Laminar Air Flow Pty Limited v Vokes Limited

[2017] ATMO 48

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Laminar Air Flow Pty Limited to applications by Vokes Limited for correction of the name of owner of registrations 152414 VOKES, 216896 VOKES VEE-GLASS, 250505 VOKES, 387080 UNIVEE, 387081 UNIVEE, and 387082 UNIVEE.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Julian Cook of Counsel instructed by Davies Collison Cave Applicant: Ian Horak of Counsel instructed by Wrays
Decision:	2017 ATMO 48 Trade Marks Act 1995 Section 81 - error on Register – prescriptive nature of regulation 10.2 and sections 109 and 110 – transmission of trade marks by change of name instead of assignment an administrative error and therefore no decision at all – not open to Registrar to now consider assignment in the absence of valid applications to assign - Register to be corrected. Costs awarded against Opponent

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) Laminar Air Flow Pty Limited is the Opponent to a decision of a delegate of the Registrar of Trade Marks to enter onto the Register the corrections sought by Vokes Limited (‘the Applicant’) under section 81 of the Act to the following trade mark registrations:

Registration No:           152414
Priority Date:               23 January 1959

Goods:Class 11: Filters and filtering apparatus (not for use on engines or motors) for filtering gases and liquids,

Trade Mark:                VOKES

Endorsement:               Deemed to be a distinctive Mark by Order of the Assistant Registrar of Trade Marks, dated 30th January, 1961.

Registration No:           216896
Priority Date:               13 February 1968

Goods:Class 11: Filtering material made wholly or principally of bonded glass filaments; filtering, air conditioning, humidifying and dehumidifying apparatus and installations, all incorporating filtering elements made wholly or principally of bonded glass filaments, and parts and fittings therefor

Trade Mark:                VOKES VEE-GLASS

Endorsement:               Registration of this trade mark shall give no right to the exclusive use of the word "Vee-Glass"

Registration No:           250505
Priority Date:               28 July 1971

Goods:Class 6: Pipes and piping equipment made of metal, including pipe supports; and bellow expansion joints

Trade Mark:                VOKES

Registration No:           387080
Priority Date:               7 February 1983

Goods:Class 7: Machines and apparatus included in class 7, all for the collecting, exhausting, controlling or filtering of dust, powdery materials, or of waste products; machines and apparatus included in class 7, all for air cleaning, air purifying and for the handling and conveying of materials; mist collectors; fume, gas and smoke extracting or exhausting machines; filters; parts and fittings included in class 7 for all the aforesaid goods

Trade Mark:                UNIVEE

Registration No:           387081
Priority Date:               7 February 1983

Goods:Class 9: Electric apparatus included in class 9 for collecting, exhausting, controlling or filtering dust, powdery materials or waste products and for air cleaning and air purifying; electrostatic precipitators included in class 9; vacuum cleaners for industrial use; control apparatus and instruments for use with the aforesaid goods; and parts and fittings included in class 9 for all the aforesaid goods

Trade Mark:                UNIVEE

Registration No:           387082
Priority Date:               7 February 1983

Goods:Class 11: Installations and apparatus for air conditioning, air purifying, air cleaning, ventilating, heating, cooling, humidifying, drying and aerating, installations and apparatus for collecting or filtering dust, powdery materials or waste products, filters, and parts and fittings included in Class 11 for all the aforesaid goods

Trade Mark:                UNIVEE

1. Until 17 August 2001 the above registrations (‘the Registrations’ or ‘the Trade Marks’) were registered in the name of the Applicant who, on 3 December 2014, applied to the Registrar citing section 81 of the Act for correction of an error or omission made when entering a change of owner’s name on the Register on 3 December 2014. The chain of events which have culminated in these decisions is well described by the Registrar’s delegate who, on 14 December 2016, in advising her intent to correct the Register, wrote to the parties stating:

   Vokes Limited applied to register the trade marks. There have been no requests made to IP Australia to record assignment of the trade marks from Vokes Limited.

   A request was made on 15 August 2001 to change the name of the registered owner from Vokes Limited to AES Environmental Pty Ltd. The Trade Marks Office amended the registered owner’s details to AES Environmental Pty Ltd on 17 August 2001.

   Section 216(2) of the Trade Marks Act 1995 provides that, if there is a change in the name of the registered owner of the registered trade mark, the registered owner must notify the Registrar in writing of the change and the Registrar must amend the Register accordingly. Subsection 216(2) of the Act does not refer to the change in the identity of the registered owner.

   Only by effect of an assignment, transmission, cancellation or probate provisions, will the identity of the registered owner of a trade mark be altered (Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 209 ALR 1, 28 [123]).

   The amendment to change the name of the registered owner was made in error. As there is no hard evidence before me that there was a valid assignment entitling AES Environmental Pty Ltd to the abovementioned trade mark registrations, I intend to correct the particulars of the registered owner under section 81 of the Act.

2. Consequent upon the advice of the Registrar’s delegate of her intention to apply the correction to the name of the registrant to be that of the Applicant, the Opponent requested to be heard.  The Applicant also applied to be heard.

3. The hearing was in Canberra on 21 April 2017 before a delegate of the Registrar of Trade Marks.  The Opponent was represented at the hearing by Julian Cook of Counsel instructed by Davies Collison Cave; the Applicant was represented at the hearing by Ian Horak of Counsel instructed by Wrays.  The hearing officer who took that hearing is, however, unable to make a decision in these matters and I have been requested, with the agreement of the parties, to make the decisions in his stead.  I have considered the evidence filed in this matter and the written submissions of the parties and also listened to the recording of the hearing.

Evidence

1. As summarised by the Opponent in these matters the Opponent’s evidence comprises:

   Declarations of Brian Allan Young dated 8 September 2016 (Young 1) and 4 April 2017 (Young 2) and Exhibits BY-1 to BY-36. Mr Young has been a director of AES Environmental since 31 January 2000 (i.e. before and after the transactions in issue). He is also the director and founder of both Laminar and Bardy.

   Declaration of Kenneth Arnold dated 17 April 2015 (Arnold) and Exhibits KA-1 to KA-4. From July 1998, Mr Arnold was the Group Managing Director of the environmental division of BTR Plc (BTR), which included both AES Environmental (then called BTR Environmental Pty Ltd) and Vokes UK. He became President of BTR’s environmental division (BTR Environmental) in February 1999 when BTR Plc merged with Seibe Plc to form Invensys Plc (Invensys). Mr Arnold was closely involved throughout the process of the sale of both AES Environmental to Bardy and Vokes UK to McLeod Russel Holding Plc (McLeod), and acted as Invensys’ agent with respect to the sales.

   Declaration of George Fleet dated 16 February 2015 (Fleet) and Exhibits GF-1 to GF-5. Mr Fleet was an investment banker at Wasserstein Perella & Co (Wasserstein) in 1999, when Wasserstein was appointed by Invensys to assist with and arrange the sale of BTR Environmental, which included AES Environmental (then called BTR Environmental Pty Ltd), and Vokes UK. Mr Fleet was personally involved in arrangements for the sale of the shares in AES Environmental to Bardy.

2. And the Applicant’s evidence comprises:

   Declaration of Balkar Sohal dated 31 August 2015 (Sohal) and Exhibits A to F. Mr Sohal is the current Secretary of Vokes Limited. Mr Sohal states that he is “personally unfamiliar with the history of [Vokes UK]”, and most of the information provided in his declaration is apparently sourced from documents which are not identified and which are not in evidence.

   Declaration of Scott Bailey dated 24 September 2014 (Bailey) and Exhibit SB-1. Mr Bailey is the director of Transformer Filtration Systems Pty Ltd (TFS). Mr Bailey is apparently an agent appointed by Vokes UK to sell “Stream-Line Transformer Oil Treatment Plants” in Australia.

   Declaration of Christopher Cao dated 11 September 2015 (Cao) and Exhibits CC-1 and CC2. Mr Cao is Vokes UK’s Australian trade marks attorney. Exhibit CC-1 comprises results of searches of the ATMOSS database in relation to trade marks in the name of Laminar, AES Environmental and BTR Environmental. Exhibit CC-2 comprises a list of trade marks provided to Mr Cao by Vokes UK’s US trade mark attorneys.

3. It is not necessary to discuss the evidence (or the further documentation submitted after the hearing) as it related to the ownership of the Trade Marks at any length for reasons which will become apparent.  The essential point to emerge from the evidence is that both parties are agreed that the change to the Trade Marks that happened on 17 August 2001 wrongly reflected a change of the name of the owner of the Trade Marks rather than to effect an assignment of the Trade Marks.

The Issues

1. The issues arise from a factual background of which the parties before the Registrar have quite divergent views.

2. The Opponent puts it this way:

   … the evidence establishes that Vokes UK was the owner of the AUS Vokes Marks until 1998, when the marks were assigned to BTR Industrial Holdings Limited (BTR Industrial Holdings). The AUS Vokes Marks were then assigned to AES Environmental (which had previously been known as Vokes Australia Pty Limited and BTR Environmental Pty Ltd), prior to the acquisition of the shares in AES Environmental by Bardy Group Pty Ltd (Bardy).

   On 12 October 2005, the AUS Vokes Marks were assigned by AES Environmental to Laminar, and that assignment has been recorded on the Register, with Laminar being entered as the registered owner of the AUS Vokes Marks, since 24 October 2005.

3. The Applicant, for its part, puts it this way:

   It appears that, as a result of a clerical error, Company ABN 96 000 044 244 became registered as the proprietor of the [Trade Marks]. On 25 April 2000, Company ABN 96 000 044 244 changed its name from BTR Environmental Pty Ltd to AES Environmental Pty Ltd. A notification of change of name was filed with the Trade Marks Office on 15 August 2001, indicating that the name of the proprietor of the [Trade Marks], Vokes Limited had changed to AES Environmental Pty Ltd. This was not the case and the Notification had been filed without the knowledge or approval of Vokes Limited.

4. Mr Cook, for the Opponent, framed the issues to be determined by the Registrar as being:

   … whether the [Trade Marks] were owned by AES Environmental when the shares in that company were purchased by Bardy.

5. Mr Horak, for the Applicant, put the issues as being whether:

   … the Registrar erred in changing the name on each of the Registrations from Vokes to AES Environmental Pty Ltd (AES). It is undeniable that an error was made in this respect and the Register should be amended so as to reverse this error. Vokes has therefore made out its onus to show error.

   The second question which Laminar seeks to agitate is whether, notwithstanding the aforementioned error, there was nonetheless some assignment that provided AES with the right to assignment.

Section 81

1. Section 81 of the Act provides:

   81Correction of Register

   The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.

   Note:For Register see section 6.

2. Section 81 is a discretionary provision. The phrase “error or omission” in the Act should not be given a construction which is limited to that which was unintended or which had been produced by accident or inadvertence, as opposed to errors or omissions which were the products of faulty reflection or deliberation[1].

   [1] Kimberly-Clark Ltd v Commissioner of Patents and Another (1988) 84 ALR 685.

3. The Opponent, in effect, asks the Registrar to consider whether the Trade Marks were validly assigned from the Applicant (and, if the Trade Marks were validly assigned from the Applicant, to further consider – if the chain of title in the Trade Marks is good, whether she should leave the Trade Marks as they are: that is, not to correct the Register).

4. However, sections 109 and 110 of the Act are both prescriptive and provide:

   109Application for record of assignment etc. of registered trade mark to be entered in Register

   (1)If a registered trade mark is assigned or transmitted:

   (a)the person registered as the owner of the trade mark; or

   (b)the person to whom the trade mark has been assigned or transmitted;

   must apply to the Registrar for a record of the assignment or transmission to be entered in the Register.

   (2)The application must:

   (a)be in an approved form; and

   (b)be filed, together with any prescribed document, in accordance with the regulations.

   Note:For approved form and file see section 6.

   110Recording of assignment etc. of registered trade mark

   (1)If the application complies with this Act, the Registrar must, at, or within, the time provided for in the regulations:

   (a)enter the particulars of the assignment or transmission in the Register; and

   (b)register the person to whom the trade mark has been assigned or transmitted (beneficiary) as the owner of the trade mark in relation to the goods and/or services in respect of which the assignment or transmission has effect.

   (2)The particulars are taken to have been entered in the Register on the day on which the application was filed, and the registration of the beneficiary as the owner of the trade mark is taken to have had effect from and including that day.

   (3)The Registrar must advertise in the Official Journal:

   (a)the recording of the assignment or transmission; and

   (b)the registration of the beneficiary as the owner of the trade mark.

5. And regulations 10.1 and 10.2 of the Trade Marks Regulations 1995 (‘the Regulations’) provide:

   10.1Applications for assignment etc to be recorded or entered

   For the purposes of paragraphs 107(2)(b) and 109(2)(b) of the Act (which deal with assignment and transmission), the following documents are prescribed:

   (a)a document that establishes the title to a trade mark of the assignee, or of the person to whom the trade mark has been transmitted;

   (b)evidence in writing of consent of the Commission to the assignment of a certification trade mark.

   10.2Recording of assignment etc—trade marks not registered

   (1)For the purposes of paragraph 108(1)(a) of the Act (which deals with assignment and transmission), the Registrar must record particulars of the assignment or transmission of a trade mark in accordance with this regulation unless:

   (a)the application to assign or transmit the trade mark is withdrawn; or

   (b)a prescribed court determines otherwise.

   (2)If there is no record made under Part 11 of the Act of a person claiming an interest in, or a right in respect of, the trade mark, the Registrar must record the particulars after ascertaining that a claim has not been recorded.

6. I note that regulation 10.2 and sections 109 and 110 are prescriptive and the Registrar has no discretion in relation to those provisions: it appears to follow that (in the circumstances of these matters) the discretion that the Registrar has in terms of section 81 might be qualified by those prescriptions[2].  Further, three observations immediately flow from a consideration of the prescriptive nature of the above provisions:

   1.   It is agreed by the parties that there are no applications for the assignment of the Trade Marks before the Registrar – nor have there ever been; and

   2.   There are no accompanying documents that establish the title to the trade mark of the assignee or of the person to who the Trade Marks have been transmitted from the Applicant; and

   3.   The Applicant has not changed its name.

   [2] Subsection 216(2) relevantly applies only where there is a change in the name of the registered owner of a registered trade mark which is not the case here.

7. These observations have two effects:

   1.   The change of name of the owner of the Trade Marks (rather than transfer of the Trade Marks by assignment to a new owner) must (in the absence of valid applications for assignment) have been administrative errors; and

   2.   As there are no valid applications for the assignments of the Trade Marks presently before the Registrar (or, indeed, at all), she must not consider whether the Trade Marks have been subsequently assigned by any person as to so determine would involve further administrative errors.

8. I must not, therefore, consider either the evidence, or the most comprehensive submissions of both Counsel, concerning the disputed chain of title to the Registrations or whether the Applicant is now (after the elapse of 16 years) estopped from being entered as a correction to the name of registrant of the Trade Marks.

9. In Mediaquest Communications LLC v Registrar of Trade Marks[3] (‘Mediaquest’) Emmett J observed of the effect of an administrative error in somewhat analogous circumstances:

   I consider that the existence of an effective assignment or transmission is a necessary precondition to the making of a valid application under s 109 and the subsequent exercise of power by the Registrar under s 110. The absence of a valid assignment or transmission means that any purported exercise by the Registrar of the power conferred by s 110 would be affected by jurisdictional error. There is no reason in principle why the general law should treat administrative decisions involving jurisdictional error as binding or having legal effect unless and until set aside. A decision that involves jurisdictional error lacks legal foundation and is properly regarded, in law, as no decision at all (see Plaintiff S157/2002 vCommonwealth (2003) 211 CLR 476 at [76]).

   [Stress added]

   [3] Mediaquest Communications LLC v Registrar of Trade Marks [2012] FCA 768; (2012) 205 FCR 205; (2012) 96 IPR 453 at [53].

10. Where, then, does this leave the applications for the correction of the Register?  In Mediaquest, Emmett J continued at [54]:

    There was no actual assignment of the Registered Mark to Mediaquest, either from Mr Brailsford or from his executors. Accordingly, the Registrar’s decision of 8 October 2010 to record the assignment in the Register was tainted by jurisdictional error and was no decision at all. It was therefore open to the Registrar to reconsider whether the duty imposed by s 110 had been enlivened, by revisiting the question of whether there was an actual assignment or transmission of the Registered Mark to Mediaquest. Having determined that there was no actual assignment or transmission, it was open to the Registrar to take steps to cancel the earlier action. There is nothing in the Act to indicate that a decision of the Registrar under Part 10 that was affected by jurisdictional error should continue to have legal effect. Indeed the considerations outlined above suggest the contrary.

11. By analogy, the decisions to record changes of the owner’s name on the Register, when they ought to have been the entry of assignments of the Trade Mark, are (in the absence of either those applications for assignment and accompanying documents or – alternatively – an actual change of name of the registrant) tainted by what Emmett J, above, identifies as being ‘jurisdictional error’[4], had no legal foundation and are no decisions at all. As there was no actual change of name of the owner (or valid assignment documents before the Registrar), the changes of name of the owner of the Trade Marks are administrative errors of the same genus as those referred to by Emmett J, above, and it is open to the Registrar to correct the earlier actions (while stressing that section 81 specifies that the Registrar may correct ‘any’ error).

    [4] See the minority judgment of Kirby J in Re Refugee Review Tribunal; Ex parte Aala [2000] HCA 57.

Decision

1. It is therefore appropriate that the Register be corrected to show the owner of the Trade Marks (being registrations 152414, 216896, 250505, 387080, 387081, and 387082) to be the registrant as it was before the errors of 17 August 2001: that is, that the Applicant, Vokes Limited, be entered as the owner of the Trade Marks by correction of the Register.  These corrections should be applied after the elapse of four weeks from the date of this decision. 

Costs

1. The Applicant requested its costs in these matters and, as it has been successful, I award costs against the Opponent at the official scale set out in Schedule 8 to the Regulations and direct that those costs (other than official fees) be appropriately apportioned between these matters.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
29 May 2017