FEDERAL CIRCUIT COURT OF AUSTRALIA
| HAMILTON v STARK | [2015] FCCA 3309 |
| Catchwords: PRACTICE & PROCEDURE – Whether applicant is entitled to raise a further ground of opposition to the registration of the respondent’s mark not raised before the Registrar of Trade Marks – whether an appeal to this Court is limited by section 56 of the Trade Marks Act 1995 (Cth) to those grounds raised before the Registrar of Trade Marks – whether an appeal from a decision of the Registrar of Trade Marks is a hearing de novo. |
| Legislation: Trade Marks Act 1995 (Cth) ss.10, 43, 44, 55, 56, 60 Trade Practices Act 1974 (Cth) |
| Applicant: | IAN BLAIR HAMILTON |
| Respondent: | PATTERSON STARK |
| File Number: | SYG 3191 of 2013 |
| Judgment of: | Judge Emmett |
| Hearing dates: | 9 February 2015 10 February 2015 |
| Date of Last Submission: | 20 February 2015 |
| Delivered at: | Sydney |
| Delivered on: | 14 December 2015 |
REPRESENTATION
| Counsel for the Applicant: | Mr Nicholas Smith |
| Solicitors for the Applicant: | Wrothwell Garth Wall |
| Counsel for the Respondent: | Mr David Scully |
| Solicitors for the Respondent: | 1Place Patent Attorneys and Solicitors |
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT SYDNEY |
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- AGLC
- Hamilton v Stark [2015] FCCA 3309
- Case
- [2015] FCCA 3309
- Decision Date
CaseChat Overview and Summary
This matter concerned an appeal to the Federal Court from a decision of the Registrar of Trade Marks. The applicant sought to register the trade mark ALKAVIVA, but the application was opposed by the respondent. The Registrar had refused to register the mark on grounds relating to s.43 of the *Trade Marks Act 1995* (Cth), which concerns whether a trade mark is likely to deceive or cause confusion due to its connotations. The applicant had not relied on s.44 of the Act, which deals with substantial identity or deceptive similarity to existing trade marks, before the Registrar.
The central legal issue before the Court was whether the applicant was entitled to raise a new ground of opposition under s.44 of the Act on appeal, despite not having raised it before the Registrar. The respondent argued for a narrow construction of ss.55 and 56 of the Act, limiting the appeal to the grounds considered by the Registrar. The applicant’s primary complaint was that the respondent’s mark was deceptively similar to its own marks, ALKAWAY, ALKASTREAM, and ALKAPOD, and that its products had an earlier priority date.
Emmett J considered the nature of appeals from decisions of the Registrar, referencing *Totev v Star* [2008] FCAFC 35 and *Harris v Caladine* (1991) 172 CLR 84. His Honour distinguished between appeals *stricto sensu*, appeals by way of rehearing, and hearings *de novo*. The Court determined that an appeal from the Registrar under s.56 of the Act is a hearing *de novo*, meaning the Court begins afresh and exercises its own jurisdiction. This approach allows the Court to consider all relevant matters, including grounds not previously raised, provided they are based on the same factual matrix and involve similar considerations, as was conceded by the respondent in relation to the s.44 ground. The Court was therefore not confined to the specific grounds considered by the Registrar.
The central legal issue before the Court was whether the applicant was entitled to raise a new ground of opposition under s.44 of the Act on appeal, despite not having raised it before the Registrar. The respondent argued for a narrow construction of ss.55 and 56 of the Act, limiting the appeal to the grounds considered by the Registrar. The applicant’s primary complaint was that the respondent’s mark was deceptively similar to its own marks, ALKAWAY, ALKASTREAM, and ALKAPOD, and that its products had an earlier priority date.
Emmett J considered the nature of appeals from decisions of the Registrar, referencing *Totev v Star* [2008] FCAFC 35 and *Harris v Caladine* (1991) 172 CLR 84. His Honour distinguished between appeals *stricto sensu*, appeals by way of rehearing, and hearings *de novo*. The Court determined that an appeal from the Registrar under s.56 of the Act is a hearing *de novo*, meaning the Court begins afresh and exercises its own jurisdiction. This approach allows the Court to consider all relevant matters, including grounds not previously raised, provided they are based on the same factual matrix and involve similar considerations, as was conceded by the respondent in relation to the s.44 ground. The Court was therefore not confined to the specific grounds considered by the Registrar.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
Relevantly, ss.55 and 56 of the Act are as follows:“55 Decision (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a) to refuse to register the trade mark; or(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established.56 AppealThe applicant or the opponent may appeal to the Federal Court or the Federal Circuit Court from a decision of the Registrar under section 55.” Whilst s.55 of the Act states that the Registrar of Trade Marks must make its decision on any ground on which the application was opposed, the respondent urges a narrow construction on the effect of ss.55 and 56 of the Act such that it is not open on appeal for the applicant to raise a new ground under s.44 of the Act. The applicant relied only on s.43 before the Registrar of Trade Marks. In considering whether the goods or services are likely to deceive or cause confusion because of some connotation that the trade mark or a sign contained in the trade mark has, as stated above, the Registrar of Trade Marks concluded that the respondent’s trademark ALKAVIVA does not have a connotation within it which would result in the public being deceived or confused as to the nature of the goods or services in respect of which it is being used as a trade mark. The Registrar of Trade Marks referred to Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6]-[26], where Gyles J noted that the purpose of s.43 of the Act is to prevent the public from being deceived or confused as to the nature of the goods offered by reason of the secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks (see [53]). In considering s.43 of the Act, it was therefore not necessary for the Registrar of Trade Marks to consider whether the respondent’s trademark ALKAVIVA was substantially identical with or deceptively similar to the applicant’s trade marks ALKAWAY, ALKASTREAM and ALKAPOD. The respondent concedes that the s.44 ground is based on the same factual matrix and involves some of the same considerations as the grounds under ss.43 and 60 of the Act. The applicant’s complaint essentially is that the trademark of the respondent is deceptively similar to the trademark of the applicant. The respondent concedes that the goods are similar and that the applicant’s products have an earlier priority date. Section 56 of the Act provides for an appeal to this Court from the decision of the Registrar of Trade Marks. There are three types of appeal; an appeal de novo, an appeal by way of rehearing and an appeal stricto sensu. In considering the nature of an appeal from a decision of a Court Registrar to make a sequestration order, the Federal Court of Australia in Totev v Star [2008] FCAFC 35 at [12] –[14] distilled the relevant principles relating to the nature of appeals as identified by the High Court of Australia in Harris vCaladine (1991) 172 CLR 84 as follows:“12. A hearing de novo is different from an appeal stricto sensu and is different from an appeal by way of rehearing. In the case of an appeal stricto sensu, the question would be whether, upon the material before the registrar, the conclusion reached by the registrar was correct. In an appeal by way of rehearing, the appellate court would rehear the matter as at the date of the appeal, but on the evidence called before the registrar, subject to a power to receive further evidence where appropriate: the rights of the parties would be determined by reference to the circumstances, including the law, as they existed at the time of rehearing (Harris v Caladine at 125). In each case any question concerning the exercise of discretion would be subject to the restrictions imposed on an appellate court in reviewing the exercise of a discretion (see House v The King [1936] HCA 40; (1936) 55 CLR 499).13. In the case of a hearing de novo, however, the judge reviewing the order begins afresh and exercises for himself or herself any discretion exercised by the registrar. The parties commence the proceeding again, subject to any rules concerning the use of evidence adduced before the registrar. The hearing de novo involves the exercise of the original jurisdiction and the petitioner, in the case of a bankruptcy petition, must start again, call witnesses and make out the petitioner’s case (Harris v Caladine at 124). 14. Because the hearing of an application for review of a sequestration order is a hearing de novo, it would not be sufficient for the reviewing judge to be satisfied that the registrar made no error and simply to dismiss the application for review. The judge who hears the review application must hear the petition afresh and must be satisfied as to the matters referred to in s 52 of the Bankruptcy Act. Thus, the reviewing judge must herself or himself be satisfied with the proof of:• the matters stated in the petition; • the service of the petition; and • the fact that the debt or debts on which the petitioning creditor relies is or are still owing.The reviewing judge must also exercise afresh the discretions conferred by s 52(2).”
Ratio Decidendi
Legal Principle Established
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