Macteldir Pty Ltd v Dimovski & Anor - [2005] HCATrans 234

[2005] HCATrans 234

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Sydney No S276 of 2004

B e t w e e n -
MACTELDIR PTY LTD
Applicant
and
MILE DIMOVSKI
First Respondent
ROCKDALE ILINDEN SOCCER CLUB INC
Second Respondent
Application for special leave to appeal

GLEESON CJ
McHUGH J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 22 APRIL 2005, AT 9.35 AM

MR N.J. NEIL, QC: May it please the Court, I appear with my learned friend, MR P. LANDER, for the applicant. (instructed by Petrovski Lawyers)

MR B.W. WALKER, SC: May it please the Court, I appear with my friend MR R. ALKADAMANI for the respondents. (instructed by John Ajaka Solicitor)

GLEESON CJ: Yes, Mr Neil.

MR NEIL: Your Honours, this is a matter in which the issue of whether a settlement of a claim that arose pursuant to a claim under the Copyright Act is something that is either within the jurisdiction of the Federal Court pursuant to section 39B(1A)(c) or is properly an associated matter.

GLEESON CJ: Do you need an extension of time?

MR NEIL: I was about to say, your Honour, we do need an extension of time. We have requested the extension of time.

GLEESON CJ: For how long? How far out of time were you?

MR NEIL: The decision of the Full Court was made on 17 October 2003 and as your Honours may have seen from the papers as the other matter relating to a claim against solicitors came for hearing there had by that time appeared some academic criticisms of the decision of the Full Court, one in an article in the Australian Law Journal ‑ ‑ ‑

GLEESON CJ: You are almost a year out of time?

MR NEIL: Yes, your Honour. There had been some suggestions that the decision may not be correct and, however, as your Honours would see from page 603 of the application book, volume 2, there were some observations made. The first judge to hear the matter had to disqualify himself and the next day we came before Justice Allsop on 20 July and at page 603 there are some quotes in the affidavit of the director, Mr Stojanovski, where his Honour at the commencement of paragraph 21 on the page, line 20:

raise something not without some consideration –

His Honour wished to raise a matter on which we might seek to get some instructions and his Honour referred to the obvious problems of costs. His Honour took the view at line 30 that:

The Full Court’s decision is obviously binding –

although I should point out – there may be an argument that is in the original jurisdiction but, nonetheless, it would be considered very, very persuasive, perhaps well binding:

as to both the result and the precise reasoning process. Sitting as a single judge I can do very little about that –

Then at line 40 his Honour said:

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2005] HCATrans 234
Decision Date

CaseChat Overview and Summary

Macteldir Pty Ltd (the applicant) sought leave to appeal to the High Court of Australia against a decision of the Full Federal Court. The dispute concerned the interpretation of section 102(1) of the *Trade Marks Act 1995* (Cth), which deals with the grounds for expungement of a trade mark from the Register. The applicant sought to expunge a trade mark registered by the respondents, arguing it had been registered without a bona fide intention to use it.

The central legal issue before the High Court was whether the respondents' failure to file a declaration of use in accordance with section 94 of the *Trade Marks Act 1995* (Cth) constituted a failure to demonstrate a bona fide intention to use the trade mark at the time of registration, thereby rendering the mark liable for expungement under section 102(1). The High Court was required to determine the proper construction of "bona fide intention to use" in the context of trade mark registration and the evidentiary burden placed on applicants for registration.

Gleeson CJ and McHugh J held that the obligation to file a declaration of use under section 94 was a procedural requirement that arose *after* registration, not a condition precedent to registration. Their Honours reasoned that the absence of such a declaration did not, of itself, demonstrate a lack of bona fide intention to use the mark at the time of registration. The focus of section 102(1) was on the intention at the time of registration, and the subsequent failure to comply with procedural requirements did not retroactively negate that intention. The court therefore found that the grounds for expungement under section 102(1) were not made out.

Orders