Kitchin v Professional Standards Board
[2004] FMCA 232
•21 April 2004
FEDERAL MAGISTRATES COURT OF AUSTRALIA
| KITCHIN v PROFESSIONAL STANDARDS BOARD | [2004] FMCA 232 |
| ADMINISTRATIVE LAW – Decision – natural justice – procedural fairness – review of decision – Administrative Decisions (Judicial Review) Act 1977 (Cth) s.5 – Trade Marks Act 1995 (Cth) s.228A registration of trade marks attorneys – Trade Mark Regulations 1995 (Cth) r 20.1 qualifications – application – refusal. |
Administrative Decisions (Judicial Review) Act 1977 (Cth)
Trade Marks Act 1995 (Cth)
Trade Mark Regulations 1995 (Cth)
Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321
| Applicant: | HELEN LESLEY KITCHIN |
| Respondent: | PROFESSIONAL STANDARDS BOARD FOR PATENT AND TRADE MARK ATTORNEYS |
| File No: | MZ855 of 2003 |
| Delivered on: | 21 April 2004 |
| Delivered at: | Melbourne |
| Hearing date: | 12 March 2004 |
| Final submission received by applicant: | 19 March 2004 |
| Final submission received by respondent: | 2 April 2004 |
| Judgment of: | Hartnett FM |
REPRESENTATION
| Counsel for the Applicant: | Ms Neskovcin |
| Solicitors for the Applicant: | Allens Arthur Robinson |
| Counsel for the Respondent: | Ms Nicholas |
| Solicitors for the Respondent: | Nicholas Dibb Solicitors |
ORDER
The application is dismissed.
The applicant is to pay the costs of the respondent as agreed or failing agreement as determined by the Court.
| FEDERAL MAGISTRATES COURT OF AUSTRALIA AT MELBOURNE |
MZ 855 of 2003
| HELEN LESLEY KITCHIN |
Applicant
And
| PROFESSIONAL STANDARDS BOARD FOR PATENT AND TRADE MARK ATTORNEYS |
Respondent
REASONS FOR JUDGMENT
Background
On 7 August 2003 the applicant filed an application for an order of review to review decisions of the Professional Standards Board for Patent and Trade Mark Attorneys (“the Board”), those decisions being said to be the following:
(A) the decision of the Respondent in late March 2001 refusing to consider any application by the Applicant for a written statement under Regulation 20.6 of the Trade Marks Regulations 1995 (Cth);
(B) the decision of the Respondent in late March 2001 not to give the Applicant a written statement under Regulation 20.6 of the Trade Marks Regulations 1995 (Cth);
(C) the decision of the Respondent on or about 31 October 2001 not to give the Applicant a written statement under Regulation 20.6 of the Trade Marks Regulations 1995 (Cth); and
(D) the decision of the Respondent on or about 27 February 2002 that its decision of 31 October 2001 was correct.
The applicant relies upon an amended statement of claim filed the
12 March 2004; an affidavit sworn 28 January 2004 by the applicant and an affidavit of Wayne McMaster sworn 23 January 2004.
The respondent relies upon an amended defence dated the 10 March 2004; an affidavit of Antonietta Caggiano sworn 10 March 2004; affidavits of John Swift sworn the 4 December 2003 and 5 March 2004; and an affidavit of Raoul Mortley sworn 5 March 2004.
The matter proceeded to a hearing on the 12 March 2004. Each of the parties was represented. Each of Ms Kitchin and Mr Swift gave evidence and were cross-examined. Counsel for the respondent raised as a preliminary issue that none of the alleged decisions claimed by the applicant to constitute ‘decisions’ for the purposes of the Administrative Decisions (Judicial Review) Act 1977 (Cth) (“ADJR Act”) were in fact decisions within the meaning of that Act and were as a consequence unreviewable by this Court. I indicated that I would consider that argument in a consideration of the totality of the matter which was scheduled for hearing that day, was of limited duration and in relation to which a witness was already travelling from Canberra.
This preliminary issue appeared in the respondent’s defence dated 14 November 2003, paragraph 20, with respect to only two of the alleged decisions. The respondent in both that and the amended defence
did not deny that the October 2001 decision and the 27 February decision are decisions for the purposes of the [ADJR] Act
It was not until the day of hearing that the applicant became aware the respondent was claiming that none of the four decisions referred to by the applicant were decisions within the meaning of section 5 of the ADJR Act. Accordingly I allowed further submissions on that matter.
The first decision (A)
The applicant’s case is that in March 2001 she intended to apply for a written statement from the Board under Regulation 20.6 that she had the qualifications referred to in Regulation 20.1(1) of the Trade Mark Regulations 1995 (Cth) (“the Regulations”).
Regulation 20.6 is as follows:
The Board must give to a person a written statement that the person has the qualifications mentioned in subregulation 20.1(1) if:
(a)the person applies in the prescribed form; and
(b)there are reasonable grounds for believing that the person has the qualifications.
The applicant does not say she applied in the prescribed form. Her evidence is that in March 2001, in a simple telephone enquiry to a person whom she described as a lady answering the telephone and later, as the assistant to the Secretary to the Board, the Secretary being Mr Jonathan Swift, she asked whether she might apply for a written statement. The applicant’s evidence is that she was told that the Board would not consider any applications for a written statement until its August/September 2001 meeting. She did not speak to Mr Swift and it is likely that she spoke to Ms Antonietta Caggiano who was a member of the staff of the Secretariat of the Board between September 1999 and April 2003. She was the only woman employed at the Secretariat in or about March 2001 and acknowledged in her affidavit that the Secretariat received many telephone enquiries from persons interested in registration as patent or trade mark attorneys. She does not however recall speaking with the applicant specifically. Nevertheless her evidence is that had the applicant made her telephone enquiry on or after 9 March 2001 the applicant would have been informed that the next Board meeting was scheduled for August/September 2001. This accords with the applicant’s own evidence and information provided on the Board’s website which was as follows:
When will the Board consider your application?
The Board has determined that it will consider applications for recognition of qualifications at the meetings in February/March and August/September only. Applications should be submitted as early as possible to ensure that they are considered.
Although the applicant —
wanted to send my [her] application as soon as possible so that, if the application was considered before the meeting and there were any deficiencies or problems with my [her] application, I [she] would have the opportunity to rectify those problems prior to the Board formally meeting
— she was delayed some weeks in obtaining a certified copy of her academic record from Monash University. This impacted upon the time at which she submitted her application rather than things said or done by the Board.
The applicant did not complete the prescribed form and make applications for registration as a Trade Marks Attorney under Regulation 20.3 and for a written statement under Regulation 20.6 of the Regulations until receipt by the Board on the 13 July 2001 of her correspondence.
The applicant claims that the Board’s policy, namely that it would consider any application for a written statement when it met in August/September 2001 together with the telephone information provided to the applicant upon her enquiry was in fact a ‘decision’ of the Board being both a refusal to consider any application for a written statement and a ‘decision’ not to give the applicant a written statement from the Board. It is said by the applicant that having regard to the practical effect or outcome of the telephone enquiry of the applicant to Ms Caggiano, the Board
communicated a decision in relation to the Applicant’s request
and that such decision was
a final disposition by the Board of the Applicant’s request for a written statement and, therefore, constitutes a reviewable decision for the purposes of the ADJR Act.
I reject this submission. The applicant’s own evidence is that she, in a telephone enquiry, asked a person unknown and at the time unidentified to her, when the Board would next meet to consider applications. She at the time had no applications in the prescribed form before the Board. She made no request that any oral or other application she might make for a written statement be then considered. There can be no refusal where no request has been made. In any event the Board was unable to consider an application made by the applicant unless it was in the required form. The applicant was aware of the application process and was at liberty to submit her application in the prescribed form at any time. She was not misled by the Board in her failure to submit her application in the prescribed form prior to the legislative change which occurred on 5 July 2001. None of the steps published by the Board or anything that was said to the applicant affected her rights in any way. She was not prevented from making her application at any time including before 5 July 2001. The telephone enquiry and information provided to the applicant did not constitute an application in the required form and a decision.
I conclude in March 2001 there was no decision at all, let alone a decision within the meaning of the ADJR Act which is reviewable by this Court.
The second decision (B)
For the reasons set out under the preceding heading relating to decision (A), I find likewise that this was not a decision at all and therefore not a decision within the meaning the ADJR Act which is reviewable by this Court. The Board did not give a written statement to the applicant because she had not, as a first step, made application to it in the prescribed form which the Board could consider in the process of it subsequently making any decision. There was no substantive determination by the Board at any time in March 2001 or any ‘decision’ justiciable under the ADJR Act as defined in Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321.
The third decision (C)
On the 31 October 2001 the Board determined not to give the applicant a written statement under Regulation 20.6 of the Regulations. By that time the applicant had applied to the Board in the prescribed form for a written statement under Regulation 20.6. The application had been forwarded by post from the solicitor’s offices at which the applicant worked on or about the 5 July 2001 as claimed by the applicant. The application was dated the 4 July 2001. It was however not received by the Board until the 13 July 2001. From the 5 July 2001, Regulation 20.1 of the Regulations was amended. That dealt with section 228A(4)(a) of the Trade Marks Act 1995 (Cth) (“the Act”).
On the 13 July 2001 the Board notified the applicant that it had received her applications of 5 July 2001 for registration as a Trade Marks Attorney under Regulation 20.3 and for a written statement under Regulation 20.6 of the Regulations. The applicant was advised that her application for a written statement would be passed to the Board for consideration at its next available meeting. That meeting occurred on the 25 October 2001 and the Board determined that the applicant’s qualifications did not meet the requirements of Regulation 20.1(1)(b) as amended on 5 July 2001. It notified the applicant of that decision in correspondence of 31 October 2001.
Had the Board provided the written statement required under Regulations 20.3 and 20.6 of the Regulations, then the Designated Manager would have been required to consider whether to register the applicant as a Trade Marks Attorney under section 228A(4) of the Trade Marks Act 1995 (Cth), noting the mandatory language of that section where the applicant satisfies the criteria.
The respondent argued that this decision of the Board is not reviewable as it is not a decision within the meaning of the ADJR Act, being not a decision which was substantive or final in character. The respondent’s argument is twofold:
a)firstly, that the Board’s decision is best characterised as a step along the way in the course of making the ultimate decision which is that made by the Designated Manager; and
b)secondly, that Regulation 20.6 is a provision which exhibits mandatory characteristics such that the Board’s decision is one which flows from the effect of the Act – it must issue the written statement if the person holds the qualifications specified.
I reject these submissions. This decision is a decision within the meaning of the ADJR Act and as such is reviewable by this Court. The decision is one required by the statute (being a decision made under or in pursuance of the Regulations) and it had a very real quality of finality. It was a final determination of the applicant’s application for a written statement. She could proceed as an important matter of practicality no further with the matter of registration. It was a substantive and final decision. The Regulation being couched in mandatory terms such that the decision itself becomes mandatory upon criteria being satisfied as determined by the Board does not make the decision one incapable of review. It remains –
a decision of an administrative character made, … or required to be made (whether in the exercise of a discretion or not …) … [section 3(1) of the ADJR Act] under an enactment …
Having determined that in this instance there is a reviewable decision, it then needs to be determined whether any error attended the making of that decision. The applicant applied for an order extending the time for making an order of review. By consent the Court made that order. The applicant seeks that the respondent’s decision be set aside and an order made that the respondent provide a written statement under Regulation 20.6 that the applicant has the qualifications referred to in Regulation 20.1(1) of the Regulations.
I can find no error on the part of the Board in its decision of 31 October 2001. The applicant was accorded procedural fairness. I can find no error of law. She does not take issue with the fact that the qualifications she has obtained do not meet the necessary criteria following the 5 July 2001 amendments to the Regulations.
The Chairman of the Board at all relevant times was Mr Raoul Mortley. His evidence was that as the applicant’s application for a written statement did not come within the circumstances specified where the Secretary may issue a written statement to an applicant, the matter was referred by the Secretary to the Board meeting of the 25 October 2001. Although the Board had conferred authority upon the Secretary to deal with any application - a matter which the applicant complains she was not advised of in her telephone enquiry - her application was of a type that required referral to the Board. That was the first meeting of the Board held since March 2001 as no Board had been appointed by the Commonwealth during the period March to late August. It was the first available date the new Board could meet. His evidence was that otherwise the Board meets as many times as necessary to perform its functions as it is required to do. The Board decided by consensus not to issue the applicant with a written statement as her Associate Diploma of Business from Box Hill Institute did not meet the requirements of Regulation 20.1(1)(b). In reaching its decision the Board considered the Regulations and the material put before it by the applicant. The Board was not under an obligation to afford to the applicant an oral hearing.
The applicant’s application was properly considered by the Board and each of its members in both October 2001 and then upon review as requested by the applicant again in February 2002. At the time and continuing, the applicant did not and does not have the requisite qualifications. The evidence of Raoul Mortley is that the Board was of the view that prior to 5 July 2001 the applicant would not have qualified under the previous Regulations (which would have applied to the applicant had she lodged her application when the old Regulations were in force) as she did not possess a qualification at the level of a diploma from a higher education institution.
The fourth decision (D)
In letter dated 19 February 2002 the applicant requested of the Board that it reconsider her previous request for a written statement under Regulation 20.6 and her application for registration as a Trade Marks Attorney. Additional information was brought to the attention of the Board to consider in what was referred to by the applicant as – and incorrectly I find – the Board’s “exercise of its discretion”. In correspondence dated 13 March 2002 the Board informed the applicant that it considered the additional information submitted by her at its meeting on 27 February 2002 and decided that its original decision was correct. It could not issue a written statement because it considered the application in accordance with the Regulations in force at the time the application was made. It noted that in any event the Regulations as they stood prior to 5 July 2001 would not have allowed recognition of the applicant’s qualification.
Is a decision confirming the accuracy of an earlier decision a further reviewable decision? The Board was not obliged to revisit their decision in the manner requested by the applicant. They did so following receipt of the applicant’s correspondence but they made no further or other decision. The Board merely confirmed the accuracy of the earlier decision and attempted to give the applicant a further explanation as to why it had determined the matter in the manner it had. Indeed thereafter Mr Swift, Secretary to the Board, corresponded in a timely and helpful way with the applicant who sought further explanation and reconsideration.
In my view the affirming of the earlier decision is not a reviewable decision under the ADJR Act. The decision and reason for it was not altered by a request from the applicant to reconsider it in the light of further material which the applicant urged the Board to consider but which did not address in a meaningful way that issue which precluded the issuing of a written statement. That review did not produce a subsequent decision. Even if it can be said the further consideration was a ‘decision’ on the basis that new evidence was placed before the Board and examined by it then I can find no error disclosed in relation to it. Throughout the applicant was afforded procedural fairness and no error of law or improper exercise of its power by the Board is present such that would result in the applicant’s claim succeeding.
The applicant’s claim is dismissed and the applicant is to pay the costs of the respondent.
I certify that the preceding twenty-five (25) paragraphs are a true copy of the reasons for judgment of Hartnett FM
Associate: Sophie Killen
Date: 21 April 2004
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