he Sports Cafe v The Registrar of Trade Marks

[1998] FCA 410

FEDERAL COURT OF AUSTRALIA

TRADE MARKS - test for leave to appeal under s 195(3) Trade Marks Act 1995 (Cth)

THE SPORTS CAFE v REGISTRAR OF TRADE MARKS
NG 153 of 1998

MADGWICK J
23 MARCH 1998
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 153 of 1998

BETWEEN:	THE SPORTS CAFE APPLICANT
AND:	REGISTRAR OF TRADE MARKS RESPONDENT
JUDGE(S):		MADGWICK J
DATE OF ORDER:		23 MARCH 1998
WHERE MADE:		SYDNEY

SHORT MINUTES OF ORDER

THE COURT ORDERS THAT:

1. Leave to appeal be granted.

1. The costs of this application are to be costs in the appeal.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 153 of 1998

BETWEEN:	THE SPORTS CAFE APPLICANT
AND:	REGISTRAR OF TRADE MARKS RESPONDENT

JUDGE(S):	MADGWICK J
DATE:	23 MARCH 1998
PLACE:	SYDNEY

REASONS FOR JUDGMENT
(revised from transcript)

HIS HONOUR: This was an application for leave to appeal from a judgment given by his Honour Justice Burchett on 10 February. Leave to appeal was required under s 195(2) of the Trade Marks Act 1995 (Cth). I think it is enough to decide this application to consider, as I do, that the applicant has been able to show that there is a reasonably arguable case that the learned judge who heard the appeal from the Registrar erred in the application of well-established legal tests.

His Honour had to determine whether there was a mere possibility of confusion as distinct from "a real tangible danger" of its occurring:  see Southern Cross Refrigerating Co v Toowoomba Foundry Pty Limited (1954) 91 CLR 592 at 595. While there is inescapably a degree of subjectivity in connection with a judgment about that, there is nothing discretionary in the nature of his Honour’s judgment. It is not intrinsically different from other judgments of fact which depend upon impression and an assessment of degree.

The possession of a trade mark may be an important matter.  The rejection of an application, while not entirely final, would put the disappointed applicant in a relatively more disadvantageous position than the position of the losing party had the result been reversed.  It seems to me that that also is a relevant factor to the question of leave. 

It is not special leave which is sought but leave.  It seems to me that, in general, what is required in such a case is that there be some good reason for permitting an appeal.  A reasonably arguable case that there has been an error, with a consequent injustice to the applicant if there was an error, seems to me to be such a good reason.

Neither counsel was able, despite each being very experienced in the field, to refer me to any authoritative statement of principle in this Court as to the approach that should be taken on a leave application such as this, which is somewhat surprising.  The parties were not unanimous that I should refer the application for leave to appeal to a Full Court.  Doubtless they had in mind questions of costs and certainty as to what the future might hold, so far as a leave application can give such certainty.  I express the view that it may be useful for the Full Court that hears the matter, if it sees fit, to give guidance to single judges as to the principles that should govern leave applications.

In the circumstances, it seems to me that leave to appeal should be granted.

The parties have agreed that the costs of this application should be made costs in the appeal.

I certify that this and the preceding one (1) page are a true copy of the Reasons for Judgment herein of the Honourable Justice Madgwick

Associate:

Dated:             23 March 1998

Counsel for the Applicant:	D Calterns QC
Solicitor for the Applicant:	Freehill Hollingdale & Page
Counsel for the Respondent:	D Yates SC
Solicitor for the Respondent:	Australian Government Solicitor
Date of Hearing:	23 March 1998
Date of Judgment:	23 March 1998