Hamilton v Stark

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.