOR DECISION
Member Lee Benjamin
16 July 2024
WHAT IS THIS DECISION ABOUT?
Mr Stephen Fry is seeking review of an Australian Securities and Investments Commission (ASIC) decision to refuse to register the business name, “Webmasters” (Proposed Business Name). Mr Fry says that he previously held registration for the “Webmasters” business name before the registration was cancelled by ASIC in January 2019[1] due to non-renewal. Mr Fry contends that ASIC should not have cancelled his business name registration for this and other reasons, including that he owns a trademark on the name, “WebMasters”. Despite Mr Fry’s contentions, the question for the Tribunal is whether the Proposed Business Name was “available” for registration at the time of Mr Fry’s fresh application in 2022. The answer to this question is no. This is because the Proposed Business Name is “identical or nearly identical” to a registered company’s name, Web Master Pty Ltd (Company Name).[2] Accordingly, ASIC is statutorily prohibited from registering the Proposed Business Name to Mr Fry.
WHAT HAPPENED?[3]
[1] Initially, the business name "Webmasters" was registered in New South Wales on 18 August 1997 and was later cancelled on 3 December 1997. On 16 September 2002, the business name "Webmasters" was registered to Webmasters Pty Ltd (ACN 080 953 911) and subsequently cancelled on 23 December 2005. The Applicant again registered the business name "Webmasters".
[2] The company is owned by a third party.
[3] Extracted and modified from the Respondent’s Statement of Facts, Issues and Contentions which set out relevant background facts (Exhibit R1, p 2-3, paras 5-18).
On 4 December 1997, a company was incorporated under the name of WebMasters Pty Ltd (ACN 080 953 911), with Mr Fry being a shareholder and director (Old Company).[4]
[4] Exhibit A1.
On 29 December 2002, the Old Company was deregistered.[5]
[5] Exhibit A1.
On 18 August 2009, Mr Fry registered the business name “Webmasters” in the State of NSW.
On 30 June 2010, the Company Name was registered under the Corporations Act 2001 (Cth) (the Corporations Act).
On 28 May 2012, the national business name regime commenced, establishing a national Business Name Register administered by ASIC. In addition, existing business names registered under various business names legislation of the individual States and Territories of Australia were transferred to the national Business Names Register on the same day.
On 12 December 2012, ASIC issued a welcome letter to Mr Fry, which advised that the registration of the business name “Webmasters” was due for renewal on 9 February 2013. Mr Fry renewed the registration on 29 July 2013.
On 19 July 2015, ASIC issued a renewal notice for the registration of the business name “Webmasters” to Mr Fry. On 3 September 2015, the renewal was successful.
On 19 July 2018, ASIC issued a renewal notice to Mr Fry for the registration renewal of the business name “Webmasters”.
On 2 September 2018, ASIC issued a reminder notice to Mr Fry advising that the registration renewal for “Webmasters” was overdue.
On 13 November 2018, ASIC issued a notice that it intended to cancel the registration of the business name “Webmasters” as the registration had expired.
On 17 January 2019, ASIC issued a notice to Mr Fry advising that the registration of the business name “Webmasters” had been cancelled.
On 3 June 2022, ASIC received an application from Mr Fry seeking a review of ASIC’s decision to refuse to register the Proposed Business Name.
On 6 June 2022, ASIC corresponded with Mr Fry seeking further information. Mr Fry provided a reply and support material on the same day.
On 14 June 2022, ASIC provided Mr Fry with its decision affirming the refusal to register the Proposed Business Name.
On 27 June 2022, Mr Fry filed an application for review with the Tribunal seeking a review of ASIC’s decision to refuse registration of the Proposed Business Name.
Mr Fry says that his business has been devasted due to losing the Proposed Business Name. He says, as a result, he could not re-register and get his website domain back “ He says the loss of the Proposed Business Name, though he holds the trademark, has been financially devastating over many years now but also emotionally and psychologically devastating.[6]
WHAT QUESTION NEEDS TO BE ANSWERED?[7]
[6] Mr Fry’s post hearing submissions dated 4 March 2024.
[7] Extracted and modified from the Respondent’s Statement of Facts, Issues and Contentions which sets out relevant statutory provisions (Exhibit R1, p 5-7, paras 23-37).
The ultimate issue before the Tribunal is whether ASIC must or must not register the Proposed Business Name under subsection 24(1) of the Business Names Registration Act 2011 (Cth) (the Act). This requires the Tribunal to consider the question of whether the Proposed Business Name was “available” for registration at the time of Mr Fry’s business name application for the purposes of the Act and the Business Names Registration (Availability of Names) Determination 2015 (Cth) (the Determination).
The Business Names Registration Act
The Act’s objectives are an important starting point in this application:
(3) The objects of the Act are also:
(a) to avoid confusion by ensuring that business names that are identical or nearly identical are not registered; and
(b) to ensure that business names that are undesirable (for example, because they are offensive) are not registered; and
(c) to ensure that business names that should be restricted for any other reason (for example, because they might mislead consumers) are not registered.
(4) The objects mentioned in subsection (3) are achieved by rules dealing with the availability of business names.
Subsection 24(1) requires ASIC to register a business name to an 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.
Subsection 24(1) is mandatory: ASIC “must” register the business name if sub-sections (a) to (d) are satisfied. Conversely, if a proposed business name is not “available”, then ASIC cannot register it, as the requirements of subsection 24(1) are not satisfied. ASIC has no residual discretion.[8]
[8] Perth Martial Arts Academy and ASIC [2018] AATA 3664 at [36].
Section 25 prescribes the circumstances in which a business name is “available” to an entity for the purposes of subsection 24(1)(c). Subsection 25(a) of the Act relevantly provides that a business name is available to an entity if the name is not identical or nearly identical to “a name that is reserved or registered under the Corporations Act 2001 for another body”.[9]
[9] Subsection 25(a)(ii) of the Act.
Section 26 of the Act provides that the Minister may, by legislative instrument, make rules for determining whether a name is “identical or nearly identical” to another name.
Section 3 of the Act defines the terms “identical” and “nearly identical” as follows:
identical: means identical under rules made by the Minister under section 26.
nearly identical: means nearly identical under rules made by the Minister under section 26.
The Business Names Determination
The applicable rules are found in the Determination, which is made by the Minister under section 26 of the Act.
Subsection 4(1) provides that, for section 26 of the Act, the rules for determining whether a business name is identical or nearly identical to another name are set out in Part 2.
Section 7 of the Determination provides that:
A business name is identical or nearly identical to a company name if, and only if, the names are the same after comparing the business name with the company name by applying the rules in Part 1 of Schedule 6 to the Corporations Regulations 2001 (Rules for ascertaining whether names are identical) as if they had been made for subparagraph 25 (a) (ii) of the Act.
Schedule 6 of the Corporations Regulations 2001 (the Corporations Regulations) set out the rules for ascertaining whether names are identical.
Applications for Registration of Business Names
Section 66 of the Act provides that ASIC may arrange for the use of computer programs for any purposes for which ASIC may make decisions under the Act (except review decisions under subsection 57(6)), and that a decision made by the operation of a computer program is taken to be a decision made by ASIC. The Explanatory Memorandum to the Act states that:
Section 66 provides that other than for the decisions relating to the review of any decisions, ASIC may arrange for the use of computer programs under ASIC’s control to make decisions. For example, it is intended that decisions regarding whether a proposed business name is identical or nearly identical to any of the hundreds of thousands of existing business names expected to be on the Register will be largely automated.[10]
[10] Explanatory Memorandum to the Business Names Registration Bill 2011 (Cth) at [10.5].
ASIC’s use of computer programs in the context of section 66 of the Act was considered in Smith v ASIC:[11]
It seems one of the motivations for constructing the law in this way is to make it easier to automate the process of applying for a business name. Computers do not do well with examples: while they work more quickly (and presumably more cheaply) than the registry clerks of fond memory, they do not yet have the capacity to analogise from a list of examples. They prefer clear instructions capable of certain applications. Computers don’t “do” nuance, and they are not open to persuasion.[12]
[11] [2014] AATA 192.
[12] Smith v ASIC [2014] AATA 192 at [14].
ASIC has established computer systems and programs to maintain the Business Names Register, to process transactions lodged online, and to facilitate the operation of the Act.[13]
[13] Exhibit R2, p 6, para 12-14.
When a business name availability search is conducted or an application for registration is submitted to ASIC, an automated system determines whether the business name is available for registration by checking against the Business Names Register and the register of companies, and by applying rules in accordance with the Determination.[14]
[14] Exhibit R2, p 6-7, para 15-18.
In summary, the effect of the above provisions is that ASIC has no discretion in registering a business name:
·if a proposed business name is “available” pursuant to subsection 25(1) of the Act, then ASIC must register it if satisfied that the requirements of subsection 24(1) of the Act are otherwise satisfied; or
·if a proposed business name is not “available”, then ASIC cannot register it as the requirements of subsection 24(1) are not satisfied.
WHAT IS THE ANSWER TO THE QUESTION?
In my view (and I find) that the Proposed Business Name was not “available” for registration at the time of Mr Fry’s application because the Proposed Business Name is “identical or nearly identical” within the meaning of the Act and the Determination to the Company Name. ASIC cannot register the Proposed Business Name to Mr Fry because the requirements of subsection 24(1) are not satisfied.
WHY IS THIS THE ANSWER TO THE QUESTION?
Before addressing the reasons why the Proposed Business Name was not “available” for registration at the time of Mr Fry’s application, I will address Mr Fry’s three main contentions as they relate to matters extrinsic to the proper question before the Tribunal: (1) previous registration of the business name; (2) a third party’s intention in registering the Company Name; and (3) trademark ownership.
Mr Fry’s previous registration of the Proposed Business Name
Mr Fry submits, but cites no authority for the proposition, that the Proposed Business Name should be registered because the name was previously registered to him. Mr Fry also points to his previous directorship of, and shareholding in, the Old Company.[15] As ASIC correctly points out, Mr Fry’s submission seeks to import a test that is not supported by the statutory language. As far as I can see, previous registration has no relevance to whether a business name should be registered on a fresh application. The statutory test does appear to operate in that way contended by Mr Fry.[16]
[15] Exhibit A1.
[16] Exhibit R1, p 13, para 54.
The Proposed Business Name was registered to Mr Fry in August 2009. Mr Fry renewed the registration several times over the years. The registration for the same was cancelled in January 2019 because it expired pursuant to section 49 of the Act.[17] The Registration expired because, and Mr Fry does not dispute that, he failed to pay and renew the registration by the due date.[18]
[17] Exhibit R1, p 13, para 56.
[18] Transcript, p 23, line 33.
Even though the evidence before the Tribunal clearly demonstrates that ASIC issued multiple business name renewal notices and correspondence[19] about the same to Mr Fry,[20] Mr Fry claims that he never received them.[21] Although Mr Fry’s evidence is somewhat unclear, it appears that he temporarily or periodically lost access to his email account, which was the contact email address registered with ASIC, and did not otherwise update ASIC with his new email address:
[19] See Transcript, p 58, lines 44-47. Under subsection 49(1) of the Act, ASIC is required to at least 28 days before the registration period of an entity expires, remind the entity in writing of the time and day on which the registration period will expire. The reminder notice was issued in July 2018.
[20] Transcript, p 56, lines 11-24.
[21] See Transcript, p 59, lines 1-5. Subsection 49(2) of the Act provides that even if ASIC does not do that, under subsection 2, a failure to give a reminder does not affect ASIC’s power to cancel the registration if not renewed. So even if ASIC had failed to give the reminder it still would not have mattered to the power to cancel the registration.
MR FRY… I recall that there was a period of time where [redacted email address] was not working and I may have suspected it had been hacked or there was certainly some problem that you could’ve called a hack where the email server was not working and it (indistinct).
DR BENDER: What period of time was that when the email server wasn’t working?
MR FRY… Well it probably was around about, you know, the late, you know 2017, 18, 19. Something like that.
DR BENDER: For three years, your email address wasn’t working. Is that what you’re saying?
MR FRY: It was intermittent and there was a period of time when it was just dead and I just wasn’t really, I just wasn’t really using it. I’d already spent – I was chasing my tail on a whole lot of things … So it was a period of time where, you know, I had been putting those things through Gmail and so forth at that point and I certainly ‑ ‑ ‑
DR BENDER: All right. Let’s just sort of break that down for a minute because there’s a few things you’ve mentioned there. Firstly let’s go to the period of time when you say you weren’t using it. So what period of time was that when you weren’t using it at all?
MR FRY: Well, you know, we’re telling you know around about 2017, 2018, 2019.
DR BENDER: So over that whole period, you weren’t using that particular email address, you’re saying?
MR FRY: That’s right. I’d moved over to Gmail.
DR BENDER: Okay, so what was the Gmail address?
MR FRY: [redacted email address].
…
DR BENDER: All right, and the Gmail address, you didn’t take any steps to notify that to ASIC, did you?
MR FRY: Yes. Because I’d go into ASIC Connect and then I would try and change my email address, but I would never be able to do that. And I certainly don’t recall ringing up and notifying a new email address because I’d remember that. [22]
[22] Transcript, p 18, lines 37-45; p 19, lines 1-18, 40-44.
Notwithstanding Mr Fry’s apparent failure to maintain his email account in working order over multiple years and/or duly update his contact details with ASIC, he contends that ASIC should have used other means of communication for notices and correspondence about the business name:
MR FRY: And there was no effort to use other means like SMS, a human calling or an automated phone call systems, or sending out even a letter in the post. And I would ask that the tribunal consider that they should recommend that a high level of duty of care should be exemplified by ASIC in 24 years into the 21st century, this year, that SMS text reminders are automated to go out, extended grace periods. Well, actually, which apparently I think are now 12 months, because I’ve just restored a business name for some friends of mine.
And automated phone calls, and monitoring the return emails, particularly those marked undeliverable, and actual attachments of pdfs to emails. That would be very, very cost effective. And considering I wasn’t able to ask a manager how (audio malfunction), I’m sure they’ve got a lot of money. There’s a lot of companies and businesses sending them a lot of money each year. So just using a small percentage of that to update to these things would be, I think, a recommendation that would be possibly good if the tribunal is in that position to make that recommendation.
Only sending an email with an expiring link from an unmonitored address in 2018 is not proper service of a renewal or notice to cancel, I would suggest. Restoration of cancelled business names, I believe, first went live in 2023. So ASIC knew this was a problem or they wouldn’t have fixed it. ASIC have a huge budget to do auto trademark lookups and the other things I mentioned like SMS text reminders.
So, you know, in an era of automation that’s been (indistinct) use in the private sector for decades, it’s time for ASIC to step up and use some of the extraordinarily high volume of money that they receive, back on delivering good service to the customers that they have a duty of care to. And the duty of care, as you would know, is a very powerful and important aspect that they do have duty of care to the customer that gives their money.
So I did not receive a business renewal in 2018 or 2019.[23]
[23] Transcript, p 55, lines 6-38.
To my mind, whether ASIC could or should have used alternative means of communication with Mr Fry is irrelevant to the legal issue before the Tribunal. In any case, as ASIC points out:
DR BENDER: But [Mr Fry] didn’t do what he should have done [under section 35 of the Act] and updated that email address with the contact details with ASIC. And he could have done that one the phone. He could have done that, as we’ve heard, through the ASIC Connect portal. And even if he changed his email address login, the contact details attached to the business name, as we’ve heard, could have been change anyway. It was his responsibility to do that. And he did not update those contact details.[24]
[24] Transcript, p 56, lines 29-35.
The Tribunal does not have a general power to review administrative decisions. The Tribunal may only review a decision if an act, regulation or other legislative instrument states that the decision can be reviewed by the Tribunal. ASIC submits that cancellation of a business name registration under section 49 of the Act is not a reviewable decision by this Tribunal.[25] I accept this submission. Section 56 of the Act specifies the decisions which are reviewable decisions. A section 49 cancellation decision (as in this case) falls outside the scope of decisions which are reviewable by the Tribunal. In any case, the decision under review is not a business name cancellation decision - it is a decision to refuse to register a business name.
[25] Exhibit R1, p 13, para 56; p 14, para 58.
Third-party registration of the Company Name in 2010
Mr Fry contends that the Company Name was “intentionally registered” by a third party with a space between the letters in 2010 to “get around” his previous registration. He also says that this was to “avoid it being seen as nearly identical” to the previous registration of WebMasters.[26] Mr Fry cites no evidence for his contentions.
[26] Exhibit Tr1, T1, p 5.
ASIC submits that any intention behind the registration of the Company Name by a third party is irrelevant to the determination of whether the Proposed Business Name should be registered: [27]
DR BENDER: There’s also been a mention in some of the written material about whether the company, Web Master Pty Ltd - when it was incorporated in 2010, whether it had an intent to get round Mr Fry’s registration of the business name Webmasters. That’s completely irrelevant as well for the same reasons, but in any event, we don’t have anyone from that company giving evidence, so you know, there’s no evidence of what their intent was, in any event. [28]
[27] Exhibit R1, p 14, para 58.
[28] Transcript, p 64, lines 29-34.
As far as I can see, the Act and the Determination do not refer to any “intention” behind registration of a company name as being relevant to the application of the statutory test in subsection 24(1) and the question before the Tribunal.
Mr Fry’s ownership of a Trademark
Mr Fry contends that owning the trademark on the word “WebMaster” is enough for him to secure the registration of the Proposed Business Name:
MR FRY: Now, the big elephant in the room is that I have the trademark for the name Webmaster. So just really, automatically on that basis arguably I should be allowed to have my business name restored. It’s been in continuous use since 1997. I would argue that, I mean it’s a government, we’re dealing with a government department. When the government makes its own rules, and the latest rules is the Business Name Act 2011, Business Names Registration Act 2011. So it’s arguably flawed that there’s no consideration in the Business Names Registration Act, a current trademark considered at the time of registration, is only considered trademarks after a court order regarding the offending business name is registered.
There’s no forward thinking. And I think that, you know, that there’s, whilst ASIC knows this is a problem because ASIC is trying to use this business registration Act as a reason for me not being able to have my business name back. And it’s doing exactly what it says it doesn’t protect. It says, you know, it takes money, a lot of money, that it doesn’t spend updating its IT systems to bring itself into the twenty-first century on renewals. It doesn’t send proper renewal notices. It doesn’t even enclose the pdf in an email. It doesn’t monitor if an email is dead, and is returned as undeliverable.
So really, I think it’s just incompetent and lacking in duty of care on so many levels. The trademark trumps all. It knows that. At the end of this whole list of what it protects, you know, registering your business name does not do, it doesn’t protect the name, doesn’t stop you registering a similar name. And it says, ‘see how to protect your business name’. And then it goes to a link on basically how you can trademark a name. And that protects the name. I have the protection of the name. Pretty much no one else does.
Certainly Mr whatever-his-name-is that owns Web Master Pty Ltd, he registered that at a time when Webmasters was already a business name. I don’t think maybe I’d trademarked at that point. But it was already a registered business name. And I’m the one that’s got the right with the name with the trademark. And that actually trumps all. And automatically I argue that I should be allowed to have my business name renewed and restored.
And I would word it this way. If someone holds the au trademark a certain name and that exact name is available, then that person or entity should be allowed to register that specific business name in Australia. Now, if that was judged to be fair, reasonable and maybe you can say you have to change the Business Registration Act to support that. Because it’s just a glaring hole there at the moment. But if the tribunal should not agree that a trademark should be considered at the outset of a renewal or a registration, the restoration of my business name should be restored on the basis that ASIC lacked duty of care in their IT systems in 2018 and 2019, did not ensure delivery of renewal notices or cancellation warnings in a reasonable manner, didn’t even include a pdf to an email, didn’t monitor if an email is dead, as we’ve discussed.[29]
[29] Transcript, p 53, lines 4-47; p 54, lines 1-3.
Section 51 of the Act recognises relief that a court may grant in an action for an infringement of a registered trademark. On this provision, Mr Fry accepts that he has the right to seek such relief but has not chosen to do so:
MR FRY: I’ve done a search at the whole of the Business Registration Act, Tribunal Member, and it’s only in three times it’s mentioned in just one section. It’s section 51. Cancellation of business name use and infringement of a trademark. And it’s only talking after the fact – you know, that after it’s already been registered and then somebody’s noticed it and then they go through the process of applying to a court. Now (indistinct) you know, I go to the court now and get web-based master which (indistinct) under the business registration rule is nearly identical.
That, for sure – you know, with the trademark I could get them to – they’ll have to change their name and change their business registration and cancel that, but there might be somebody else that slipped through the system, like they slipped through the system initially (indistinct words) but somehow they got (indistinct words) through. I mean, I’d have to go and take them to court. I mean, really, there should be – for the amount of money that ASIC takes from us, they’re not doing a very good job. Right. I mean, it’s appalling, right.[30]
[30] Transcript, p 65, lines 37-47; p 66, lines 1-6.
ASIC acknowledges the section 51 point and contends that the Act contemplates that a court, not the Tribunal, should be adjudicating trademark infringement disputes:
DR BENDER: Essentially that section [51] is an avoidance of doubt type section to make it clear that things to do with registration, they don’t affect a court’s power to do other things relating to registration in a trademark infringement case, for example. And they also, you know, provide specific relief in there, the specific possibility that the court could order cancellation of a business name registration.
So they’ve thought about, in instituting this legislation they’ve thought about trademarks and the interactions with trademarks. …the case law [shows] that’s a completely separate area to this business name registration type issue. The intent was not for the tribunal to be deciding trademark disputes, to be deciding whether I hold the trademark or not, therefore your registration should be cancelled. That’s not the intent. The intent is to leave trademark disputes up to the courts to decide, not up to the tribunal.[31]
[31] Transcript, p 59, lines 24-39.
ASIC submits (and I find) that the statutory test as set out by the provisions of the Act and the Determination does not include a requirement (or discretion) that registered trademarks are to be considered in the assessment as to whether a business name is available to be registered on the national Business Names Register.[32]
The Proposed Business Name was not “available” for registration to Mr Fry because it is identical or nearly identical to the Company Name
[32] Exhibit R1, p 14, para 59.
Mr Fry did not make cogent submissions on the key statutory question before the Tribunal, which is whether the Proposed Business Name was available for registration. Mr Fry did not address the constituent elements of this question, which look to whether the Proposed Business Name is identical or nearly identical to the Company Name. Mr Fry did not otherwise arm the Tribunal with materials that advance a case in his favour.
As earlier noted, the previous registration of the Proposed Business Name for Mr Fry had been cancelled in January 2019. Following cancellation, it would not have been possible for a transaction for the registration of the Proposed Business Name to be lodged online. This is because the Proposed Business Name would be identified by ASIC’s computer program as identical or nearly identical to a company name registered to another entity. Mr Fry made a request to review to ASIC in June 2022, and ASIC treated that as a request to review a decision not to register the Proposed Business Name.[33]
[33] Exhibit R1, p 10, para 48.
ASIC contends that it was not permitted to register the Proposed Business Name “Webmasters” because the requirements set out in subsection 24(1) of the Act were not satisfied. In particular, in 2022, the Proposed Business Name was not “available” to be registered because it “is identical or nearly identical” to the Company Name:[34]
DR BENDER: [there are] rules made under a legislative instrument, and they prescribe the situations in which a name is identical or nearly identical to either an existing business name or an existing company name. If a name is nearly identical or identical under those rules to a company name or a business name, ASIC is required to refuse registration. There’s no discretion to decide to register if you don’t meet those rules.
That’s pretty much what happened in this case. Under the rules there was an existing company name, Webmaster Pty Ltd. Under the rules that’s the same, identical to Webmasters, so ASIC [has] got no discretion to register the name again, and that’s pretty much it. That’s the simple point. There just is no residual discretion to register a name if it doesn’t meet the criteria.[35]
[34] Exhibit R1, p 11, para 50.
[35] Transcript, p 7, lines 15-26.
ASIC submits that the Determination applies as follows:
The first step is to compare the two names in accordance with the rules for determining whether a business name is identical or nearly identical to a company name as set out in section 7 of the Determination. Section 7 states:
A business name is identical or nearly identical to a company name if, and only if, the names are the same after comparing the business name with the company name by applying the rules in Part 1 of Schedule 6 to the Corporations Regulations 2001 (Rules for ascertaining whether names are identical) as if they had been made for subparagraph 25 (a) (ii) of the Act. (emphasis added)
The second step is to disregard matters set out in Part 1, paragraph 6101 of Schedule 6 of the Corporations Regulations when comparing one name with another. Disregard:
(a) the use of the definite or indefinite article as the first word in one or both of those names;
(b) the use of 'Proprietary', 'Pty', 'Limited', 'Ltd', 'No Liability' or 'NL' in one or both of the names;
(c) whether a word is in the plural or singular number in one or both names;
(d) the type, size and case of letters, the size of any numbers or other characters, and any accents, spaces between letters, numbers or characters, and punctuation marks, used in one or both names;
(e) the fact that one name contains a word or expression in column 2 of the following table and the other name contains an alternative for that word or expression in column 3:
Column 1
Item
Column 2
Word or expression
Column 3 Alternative
1
Australian
Aust
2
Company
Co or Coy
3
Co
Company or Coy
4
Coy
Company or Co
5
Number
No
6
And
&
7
Incorporated
Inc
8
Corporation
Corp
9
Australian Company Number
ACN
The third step after applying the elements set out in the rules of Part 1, Paragraph 6101 of Schedule 6 requires the decision maker to compare the business name with the company name:
Webmaster sWeb Master Pty Ltd
After disregarding the use of “Pty Ltd”, disregarding whether a word is in the plural or singular in one or both names, and disregarding spaces between letters used in the company name, there remain two identical words “Webmaster” and “WebMaster”.
Neither the rules under section 7 of the Determination, nor the rules set out under Part 1, paragraph 6101 of Schedule 6 require any further assessment. Therefore, it remains that the two names are the same. That provides the conclusion that the Proposed Business Name “Webmasters” is identical or nearly identical to the name of the company “Web Master Pty Ltd”.[36]
[36] Exhibit R1, p 11-12, para 51.
ASIC further contends that due to the prescriptive application of the Act and the Determination there are instances where registration of business names occur that would (if common sense applied) be deemed similar. However, as other differently constituted Tribunals have determined (for example, Elevate Education Pty Ltd and ASIC)[37] the relevant test is whether the proposed business name is “identical or nearly identical” as determined by applying the Act and the Determination.[38] As observed in Boyce v ASIC[39] in 2015 “the rules are both exclusive and exhaustive, such that it is unnecessary, and unwarranted, to make inquiries beyond their scope.”[40]
[37] Elevate Education Pty Ltd and ASIC [2023] AATA 84.
[38] Exhibit R1, p 13, para 52.
[39] [2015] AATA 768.
[40] Boyce v ASIC [2015] AATA 768 at [34].
In my view (and I find that) the Proposed Business Name is “identical or nearly identical” to a registered company’s name, the Company Name. The Proposed Business Name was not otherwise available for registration to Mr Fry. Accordingly, ASIC is statutorily prohibited from registering the Proposed Business Name to Mr Fry.
DECISION
The decision under review is affirmed.
I certify that the preceding 54 (fifty-four) paragraphs are a true copy of the reasons for the decision herein of Member Lee Benjamin.
...............[SGD]....................
Associate
Dated: 16 July 2024
Date of Hearing: 1 March 2024
Applicant: Self-represented
Representative for Respondent: Dr Philip Bender Of Counsel
ANNEXURE A
EXHIBIT DESCRIPTION OF EVIDENCE PARTY DATE OF DOCUMENT DATE RECEIVED R1. Respondent Statement of Facts, Issues and Contentions (15 pages) R 11.08.2023
R2. Affidavit of Amanda McInnes (111 pages) R R3. Respondent Bundle of Authorities (256 pages) R - 20.11.2023 Tr1. Section 37 T-Documents (T1-T17, 199 pages) - - 18.05.2023 A1. Webmaster “Business Name Summary” & “Company Summary” ASIC forms (2 pages) A 27.06.2022 A2. IP Australia Trademark Summary (2 pages) A A3. Email correspondence between parties regarding Applicant’s request for witness evidence (email chain of Applicant request on 21 July 2023 and Respondent response on 30 August 2023) A -
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