Jimik Investments Pty Ltd v Registrar of Trade Marks

[1999] FCA 1873

FEDERAL COURT OF AUSTRALIA

Jimik Investments Pty Ltd v Registrar of Trade Marks [1999] FCA 1873

Jimik Investments Pty Ltd v Registrar of Trade Marks, Gerd Thone and Oliver Thone

N1439 of 1999

WILCOX J
SYDNEY

21 DECEMBER 1999

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N1439 of 1999

BETWEEN:

JIMIK INVESTMENTS PTY LTD
Applicant

AND:

REGISTRAR OF TRADE MARKS
First Respondent

GERD THONE
Second Respondent

And

OLIVER THONE
Third Respondent

JUDGE:

WILCOX J

DATE OF ORDER:

21 DECEMBER 1999

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

(1)The applicant, by its counsel, having given to the Court the usual undertaking as to damages, order that the first respondent, the Registrar of Trade Marks, postpone the Opposition Hearing fixed for 19 January 2000 in respect of Australian Trade Mark Number 746400 until a date to be fixed by, or pursuant to, an order of the Court or after final hearing.

(2)The applicant be given leave to serve the amended application, and all affidavits filed in support of that application, on the second respondent, Gerd Thone, outside Australia in Germany. 

(3)Direct that service on the second respondent be personal and be effected as soon as possible, preferably not later than 25 January 2000.  The application is to bear a notation requiring attendance at a directions hearing to be held at 9.30 am on Friday, 11 February 2000.

(4)The costs of this Application are reserved.

Note:   Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N1439 of 1999

BETWEEN:

JIMIK INVESTMENTS PTY LTD
Applicant

AND:

REGISTRAR OF TRADE MARKS
First Respondent

GERD THONE
Second Respondent

And

OLIVER THONE
Third Respondent

JUDGE:	WILCOX J
DATE:	21 DECEMBER 1999
PLACE:	SYDNEY

EXTEMPORE REASONS FOR JUDGMENT

1. WILCOX J:   The application that has been made to me today is for an interim order pursuant to s15 of the Administrative Decisions (Judicial Review) Act 1977 (“the ADJR Act”). I emphasise I am dealing with a matter on an interim basis and I have not formed any final view as to whether this is a case to which the ADJR Act applies or whether, if it does, the relief sought in the amended application is able to be granted. The question I have to decide today is simply whether there should be an interim order. I approach that question on the basis of considering whether there is a serious question to be tried, that is to say an argument able to be seriously put to the Court in respect of the relief sought by the applicant; and, if so, whether it is appropriate having regard to the balance of convenience to make an interim order.

2. Approaching the matter in that way, I think it is appropriate to make an interim order. There is a question in my mind as to the application of the ADJR Act to this case. I note that, in Chiron Corporation v Registrar of Trade Marks (1998) 42 IPR 75 at 84, Branson J held that the ADJR Act was applicable to a decision by the Registrar in opposition proceedings. The issue in that case was different from the present issue and her Honour made clear the limitations on the availability of relief under the ADJR Act. The ADJR Act only applies where there is a “decision” within the meaning of s3 of that Act. There is a question whether a determination by a delegate of the Registrar, the hearing officer, to refuse an adjournment and to proceed with a hearing on a particular date falls within that concept. I note, however, that reg 21.15 of the Trade Marks Regulations 1995, which deals with hearings by a Registrar, provides for the Registrar to fix a time, date and place for hearing (see reg 21.15(3)), and also to adjourn a hearing by notifying each party to the hearing accordingly (see reg 21.15(9)). The significance of these references is that there is legislative provision for decisions about the date of hearing and the adjournment of a hearing. This is not a case where the determination made by a statutory decision maker is a determination not required or authorised by the statute, and is but a step along the way to a final decision.

3. In one sense, of course, a decision about a hearing date is not final; it does not determine the rights of the parties.  In another sense, it is final; a decision to refuse an adjournment means the hearing is likely to proceed on the appointed day. 

4. I do not think it is appropriate to attempt a final view about this question. It is sufficient to say it is arguable that the ADJR Act does apply to a hearing officer’s decision not to grant an adjournment of the hearing.

5. I also think it is arguable that the hearing officer fell into error of law in considering the application for adjournment.  It seems to be clear that the hearing officer regarded the arbitration proposed by the applicant as being irrelevant to the grounds of opposition raised in respect of the application for registration of the trade mark.  It is not at all clear this view is correct.  The grounds of opposition are extremely wide.  I refer to grounds 3, 4, and 6 to illustrate the point that the grounds embrace questions as to the entitlement of the applicant to trade in the goods, the subject of the mark.  That entitlement seems to depend upon the question whether the agreement of 1 September 1996 between Gerd Thone, the second respondent, and the applicant is still on foot.  That is the issue that the applicant seeks to litigate in the arbitration proceedings.

6. As Mr Gageler has pointed out, the hearing officer did not have the benefit of the letter from the applicant's solicitors seeking the appointment of an arbitrator, in which letter the grounds are stated.  However, I think it is apparent the hearing officer was apprised of the fact that the applicant was asserting that the agreement remained on foot.  Once again, I do not purport to express a final view about these matters. 

7. It seems to me there is a substantial argument in favour of the proposition that the hearing officer fell into an error of law in regarding the issues raised by the purported cancellation of the distribution and marketing agreement, and the challenge to that cancellation by the applicant, as being irrelevant to determination of the grounds of opposition. 

8. Having regard to those matters, I think there is a serious question to be tried. 

9. In relation to balance of convenience, little needs to be said.  Ms Bowne, who appears for the opponent, Oliver Thone, the third respondent to this application, frankly said she was unable to advance any matter of prejudice to the opponent.  Given that the subject matter of the hearing before the Registrar is the present applicant’s application for registration of a trade mark, it is indeed difficult to see any prospect of prejudice.  The effect of further delay in hearing the grounds of opposition is that the applicant will be delayed in achieving any registration of the mark. 

10. Having regard to all these matters, it is appropriate to make an order along the lines sought by the applicant. 

11. I also propose to give leave to serve the amended application on the second respondent, Gerd Thone, in Germany. I agree that the relief sought in the application is unusual in some respects. It may go beyond relief that can be granted in a suit that depends upon the ADJR Act, but that is a matter for determination at the hearing. If it turns out the second respondent has been joined unnecessarily, it may be anticipated an application will be made in relation to costs and this will receive sympathetic consideration by the judge who finally determines the matter.

12. Mr Gleeson has indicated that his client gives the usual undertaking as to damages.  The orders I make are as follows:

    (1)The applicant, by its counsel, having given to the Court the usual undertaking as to damages, order that the first respondent, the Registrar of Trade Marks, postpone the Opposition Hearing fixed for 19 January 2000 in respect of Australian Trade Mark Number 746400 until a date to be fixed by, or pursuant to, an order of the Court or after final hearing.

    (2)The applicant be given leave to serve the amended application, and all affidavits filed in support of that application, on the second respondent, Gerd Thone, outside Australia in Germany. 

    (3)Direct that service on the second respondent be personal and be effected as soon as possible, preferably not later than 25 January 2000.  The application is to bear a notation requiring attendance at a directions hearing to be held at 9.30 am on Friday, 11 February 2000. 

    [There was further discussion.]

13. Ms Bowne has mentioned that the evidence does not reveal when the arbitration proceeding will be heard. This is correct. The application for an arbitration was made only recently, by a letter dated 10 December. It must be borne in mind that relief under the ADJR Act is a discretionary remedy. If it turned out at the final hearing that the application for arbitration was not being bona fide and diligently pursued, this would undoubtedly be a powerful factor in the Court denying relief under the Act.  If it turned out that, notwithstanding that the application for arbitration was made bona fide and diligently pursued, delays which, on an objective basis, were unreasonable so far as the respondents were concerned would be likely to occur, this would also be a factor for consideration.  The result of that consideration must depend upon the nature of the evidence at that time.  I mention this matter because it should be understood by the applicant that the outcome of this case may be powerfully affected by the Court's appreciation of what is happening in respect of the arbitration proceedings.  I need say no more than that.

14. In relation to the costs of this application, I am of the view they ought to be reserved until the final hearing.  I so order.

I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Wilcox.

Associate:

Dated:            21 December 1999

Counsel for the Applicant:	J T Gleeson
Solicitor for the Applicant:	J C Behm & Associates
Counsel for the First Respondent:	S Gageler
Solicitor for the First Respondent:	Australian Government Solicitor
Counsel for the Third Respondent:	A M Bowne
Solicitor for the Third Respondent:	Davies Collison Cave
Date of Hearing:	21 December 1999