N1 Games Ltd v Registrar of Trade Marks
[2024] FedCFamC2G 1181
•8 November 2024
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
N1 Games Ltd v Registrar of Trade Marks [2024] FedCFamC2G 1181
File number(s): SYG 1463 of 2024 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 8 November 2024 Catchwords: ADMINISTRATIVE LAW – application for orders of review under the Administrative Decisions (Judicial review) Act 1977 (Cth) - where the International Bureau of the World Intellectual Property Organisation notified the Registrar of Trade Marks (Registrar) of a request (IRDA) that protection resulting from the international registration of the applicant’s trade mark under the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989, be extended to Australia – where on 23 February 2023 a delegate of the Registrar accepted the IRDA pursuant to reg 17A.24 of the Trade Marks Regulations 1995 (Cth) (Regulations) – where in April 2023 the owner (Opponent) of three trade marks registered under the Trade Marks Act 1995 (Cth) (Act) filed a notice of opposition in relation to the IRDA – where in February 2024 the Opponent requested the Registrar to exercise the power conferred by reg 17A.27 to revoke the acceptance of the IRDA - where on 4 March 2024 a delegate of the Registrar notified the applicant of an intention to revoke the acceptance of the IRDA – where on 4 May 2024 the applicant provided submissions in support of the contention that it was not reasonable in all of the circumstances for the Registrar to revoke the acceptance of the IRDA – where on 7 May 2024 a delegate of the Registrar notified the applicant that given there is an opposition process underway revocation of the acceptance of the IRDA would not be reasonable (May 7 position) – where on 3 June 2024 a delegate of the Register notified the applicant that the acceptance of the IRDA must be cancelled and was cancelled purportedly pursuant to reg 17A.27 of the Regulations – whether Registrar owed a duty of procedural fairness to the applicant – whether any such duty of procedural fairness extended to giving the applicant notice that the Registrar intended to renounce the May 7 position and that it would not be reasonable to revoke the acceptance of the IRDA and instead determine that it was reasonable in al of the circumstances to revoke the acceptance of the IRDA – whether the Registrar’s purported exercise of the power under reg 17A.27 to revoke the cancellation of the IRDA resulted from an improper exercise of power or error of law – the Registrar afforded the applicant procedural fairness in relation to the decision to revoke the acceptance of the IRDA, the discharge of the duty to afford procedural fairness not requiring the Registrar to give notice that the Registrar intended to renounce the 7 May position – the decision to revoke acceptance of the IRDA did not result from any improper exercise of power or from an error of law – whether assuming the applicant established any of the grounds for review relief should be withheld on the ground that Parliament manifested an intention that any challenges in relation to the exercise of powers in connection with an IRDA be restricted to the decision that results in a trade mark that is the subject of an IRDA being given protection in Australia – discretion to grant orders should be withheld – application dismissed Legislation: Administrative Decisions (Judicial Review) Act 1977 (Cth) ss 3, 5, 6, 16
Trade Marks Act 1995 (Cth) ss 34, 35, 38, 44, 56, 69, 189, 203, 207
Federal Court Rules 2011 (Cth) Pt 40
Trade Marks Regulations 1995 (Cth) regs 17A.2, 17A.3, 17A.4, 17A.12, 17A.13, 17A.14, 17A.16, 17A.17, 17A.18, 17A.24, 17A.25, 17A.26, 17A.27, 17A.32, 17A.33, 17A.34, 17A.36, 17A.37, 17A.39, 17A.66
Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989 arts 1, 3, 4, 5, 9, 14
Cases cited: 1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209
Ainsworth v Criminal Justice Commission (1992) 175 CLR 564
Beling v Sixty International S.A. [2015] FCA 250
Boral Gas (NSW) Pty Ltd v Magill (1993) 32 NSWLR 501
Griffith University v Tang [2005] HCA 7
Kamha v Australian Prudential Regulation Authority [2005] FCAFC 248
Minister for Immigration and Border Protection v SZSSJ; Minister for Immigration and Border Protection v SZTZI [2016] HCA 29
Minister for Immigration v Kurtovic (1991) 21 FCR 193
Stack v Commissioner of Patents (1999) 55 ALD 654
The Minister for Immigration and Multicultural and Indigenous Affairs v Lam [2003] HCA 6
Division: General Number of paragraphs: 104 Date of hearing: 3 October 2024 Place: Sydney Counsel for the Applicant: Ms M McGrath Solicitor for the Applicant: Lodestar Legal Pty Ltd Counsel for the Respondent: Mr S Rebikoff Solicitor for the Respondent: The Australian Government Solicitor
Table of Corrections 11 November 2024 In line 5 of paragraph 70 of the judgment “reg 17A.17” has been amended to read “reg 17A.27”. ORDERS
SYG 1463 of 2024 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: N1 GAMES LTD
Applicant
AND: REGISTRAR OF TRADE MARKS
Respondent
ORDER MADE BY:
JUDGE MANOUSARIDIS
DATE OF ORDER:
8 NOVEMBER 2024
THE COURT ORDERS THAT:
1.The application is dismissed.
2.The applicant pay the respondent’s costs.
3.Unless the parties agree on the amount of the respondent’s costs referred to in order 2, the costs of the respondent be referred for taxation pursuant to Part 40 of the Federal Court Rules 2011 (Cth).
THE COURT NOTES THAT:
A.These Orders have been amended pursuant to r 17.05(2)(g) of the Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
INTRODUCTION
In December 2021 the applicant (N1G) secured “international registration” of its trade mark ELVIS FROG IN VEGAS (Trade Mark) in the register maintained by the International Bureau of the World Intellectual Property Organisation. N1G did so under the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989 (Protocol).
On 20 June 2022, pursuant to provisions of the Protocol to which I refer later in these reasons, the International Bureau notified IP Australia of a request (the N1G IRDA) that protection resulting from the international registration of the Trade Mark under the Protocol be extended to Australia. On 23 February 2023, pursuant to provisions of the Trade Marks Regulations 1995 (Cth) (Regulations) to which I also refer later, a delegate of the Registrar of Trade Marks (Registrar) accepted the N1G IRDA, and advertised that acceptance.
On 18 April 2023, within the time permitted by the Regulations, an entity known as ABG EPE IP LLC (ABG) filed a notice of opposition to the N1G IRDA. ABG is the owner of three trade marks (ELVIS Registrations), each of which comprises the word ELVIS, and each of which is registered under the Trade Marks Act 1995 (Cth) (TM Act). On 9 February 2024 ABG requested the Registrar revoke the acceptance of the N1G IRDA on the ground that it was reasonable to do so because, ABG submitted, the ELVIS Registrations ought to have been raised as a barrier to acceptance under s 44 of the TM Act. On 4 May 2024 N1G provided to the Registrar submissions in support of its opposition to ABG’s request that the Registrar revoke the acceptance of the N1G IRDA.
On 7 May 2024 the Registrar decided that, given the opposition proceedings ABG had initiated were currently underway in relation to the N1G IRDA, revocation of the acceptance of the N1G IRDA would not be reasonable (Non-revocation Decision). In a letter to the lawyers for N1G dated 3 June 2024, however, the Registrar stated that “the decision not to revoke has been reviewed”, and that “the IP Office must revoke your application” (Revocation Decision). The Registrar provided reasons for the Revocation Decision in a letter dated 4 June 2024, and by notice dated 5 June 2024, the Registrar informed N1G that the N1G IRDA did not meet the requirements of the TM Act, and identified the issue that N1G needed to address.
N1G now applies pursuant to s 5 and s 6 of the Administrative Decisions (Judicial Review) Act 1977 (Cth) (ADJR Act) for declarations under s 16 of that Act that the Revocation Decision was unlawful, an order that the Revocation Decision be “discarded”, and an order that the Registrar notify N1G of acceptance of the N1G IRDA pursuant to s 34(a) of the TM Act, and to advertise the acceptance of the N1G IRDA pursuant to s 34(b) of the TM Act. In its counsel’s written submissions, N1G claims that:
(a)The Revocation Decision resulted from an improper exercise of the power (within the meaning of s 6(1)(e) of the ADJR Act) that is conferred on the Registrar by reg 17A. 27 of the Regulations, or the Revocation Decision was otherwise not authorised by reg 17A.27, because:[1]
(i)the Registrar purported to make the Revocation Decision despite the Registrar having made the Non-revocation Decision;
(ii)there is no evidence from the Registrar to support a contrary position or reasonableness to revoke;
(iii)s 203 of the TM Act required the Registrar, but the Registrar failed, to afford N1G an opportunity to be heard on whether the Non-revocation Decision should be reviewed.
(b)In making the Revocation Decision the Registrar failed “to properly apply the test in reg 17A.27 of the Regulations” and, for that reason, the Revocation Decision resulted from an error of law within the meaning of s 5(1)(f) and s 6(1)(f) of the ADJR Act.[2]
(c)The Registrar’s making of the Revocation Decision resulted from a failure by the Registrar to apply the rules of natural justice, within the meaning of s 5(1)(a) and s 6(1)(a) of the ADJR Act.
[1] Applicant’s Outline of Submissions, [34]
[2] Applicant’s Outline of Submissions, [35]
The Registrar submits that N1G cannot establish any of the grounds of review on which it relies; and, in any event, even if N1G established any of those grounds, the Court, in the exercise of its discretion, should refuse to grant relief because the TM Act and the Regulations provide adequate alternative remedies to those s 16 of the ADJR Act provides.
In these reasons for judgment, therefore, I consider two principal questions. The first is whether N1G has established any of the grounds of review on which it relies. The second question arises if the first is answered in the affirmative; and that is whether relief should be withheld on the ground that the TM Act and the Regulations provide adequate alternative remedies to those s 16 of the ADJR Act provides.
To be in a position to determine these questions, it will be necessary, first, to describe the statutory regime that regulates the filing and determination of an “IRDA”; second, describe the course of proceeding of the N1G IRDA in the Trade Marks Office (TMO); and, third, briefly examine the application of the ADJR Act to the Revocation Decision. It will also be necessary, however, to identify with some precision the act or conduct N1G in fact challenges in this proceeding. That is so because, as I show later, there is some ambiguity about what N1G in fact challenges.
STATUTORY SCHEME RELATING TO IRDAS
The letters “IRDA” stand for “international registration designating Australia”. That expression is defined in the Regulations as a “request made under Art 3ter(1) or (2) of the Protocol, for extension to Australia of the protection resulting from the international registration of a trade mark”.[3] Thus, the IRDA in relation to the Trade Mark of which IP Australia was notified on 20 June 2022 constituted a request made under Art 3ter(1) or (2) of the Protocol, for extension to Australia of the protection resulting from the international registration of the Trade Mark.
[3] Regulations, reg 17A.2
The Madrid Protocol
“Protocol” is defined in the Regulations to be a reference to the “Madrid Protocol”,[4] which in turn is defined to mean the “Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, as signed at Madrid on 28 June 1989”.[5] Australia acceded to the Protocol on 11 April 2001; and Australia gave effect to its obligations under the Protocol by doing two things. The first was to amend the TM Act to include s 189A, subsection (1) of which stipulates that the “regulations may provide for such matters as are necessary to enable performance of the obligation of Australia or to obtain for Australia any advantage or benefit, under the Madrid protocol”. The second thing was to make regulations pursuant to s 189A(1) of the TM Act, these being the provisions that are principally contained in Part 17A of the Regulations.
[4] Regulations, reg 17A.2
[5] Regulations, reg 2.1
The object of the Protocol is to enable persons in whose name an application for the registration of a (trade) mark has been filed with “the Office of a Contracting Party” (referred to in the Protocol as “the basic application”) or in whose name a (trade) mark has been registered in the register of the Office of a Contracting Party (referred to in the Protocol as “the basic registration”) to “secure protection for his mark in the territory of the Contracting Parties”; and the Protocol seeks to achieve this object by conferring an ability on such persons to obtain an “international registration” of their mark in the register of the “International Bureau” of the World Intellectual Property Organisation (referred to in the Protocol as “the International Register”).[6] Under Art 1 of the Protocol, “Contracting Parties” is a reference to “Contracting States” and to “Contracting Organisations”; “Contracting States” is a reference to States that are parties to the Protocol; and “Contracting Organisations” is a reference to “any intergovernmental organization” described in Art 14(1)(b) that is a party to the Protocol. Persons may seek to secure international registration, however, only if they have the required connection with the Contracting State, or, where the basic application or basic registration has been made with or by an Office of a Contracting Organisation, with the State that is a member of the Contracting Organisation. The required connection is that the person must be a national of, or must be domiciled in, or must have a real and effective industrial or commercial establishment in, the Contracting State or a member State of the Contracting Organisation.[7]
[6] Protocol, Art 1(1). The World International Property Organisation was established by the Convention Establishing the World Intellectual Property Organization, signed at Stockholm on 14 July 1967. The “International Bureau” is defined in Art 2 of the Protocol as the “International Bureau of Intellectual Property”. Art 9(1) provides that the “International Bureau shall be the Secretariat of the Organization”.
[7] Protocol, Art 2(1)(i). The Protocol also provides for the filing or registration of marks with “Contracting Organizations”, as that expression is defined in Art 14(1)(b).
Persons may seek to secure international registration of their mark by filing an “international application” with the International Bureau “through the intermediary of the office with which the basic application was filed or by which the basic registration was made” (referred to by the Protocol as the “Office of origin”).[8] The international application must be in the form prescribed by the regulations (being regulations made by the International Bureau for the purposes of the Protocol) (Madrid Regulations). The Office of origin must certify that the particulars appearing on the international application correspond to the particulars appearing in the basic application or the basic registration, as the case may be, further indicating the date and number of the basic application or basic registration.[9] The applicant for international registration must indicate the goods and services in respect of which protection of the mark is sought and, if possible, the class or classes as “established by the Nice Agreement concerning the international classification of goods and services for the purpose of the registration for the purposes of marks”.[10] The International Bureau must register immediately the mark in relation to which an international application has been filed; and it must “notify the international registration without delay to the Offices concerned”,[11] and publish in a periodical gazette the International Bureau issues the particulars contained in the international application.[12]
[8] Protocol, Art 2(2)
[9] Protocol, Art 3(1)
[10]Protocol, Art 3(2), the “Nice Agreement” being a reference to the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised at Stockholm on 14 July 1967.
[11] Protocol, Art 3(2)
[12] Protocol, Art 3(4)
The International Bureau’s registering a mark that is the subject of an international application does not by itself have any effect in the territory of any of the Contracting States. For the registered mark to have any such effect it is necessary for the applicant to make a “request for territorial extension”, namely, a request that the protection resulting from international registration extend to a contracting party or parties other than to the Contracting Party “whose Office is the Office of origin”.[13] The applicant may make a request for territorial extension in relation to his or her mark, either in the international application,[14] or subsequently to the international registration of the mark.[15] In the latter case, the International Bureau must record the request and “notify such recordal without delay to the Office or Offices concerned”.[16] Where these conditions are satisfied, Art 4 of the Protocol provides that, from the “date of the registration” (being the date on which the International Bureau registers an international application which includes a request for territorial extension in specified contracting parties made in accordance with Art 3ter(1)), or from “the date of recordal” (being the date on which the International Bureau records a request for territorial extensions made in accordance with Art 3ter(1)), “the protection of the mark in each of the contracting parties concerned shall be the same as if the mark had been deposited direct with the Office of that contracting party”.
[13] Protocol, Art 3bis
[14] Protocol, Art 3ter (1)
[15] Protocol, Art 3ter (2)
[16] Protocol, Art 3ter (2)
The consequences provided by Art 4 of the Protocol, however, are subject to the Contracting Party, in relation to whom a request for territorial extension of a mark has been made, not notifying the International Bureau, in accordance with Art 5(1) and (2) of the Protocol, that it has refused to grant protection to the mark, or if the Contracting Party has withdrawn a refusal it had previously notified to the International Bureau. Art 5(1) provides that, where the applicable legislation of a Contracting Party so authorises, any Office of a Contracting Party which has been notified by the International Bureau of an extension to that Contracting Party under Art 3ter(1) or (2) shall have the right to declare in a “notification of refusal” that protection cannot be granted in the Contracting Party to the mark that is the subject of such extension. Any such refusal, however, can be based “only on the grounds which would apply, under the Paris Convention for the Protection of Industrial Property, in the case of a mark deposited direct with the Office which notifies the refusal”.[17] Article 5(1) provides that any Office wishing to exercise such a right must notify its refusal to the International Bureau, together with all of the grounds, within the time period prescribed by the law that applies to that Office, and, at the latest, one year from the date on which the Office is notified by the International Bureau. That is subject to Art 5(2)(b), which provides that the Contracting Party may declare that, for international registrations made under the Protocol, the time limit of one year is replaced by 18 months.
Division 3 of Part 17A of the Regulations
[17] These grounds are stated in Art 6quinquiesB of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised up to and including in Stockholm in 1967.
General effect of Division 3 of Part 17A of the Regulations
Division 3 of Part 17A of the Regulations is directed to trade marks that are the subject of an IRDA, namely, trade marks that have been registered in the register maintained by the International Bureau.[18] To a significant degree, the provisions of Division 3, as they apply to such trade marks, mimic the provisions that apply to trade marks that are the subject of applications for registration under the TM Act; and Division 3 incorporates as grounds for rejecting an IRDA the grounds the TM Act provides for rejecting an application for the registration of a trade mark under the TM Act.
[18] Regulation 17A.2
In substance, therefore, Division 3 of Part 17A treats a notification of an IRDA as an application under the TM Act for the registration of the trade mark to which the IRDA relates. Protection will be extended to the trade mark in the same circumstances in which a trade mark that is the subject of an application for registration under the TM Act will be registered, adjusted to take into account the fact that the trade mark that is the subject of the IRDA has been registered with the International Register maintained by the International Bureau pursuant to provisions of the Protocol.[19] Formally, however, protection in Australia of a trade mark that is the subject of an IRDA is derived, not from the TM Act, but from the Protocol. This formal difference is reflected in the different acts by which protection is granted to a trade mark that is the subject of an application for registration under the TM Act, and the acts by which protection is granted to a trade mark that is the subject of an IRDA.
[19] One such adjustment concerns the “priority date’ The priority date of a trade mark that is the subject of a IRDA is defined by reference to the date of the international registration of the trade mark, or the date of the recording of the request for protection – see reg 17A.3 and reg 17A.4.
In the case of a trade mark that is the subject of an application for registration under the TM Act, protection is granted when the trade mark is registered by the Registrar entering the information specified by s 69 of the TM Act in the register maintained pursuant to s 207(1) of the TM Act (the Register). In the case of a trade mark that is the subject of an IRDA, on the other hand, protection is granted from the time the trade mark becomes a “protected international trade mark” as provided for by reg 17A.36 of the Regulations. When that occurs, the Registrar must, pursuant to reg 17A.37(1) publish that fact in a computer data base maintained by the TMO, and record that fact in “the Record of International Registrations”, being a record reg 17A.66 requires the Registrar to maintain for the purposes of Part 17A of the Regulations. Protection arises, not from the Registrar’s entering details in the Record of International Registrations; it arises from the “international registration of the mark”, that is, the registration of the trade mark in the International Register (being the register maintained by the International Bureau). That follows from the definition of “protected international trade mark” given in reg 17A.2 as a “trade mark to which protection resulting from international registration is extended in accordance with these regulations”, and also reg 17A.39 of the Regulations, which provides that the sections of the TM Act that relate to the infringement of trade marks registered under the TM Act apply to “protected international trade marks”.
As with applications for the registration of trade marks under the TM Act, there are a number of different administrative (and judicial) pathways through which an IRDA may need to proceed before the trade mark to which it relates attains (or is refused) in Australia the protection provided by the Protocol; and it is potentially relevant to this proceeding to identify the principal pathways.
Initial examination of IRDA
The first step which occurs in relation to every IRDA is triggered when the International Bureau notifies the Registrar of an IRDA. When that occurs the Registrar “must examine and report on” whether the IRDA is in accordance with Division 3 of the Regulations, and whether there are any grounds under subdivision 2 for rejecting it.[20] Those grounds are stated in reg 17A.28, subreg (1) of which provides that the grounds for rejecting an IRDA are the grounds set out in ss 39-44 of the TM Act “as affected by subregulation (2)”. That subregulation provides:
[20] Regulation 17A.12
Sections 39 to 44 apply in relation to an IRDA as if:
(a) a reference in those sections:
(i)to an application for the registration of a trade mark were a reference to the IRDA; and
(ii)to an applicant were a reference to the holder of the IRDA; and
(b)the reference in paragraph 41(3)(b) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and
(c)each reference in subparagraphs 44(1)(a)(i) and (2)(a)(i) to a trade mark registered by another person included a protected international trade mark held by another person; and
(d)each reference in subparagraphs 44(1)(a)(ii) and (2)(a)(ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.
Relevant to this proceeding is s 44 of the TM Act, which requires the Registrar to reject an application for the registration of a trade mark if, among other things, the trade mark is substantially identical with or deceptively similar to a trade mark registered, or that is sought to be registered by another person in respect of similar goods or closely related services.
Other matters the Registrar must consider include those identified in reg 17A.13 (which requires use or intention to use the trade mark that is the subject of the IRDA), and reg 17A.14 (which prohibits the use of certain expressions).
The subsequent course of an IRDA may follow one of a number of different paths.
Registrar does not accept IRDA
One path is that, in the course of an examination of the IRDA, the Registrar reasonably believes that the IRDA is not in accordance with Div 3 of Part 17A of the Regulations, or there are grounds under Subdivision 2 for rejecting the IRDA, in whole or in part.[21]
(a)Where the Registrar so believes, the Registrar must send a report in accordance with reg 17 of the Madrid Regulations to the holder of the IRDA.[22] Such a report constitutes a provisional refusal for the purposes of the Protocol.
(b)The holder may respond to the Registrar’s report in one of the ways provided for by reg 17A.17(1) of the Regulations, one of which is to request a hearing from the Registrar. If the holder responds in one of the ways provided by reg 17A.17, and has also notified the Registrar in writing of the holder’s address for service in Australia or New Zealand (as required by reg 17A.17(2)), the Registrar must consider the holder’s response (after giving a hearing, if the holder requested a hearing); and if after considering the response the Registrar continues to believe the IRDA is not in accordance with Div 3, or there are grounds under Subdivision 2 for rejecting the IRDA in whole or in part, the Registrar must report that belief by notification to the holder.[23] The Registrar must send the report in accordance with reg 17 of the Madrid Regulations to the holder through the intermediary of the International Bureau.[24]
[21] Subregulation 17A.16(1)
[22] Subregulation 17A.16(1)
[23] Subregulation 17A.18(2)
[24] Subregulation 17A.18(3)
The holder of the IRDA may appeal to this Court or to the Federal Court of Australia pursuant to s 35 of the TM Act, as provided for by reg 17A.26 of the Regulations.
Registrar accepts IRDA, no opposition
A second path is initiated when the Registrar does not form a belief of the sort identified in reg 17A.16(1), namely, that the IRDA is not in accordance with Division 2, or there are grounds under Subdivision 2 for rejecting the IRDA in whole or in part. In those circumstances, reg 17A.24(1) requires the Registrar to “accept the IRDA”, with or without conditions; and the Registrar must, as required by reg 17A.25, publish “the decision” in a computer database maintained by the TMO specifying the particulars of the IRDA, and stating that, “unless a notice of opposition is filed as mentioned in subregulation 17A.32(1), the trade mark that is the subject of the IRDA will be protected in Australia in respect of the goods, services or goods and services in respect of which protection was sought”. The Registrar may also “notify the International Bureau, in writing, of the decision” to accept the IRDA.
If no notice of opposition is filed within the meaning of reg 17A.32 of the Regulations, the trade mark that is the subject of the IRDA becomes a “protected international trade mark at the end of the relevant period or that extended period, as the case requires”.[25] The expression “protected international trade mark” is defined in reg 17A.2 as “a trade mark to which protection resulting from international registration of the mark is extended in Australia in accordance with these Regulations”. If a trade mark becomes a “protected international trade mark”, the Registrar must publish that fact in a computer data base maintained by the TMO, and record that fact in the “Record of International Registrations” created and maintained pursuant to reg 17A.66(1), which must include the particulars for each protected international trade mark specified in reg 17A.66(3).
[25] Subregulation 17A.36(2)
Registrar accepts IRDA, notice of opposition is filed but is dismissed or discontinued
A third path is initiated if, pursuant to reg 17A.25 of the Regulations, the Registrar has published his or her decision to accept the IRDA, but a notice of opposition is filed. A notice of opposition “is taken to be filed” within the meaning of reg 17A.32(1) if:
(a)within 2 months after the Registrar, in accordance with reg 17A.25, publishes the acceptance of an IRDA, a notice of intention to oppose if filed pursuant to reg 17A.33 and, within one month from the day such notice is filed, a statement of grounds and particulars is filed pursuant to reg 17A.34A of the Regulations;
(b)within the extended period the Registrar, pursuant to reg 17A.34D, has granted for the filing of a notice of intention to oppose and the filing of a statement of grounds and particulars.
Under the third path a notice of intention to defend and evidence is filed;[26] the Registrar hears the notice of opposition;[27] but the Registrar dismisses the notice of opposition (or the notice of oppositions is discontinued).[28] In those circumstances:
(c)if no appeal is brought in relation to the Registrar’s decision on the opposition under s 56 of the TM Act (as provided for by reg 17A.34P), the IRDA becomes a “protected international trade mark, to the extent permitted by the [Registrar’s] decision on the opposition at the end of the appeal period”;[29] or
(d)if an appeal is brought in relation to the Registrar’s decision on the opposition, and the appeal is dismissed or withdrawn, the IRDA becomes a “protected international trade mark, to the extent permitted by the [Registrar’s] decision on the opposition after the appeal has been dismissed or withdrawn”.[30]
[26] Regulations 17A.34H; 17A.24J
[27] Regulation 17A.34M. A hearing, however, need not necessarily occur. It will not occur if the Registrar has dismissed the opposition pursuant to reg 17A.34B; or if the opposition has not been decided under reg 17A.34N, or if the opposition is not taken to have succeeded under reg 17A.34H.
[28] Regulation 17A.34N
[29] Subregulation 17A.36(3)
[30] Subregulation 17A.36(3A)
“Appeal period”, in relation to a Registrar’s opposition decision, is defined in reg 17A.36(1) to mean the period within which an appeal from such decision can be made under reg 17A.34P.
Registrar accepts IRDA, notice of opposition is filed and grounds of opposition are established in whole or in part
A fourth path comprises the same steps as the third path except that “the grounds on which the IRDA was opposed have been established”, at least to some extent, and an appeal is brought from the decision on opposition within the “appeal period”, and the decision on the appeal is that the trade mark that is the subject of the IRDA should be protected in Australia. In these circumstances, reg 17A.36(4) provides that the trade mark that is the subject of the IRDA becomes a “protected international trade mark, to the extent permitted by the decision on the appeal, when that decision is made”.[31]
[31] Subregulation 17A.36(4)
Registrar accepts IRDA, opposition, but Registrar cancels before determination of opposition
A fifth path an application for an IRDA may take is the path that has occurred in this proceeding; it is where, pursuant to reg 17A.25 of the Regulations, the Registrar has published his or her decision to accept the IRDA, a notice of opposition has been filed that has not been determined or discontinued, but the Registrar exercises the power conferred by reg 17A.27 of the Regulations. That regulation provides as:
(1)If, before the trade mark that is the subject of the IRDA becomes a protected international trade mark, and before the end of 18 months after the International Bureau notified the Registrar of the IRDA, the Registrar becomes satisfied that:
(a) the IRDA should not have been accepted, taking account of all the circumstances that existed when the IRDA was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances;
the Registrar may revoke the acceptance of the IRDA.
(2) If the Registrar revokes the acceptance of the IRDA:
(a) the IRDA is taken never to have been accepted; and
(b) this Subdivision again applies in relation to the IRDA.
Regulation 17A.27 of the Regulations mirrors, in relation to the acceptance of IRDAs, the power s 38 of the TM Act confers on the Registrar to revoke the acceptance of an application for registration of a trade mark.
PROCEEDINGS BEFORE THE TRADE MARKS OFFICE
20 June 2022 – notification of the N1G IRDA
As I noted at the beginning of these reasons, on 20 June 2022 the International Bureau notified IP Australia of the N1G IRDA, being a request that protection resulting from the international registration of the Trade Mark under the Protocol be extended to Australia.[32] The Trade Mark had been registered with the International Bureau in respect of a large number of goods falling within classes 9, 28, 41, 42, and 45.
[32] CB12
23 February 2023 – Registrar accepts N1G IRDA
On 23 February 2023 an examiner within IP Australia examined the Trade Mark. The examiner’s work notes record the conclusion that the N1G IRDA raised no issues. A document titled “search report – 2331567”, which was generated at 9:58 am on 23 February 2022, records a search of the Register of “elvis (Part) AND from (Part)”; and “elvis (Part) AND vegas (Part) OR from (Part) AND vegas (Part)”. Further, there are working notes that record that the examiner inquired into the meaning of each of the words “Frog”, “In”, and “Vegas”; and the examiner conducted Google searches of each of “Elvis Frog In Vegas”, ““Elvis Frog in Vegas”” alone, ““Elvis Frog In Vegas” computer OR software OR gambling OR gaming”, and ““Elvis Frog In Vegas” entertainment OR “social networking””. The Registrar, by her counsel’s written submissions, notes that the examiner searched only for prior marks containing the words ELVIS and FROG, ELVIS and VEGAS or FROM and VEGAS, and did not search for marks containing the word ELVIS alone.[33]
[33] Respondent’s Outline of Submissions, [8]
By letter dated 23 February 2023, IP Australia informed the International Bureau that the “international registration of” the Trade Mark “has been accepted for protection in Australia for the” goods and services specified in the letter falling within classes 9, 28, 41, 42, and 45; and the letter notified the International Bureau of the Australian trade mark number, namely, 2331567. [34] The letter also stated that the Trade Mark was advertised on 23 February 2023, noting that protection may be opposed within 2 months after the advertisement date.
[34] CB17
18 April 2023 – ABG files notice of opposition
On 18 April 2023 ABG filed a notice of opposition. As I have already noted, ABG is the owner of the ELVIS Registrations.[35] In its statement of grounds and particulars filed on 5 May 2023 (SGP),[36] ABG states, among other things, that it owns the intellectual property rights associated with the late Elvis Presley, including various trade marks comprising or including the word ELVIS; and that, at the priority date of the “Opposed Application”,[37] the ELVIS trade marks enjoyed a substantial reputation in Australia such that N1G’s use of the Trade Mark would be likely to deceive or cause confusion; and N1G made the N1G IRDA in bad faith. The SGP further states:[38]
The Applicant appears to use ELVIS FROG IN VEGAS as the name for an online pokie . . . The Opposed Application includes claims for extremely broad categories of goods and services including application software, Platform as a Service (PaaS) and Software as a Service (SaaS) of all types and for all purposes. It is inconceivable that the Applicant intends to use ELVIS FROG IN VEGAS in relation to every type of such good or service or for every purpose.
. . . . The ELVIS FROG IN VEGAS pokie appears to be active in Australia with considerable use of Elvis Presley themes . . . Persons adopting proper standards would regard the Applicant’s decision to seek registration of ELVIS FROG IN VEGAS as being in bad faith. Reasonable and experienced persons in the field would view the Applicant’s decision to seek registration of ELVIS FROG IN VEGAS as falling short of acceptable commercial behaviour.
[35] CB48
[36] These being trade marks no 449773, 644593, and 763695, each of which comprises the name “Elvis”, and which are respectively registered in respect of class 41 (Amusement parks, entertainer services, entertainment, sound recordings, television entertainment and theatre productions); class 28 (Toys; plush toys; dolls; marionettes; puppets; Christmas tree ornaments and novelties included in the class), and classes 41 and 42 (which include entertainment services, entertainer services, production of sound, restaurant services, and services associated with takeaway food stores).
[37] “Priority date” in relation to a trade mark to which an IRDA relate is defined in reg 17A.3, which must be read with the meaning of “date of effect”, given in reg 17A.4.
[38] CB48-49
N1G filed a notice of intention to defend on 21 August 2023. By 27 November 2023 ABG had filed some of its evidence in support (EIS) and, on that day, requested a further month to file its remaining EIS. On 29 January 2024 IP Australia informed ABG that it intended to refuse its request for an extension of time, and noted that the extension would be refused unless ABG requested a hearing.[39]
[39] CB79
9 February 2024 – ABG requests revocation of acceptance of IRDA
By letter dated 9 February 2024 ABG (through its attorneys) requested the Registrar, pursuant to s 38(1) of the TM Act and reg 17A.27 of the Regulations, to revoke the Registrar’s acceptance of the international registration of the Trade Mark for protection in Australia.[40] ABG submitted that the acceptance should be revoked “due to the clear error in not raising a Section 44 ground for rejection on the basis of” the ELVIS Registrations. ABG made submissions that included the following:
(a)The ELVIS Registrations predated 20 December 2021, being the priority date of the Trade Mark; and they cover identical goods in class 28, and identical services in class 41.
(b)The Trade Mark is deceptively similar to the ELVIS Registrations because the Trade Mark wholly contains the ELVIS Registrations; and ELVIS is the distinctive word with FROG IN VEGAS “being mere secondary material that describes or qualifies ELVIS”.
(c)The ELVIS Registrations should have been raised as citations under s 44 of the TM Act.
[40] CB84
The letter concluded as follows:
We submit that it is reasonable to revoke when regard is given to all of the circumstances. ABG EPE IP LLC should not be forced to engage in contested opposition proceedings against Application No. 2331567 when the ELVIS Registrations should have been raised as a barrier to acceptance. It is long established that simply because opposition proceedings are underway it does not mean that revocation of acceptance is not reasonable.3
In the circumstances, we respectfully submit that Application No. 2331567 should not have been accepted, and request that acceptance is revoked, and the ELVIS Registrations are raised as citations under Section 44 of the Act.
By letter dated 20 February 2024 to the Registrar, ABG stated that since 9 February 2024 it had obtained the official file from IP Australia, and that the file showed that the search the examiner had undertaken only revealed the Trade Mark, and not the ELVIS Registrations. ABG submitted that this manifested a “clear error in examination”; and referred to Part 60.4 of the Trade Marks Manual of Practice and Procedure which identifies the use of “an inappropriate search strategy” as an example where it may be reasonable to consider a revocation.[41]
[41] CB87-88
By separate letter dated 20 February 2024 ABG informed IP Australia that it did not request a hearing about the intention to refuse the extension of time, and further stated that the EIS it had provided to date constituted the whole of ABG’s EIS.[42]
[42] CB86
4 March 2024 – Registrar’ notifies intention to revoke acceptance of the N1G IRDA
On 4 March 2024, an officer of IP Australia who had the title of “Assistant Director” sent to the attorneys for N1G a letter titled “Notice of Intention to Revoke Acceptance”. The Assistant Director stated that it had “now come” to her attention that the N1G IRDA in relation to the Trade Mark “should not have been accepted”, and that, “having taken into account all the circumstances”, the Assistant Director considered “it reasonable to revoke the acceptance in accordance with regulation 17A.27 of the” Regulations. The Assistant Director stated N1G had two months from the date of the letter to respond with written submissions regarding the proposed revocation or, alternatively to apply to be heard “on this matter”.[43]
[43] CB93
On 2 April 2024 the lawyer for N1G sent a letter to the Registrar in which she noted that N1G was currently the subject of Opposition proceedings filed by ABG; and there was an upcoming deadline of 23 May 2024 for N1G to file its evidence in answer in the opposition proceedings.[44] The lawyer requested that the opposition proceeding be suspended from 4 March 2024 until the final determination “of any consideration or action in relation to revocation of acceptance of the Trade Mark”, noting that the basis of the request “lies in the exceptional circumstances of IP Australia issuing a notice to the Applicant of its intention to revoke acceptance of a trade mark that is the subject of current and ongoing opposition proceedings”. By letter dated 12 April 2024 IP Australia notified the lawyer for N1G that its request for the suspension of the opposition proceedings was declined.[45]
[44] CB99
[45] CB101
4 May 2024 – N1G provides submissions against revocation of acceptance of the N1G IRDA
On 4 May 2024 N1G, through its lawyer, provided submissions to the Registrar opposing the revocation of the Registrar’s acceptance of the N1G IRDA in relation to the Trade Mark.[46] N1G submitted it would not be reasonable for the Registrar to exercise her powers under reg 17A.27; and it relied on reasons that include the following:
(a)the Trade Mark is not substantially identical or deceptively similar to the ELVIS Registrations;
(b)the initial search, which was undertaken by use of “IP Australia’s custom platform”, was correctly conducted by a skilled examiner applying all of his training and knowledge of the grounds for acceptance;
(c)the examiner correctly identified ELVIS, FROG and VEGAS as the dominant cognitive cues of the Trade Mark, and, therefore, properly extracted and considered the closest marks from the “IP Australia platform”;
(d)the goods and services for which the N1G IRDA seeks protection are not the same, and in the majority not remotely similar nor closely related to those goods or services with respect to which the ELVIS Registrations are registered; and
(e)N1G has filed applications with IP Australia to remove each of the ELVIS Registrations from the Register on the basis of non-use of those trade marks in Australia.
[46] CB103
7 May 2024 – Registrar decides revocation of acceptance would not be reasonable
By letter 7 May 2024 Mr Lee, an acting Assistant Director of the Trade Marks and Design Group of IP Australia,[47] informed the lawyer for N1G that, “given that there is an opposition process currently underway in relation to this trade mark application, revocation of acceptance of [the Trade Mark] would not be reasonable”.[48]
[47] Affidavit of S Tierney 01.07.2024, [37]
[48] CB118
4 June 2024 – Registrar revokes acceptance, and opposition proceedings finalised
On 3 June 2024, however, presumably pursuant to reg 17A.16(1) of the Regulations, Mr Lee sent the following letter to the lawyer for N1G:[49]
I previously advised, in correspondence dated 7 May 2024, that the IP Office was not intending to revoke your trade mark application. However, I must apologise because this is incorrect.
Due to the complexity of the revocations and oppositions processes working in tandem, the decision not to revoke has been reviewed and I must now advise that the IP Office must revoke your application. A report will be issued shortly, outlining the Section 44 ground for rejection and responding to your submissions we received on 4 May 2024. The applicant will then have 15 months to provide evidence of use.
We sincerely apologise for any inconvenience caused.
[49] CB121
The report foreshadowed in this letter was provided in a letter dated 4 June 2024 from Mr Lee.[50] The letter addresses the submissions N1G made by its lawyer’s letter dated 4 May 2024, and concludes that, although the Trade Mark is not substantially identical to the ELVIS Registrations, it is deceptively similar to them. The letter states:
The word ELVIS is a registered trade mark, it has no other dictionary meaning that creates a differentiated impression. And as I have described above, use of ELVIS in the current application essentially amounts to use of a registered mark. The additional word elements FROG and VEGAS do not substantially differentiate the impression of the mark as a whole, certainly not differentiated from the impression created by use of the word ELVIS. In other words, the frog may be in Vegas but it is still associated with the impression created by use of the registered mark Elvis.
[50] CB122
By separate letter dated 4 June 2023, IP Australia informed N1G that “[a]cceptance of this trade mark has been revoked”, and that the “opposition proceedings are therefore finalised”.
By letter dated 5 June 2024,[51] IP Australia informed N1G, by its lawyer, that:
The Australian Designation of the International Registration does not meet the requirements of the Trade Marks Act 1995. The issues currently preventing acceptance of the International Registration are explained in the attached Adverse Examination Report number 2 and, where possible, the ways in which the holder may be able to resolve the issues.
[51] CB127
There is attached to that letter a document titled “Adverse Examination Further Report”, which identifies s 44 of the TM Act as an issue that must be addressed in relation to the Trade Mark before the N1G IRDA in relation to that trade mark can be accepted.[52] The report states that the Trade Mark is deceptively similar to the Elvis Registrations.
[52] CB134
Events after 5 June 2024
On or around 7 June 2024, Ms Tierney, the lawyer for N1G, telephoned Mr Lee who informed Ms Tierney that “the matter had been escalated to the executive and the further decision made by them”. Ms Tierney says that Mr Lee could not explain to Ms Tierney “why the matter would have been escalated or further reviewed, nor the further decision”. Also on or around 7 June 2024, Ms Tierney had a conversation with Mr Andre Shannan, who occupies the position of Director – Examination B, of IP Australia. Mr Shannan informed Ms Tierney that a review of the file had been undertaken, and IP Australia felt it was appropriate “to reverse the Decision”.
THE APPLICATION OF THE ADJR ACT
The ADJR Act applies to three classes of acts and omissions. The first is a “decision to which this Act applies” (reviewable decision);[53] the second is having engaged in, or engaging in, or proposing to engage in, conduct, for the purpose of making “a decision to which this Act applies” (reviewable conduct);[54] and the third is where a person has a duty to “make a decision to which this Act applies” and the person fails to exercise the duty (reviewable omission).[55] The expression “decision to which this Act applies” is defined in s 3 to mean a “decision of an administrative character made, proposed to be made, or required to be made (whether in the exercise of a discretion or not . . .)” “under an enactment” which includes an Act and regulations made under an Act.
[53] Section 5, ADJR Act
[54] Section 6, ADJR Act
[55] Section 7, ADJR Act
The expression “made under an enactment” was given an authoritative construction by the plurality in Griffith University v Tang:[56]
The determination of whether a decision is “made ... under an enactment” involves two criteria: first, the decision must be expressly or impliedly required or authorised by the enactment; and, secondly, the decision must itself confer, alter or otherwise affect legal rights or obligations, and in that sense the decision must derive from the enactment. A decision will only be “made ... under an enactment” if both these criteria are met. It should be emphasised that this construction of the statutory definition does not require the relevant decision to affect or alter existing rights or obligations, and it will be sufficient that the enactment requires or authorises decisions from which new rights or obligations arise. Similarly, it is not necessary that the relevantly affected legal rights owe their existence to the enactment in question. Affection of rights or obligations derived from the general law or statute will suffice.
[56] Griffith University v Tang [2005] HCA 7, at [89] (Gummow, Callanan, and Heydon JJ)
The ADJR Act confers jurisdiction on the Federal Court and on this Court to entertain an application by a “person who is aggrieved” for an order of review in relation to any reviewable decision, reviewable conduct, or reviewable omission, where an applicant claims that any one of the grounds identified in the Act apply to the making of the reviewable decision, the engaging in of the reviewable conduct, or the not making of a decision. If the Court is satisfied that one or more of the grounds have been established, s 16 of the ADJR Act identifies various orders and declarations the Court may make.
It is not in dispute that a decision under reg 17A.27 to revoke the acceptance of an IRDA is a decision to which the ADJR Act applies. Thus, it is open to N1G to apply, as it has, for orders of review under the ADJR Act in relation to the Revocation Decision on the ground that a breach of the rules of natural justice occurred in connection with the decision, or in connection with conduct the Registrar has engaged in for the purpose of that decision (s 5(1)(a); s 6(1)(a)), or that the making of the Revocation Decision was an improper exercise of the power conferred by reg 17A.27 of the regulations (s 5(1)(e)), or that the Revocation Decision involved an error of law (s 5(1)(f)).
WHAT IS N1G CHALLENGING?
There is some ambiguity about the identity of the act or conduct of the Registrar N1G seeks to challenge. On the face of the application, and in its counsel’s written submissions, N1G challenges the Revocation Decision, that is, the decision the Registrar made on 4 June 2024 pursuant to reg 17A.27 of the Regulations to cancel the acceptance of the N1G IRDA. N1G’s counsel’s oral submissions, however, were directed to the Registrar, on 3 June 2024, having renounced the position she communicated to N1G in IP Australia’s letter dated 7 May 2024 that, “given that there is an opposition process currently underway in relation to this trade mark application, revocation of acceptance of [the Trade Mark] would not be reasonable” (7 May position), without giving notice to N1G that the Registrar intended to renounce, or was considering renouncing, that position, and without informing N1G of the grounds on which the Registrar was intending or considering to do so. That is apparent from the following submissions counsel made:[57]
Now . . . on 3 June, what you can see is that suddenly, without an opportunity for us to be heard and with no change in circumstances, suddenly the oppositions, which apparently were carefully considered in the first instance and meant that this was not reasonable to revoke, suddenly those opposition processes are working in tandem, means “I must now advise that the IP office must revoke your application.” And this is the crux of it, your Honour.
We say that nothing had changed between those two dates of consequence, between the oppositions meaning it’s not reasonable, and the opposition suddenly forming a basis for being reasonable. We should have been provided with an opportunity to be heard. We weren’t given any reasons of why this is now so complex when nothing had happened, save that evidently you can see from my sheet that some evidence had been filed in the opposition. That doesn’t change the complexity of the opposition.
So we don’t say, as our friend’s submission suggests, that the registrar couldn’t have another go. What we say is, if the registrar decides to review the decision that it’s not reasonable, we should be told why. Why has that changed?
[57] T9
Thus, the central element of N1G’s case, as presented by its counsel at the hearing, is that, before the Registrar made the Revocation Decision, she was bound to inform N1G that she intended to renounce the 7 May position and inform N1G of the grounds on which the Registrar proposed to do so; and that, by failing to give such notice, a breach of the rules of natural justice occurred in the making of the Revocation Decision.
In the light of the centrality of N1G’s claim based on a breach of the rules of natural justice, I will first consider N1G’s claim based on a breach of natural justice, and s 203 of the TM Act, after which I will address the other grounds on which N1G relies in its written submissions.
CLAIM BASED ON BREACH OF THE RULES OF NATUAL JUSTICE
Principles
The expression “natural justice”, as used in the ADJR Act, and in the general law, is synonymous with the expression “procedural fairness”; and it denotes two sets of rules and principles, one of which is often referred to as the “hearing rule”; and the other as the “bias rule”.
The hearing rule has as its object persons (decision makers) who have power under an Act, or legislative instrument, or some other source (such as the executive prerogative), to make decisions that, if made (or not made), affect or might affect the interests of another person (affected person); and it comprises two broad subjects. The first are the circumstances in which a decision-maker comes under a duty to afford procedural fairness; that is, a duty to give notice to the affected person before the decision maker exercises or decides not to exercise the power, for the purpose of giving the affected person an opportunity to make representations about whether the decision maker should or should not exercise the power, or should exercise the power in a particular way. The second subject concerns the contents of the duty to afford procedural fairness; that is, the extent and nature of the opportunity the decision maker may be obliged to give to the affected person to make representations about whether the power should or should not be exercised, or should be exercised in a particular way.
The High Court has identified on a number of occasions the circumstances in which a decision maker comes under the duty to afford procedural fairness; and it would be sufficient to refer to the following passage from the judgment of the High Court in Minister for Immigration and Border Protection v SZSSJ:[58]
[I]t must now be taken to be settled that procedural fairness is implied as a condition of the exercise of a statutory power through the application of a common law principle of statutory interpretation. The common law principle, sufficiently stated for present purposes, is that a statute conferring a power the exercise of which is apt to affect an interest of an individual is presumed to confer that power on condition that the power is exercised in a manner that affords procedural fairness to that individual. The presumption operates unless clearly displaced by the particular statutory scheme.
[58] Minister for Immigration and Border Protection v SZSSJ; Minister for Immigration and Border Protection v SZTZI [2016] HCA 29, at [75]
Thus, the factor that will ordinarily oblige a decision-maker to afford an individual procedural fairness is where the decision, if made or not made, “is apt to affect an interest of the individual”.
The High Court has also described the content of a duty to accord procedural fairness:[59]
[C]ompliance with an implied condition of procedural fairness requires the repository of a statutory power to adopt a procedure that is reasonable in the circumstances to afford an opportunity to be heard to a person who has an interest apt to be affected by exercise of that power. The implied condition of procedural fairness is breached, and jurisdictional error thereby occurs, if the procedure adopted so constrains the opportunity of the person to propound his or her case for a favourable exercise of the power as to amount to a “practical injustice”.
Ordinarily, affording a reasonable opportunity to be heard in the exercise of a statutory power to conduct an inquiry requires that a person whose interest is apt to be affected be put on notice of: the nature and purpose of the inquiry; the issues to be considered in conducting the inquiry; and the nature and content of information that the repository of power undertaking the inquiry might take into account as a reason for coming to a conclusion adverse to the person. Ordinarily, there is no requirement that the person be notified of information which is in the possession of, or accessible to, the repository but which the repository has chosen not to take into account at all in the conduct of the inquiry.
[59] Minister for Immigration and Border Protection v SZSSJ; Minister for Immigration and Border Protection v SZTZI [2016] HCA 29, at [82], [83] (footnotes omitted)
Parties’ submissions
In its counsel’s written submissions, N1G submits that, to have complied with the rules of natural justice, the Registrar “ought to have explained why her position on revocation of acceptance in parallel with advanced opposition proceedings had changed and provide [N1G] with an opportunity to be heard”.[60] Counsel for N1G expanded on this submission in her oral submissions. N1G does not, however, identify the interest N1G submits it had that was liable to be affected by the Registrar’s deciding to renounce the 7 May position such as would have given rise to the obligation on the part of the Registrar to give N1G notice of her intention to renounce the 7 May position and, moreover, explain to N1G her reasons for doing so. N1G instead assumes it had a relevant interest that was apt to be affected, and that that interest was affected by the Registrar renouncing the 7 May position.
[60] Applicant’s Outline of Submissions, [53]
In her counsel’s written submissions, the Registrar submits that the power conferred by reg 17A.27 of the Regulations formed part of a multi stage process leading to a decision, namely whether to extend to Australia the international protection to the Trade Mark arising from its registration with the International Register maintained by the International Bureau, and there can be no question that, considered as a whole, the decision-making process that applies to IRDAs satisfies the requirements of procedural fairness. The Registrar further submits that N1G was expressly afforded the opportunity to make submissions, provide further evidence, and request a hearing in relation to the re-examination of the N1G IRDA, and if rejected, N1G would retain a full right of de novo rehearing before this Court or the Federal Court.[61] The Registrar relies on the principle stated by the High Court in Ainsworth v Criminal Justice Commission that, “where a decision-making process involves different steps or stages before a final decision is made, the requirements of natural justice are satisfied if ‘the decision-making process, viewed in its entirety, entails procedural fairness’”.[62]
[61] Respondent’s Outline of Submissions, [61]
[62] Ainsworth v Criminal Justice Commission (1992) 175 CLR 564, at page 578
Determination
Potentially up to three questions, therefore, arise: (a) Did the Registrar come under a duty to accord N1G procedural fairness in connection with the Revocation Decision? (b) If so, what was required of the Registrar to discharge that duty? (c) Did the Registrar discharge that duty?
Duty to accord procedural fairness?
It is clear that the Registrar’s exercise of the power under reg 17A.27 of the Regulations to revoke the acceptance of an IRDA “is apt to affect the interest” of the holder of the IRDA. That would be so because, if the acceptance of the IRDA is revoked, the holder will (again) be exposed to the risk of the Registrar rejecting the IRDA, and, if he or she wishes to continue to proceed with the IRDA, the holder will need to appeal to the Federal Court or to this Court pursuant to s 35 of the TM Act. Thus, the Registrar’s decision on 4 June 2024 to revoke the acceptance of the N1G IRDA did affect N1G’s interests, and the Registrar, therefore, was bound to give N1G notice that the Registrar intended or was considering whether she should revoke the N1G IRDA for the purpose of affording N1G an opportunity to make submissions against the Registrar exercising the power to revoke the N1G IRDA.
By her delegate’s letter dated 4 March 2024, the Registrar gave N1G notice that she was considering making a decision under reg 17A.27 to revoke the acceptance of the N1G IRDA; and on 4 May 2024 N1G made submissions in support of its contention that the power should not be exercised. As I have noted, however, N1G’s claim is that the Registrar was bound to give N1G notice that she intended to renounce the 7 May position; and it is because the Registrar failed to do so, and explain why she proposed to do so, that the Registrar breached the rules of natural justice when she made the Revocation Decision. The question that arises, therefore, is whether the Registrar was bound to give notice to N1G of her intention to renounce the 7 May 2024 position, and to explain to N1G why she intended to do so. The determination of that question turns on whether the Registrar’s renunciation of the 7 May position was apt to affect N1G’s interests; and the determination of that question, in turn, depends on the proper construction of reg 17A.27.
The following may be noted about reg 17A.27:
(a)Subregulation 17A.27(1) confers a power on the Registrar, namely, the power to revoke the acceptance of an IRDA; and when the power is exercised, reg 17A.27(2) provides that the IRDA whose acceptance has been revoked is never taken to have been accepted, and Subdivision 1 of Division 3 applies to the IRDA.
(b)The power conferred by reg 17A.27(1) in relation to the acceptance of any IRDA may only be exercised within a specified period, namely, 18 months after the International Bureau notifies the Registrar of the IRDA. That necessarily implies that the Registrar may exercise the power at any time during the 18 month period. That, in turn, implies that the Registrar may consider whether it should exercise the power at any time during that period, and on any one or more occasions during that period decide not to exercise the power; and that the Registrar cannot, for any reason, purport to decide, or otherwise purport to bind herself, not to consider, whenever the occasion arises during the 18 month period, whether she should exercise the power conferred by reg 17A.27 in relation to any IRDA.
(c)The exercise of the power conferred by reg 17A.27(1) is conditioned on the Registrar’s being satisfied it is reasonable to revoke the acceptance of an IRDA, taking account of all the circumstances. This condition for the exercise of the power, when considered with the 18 month period by which the power may be exercised, reinforces what the text necessarily implies, that over the 18 month period there may be circumstances that develop or change that may give rise to one or more occasions in which it may be necessary for the Registrar to consider whether to revoke the acceptance of an IRDA.
(d)The Registrar’s considering whether it should exercise the power conferred by reg 17A.27(1), but deciding that it would not be reasonable to revoke the acceptance of an IRDA, does not constitute the exercise of the power under reg 17A.27(1). That means that, by itself, a decision not to exercise the power to revoke the acceptance of an IRDA would have no impact on the operation of the provision of the Regulations that would apply to the IRDA, including reg 17A.27.
(e)It is conceivable that the Registrar’s considering whether to exercise the power under reg 17A.27 to revoke the cancellation of the acceptance of an IRDA, and deciding it was not reasonable in the circumstances to do so, may constitute a factor that may be relevant to determining whether a decision that is later made to revoke the acceptance of the IRDA was made lawfully.
Given these observations, it is difficult to imagine how, in the circumstances of this case, the Registrar’s renunciation of the 7 May position was apt to affect N1G’s interests. The Non-revocation Decision, as conveyed by IP Australia’s letter dated 7 May 2024, did not alter or affect the operation of any of the Regulations that applied to the N1G IRDA. That included reg 17A.27; N1G was as vulnerable to the Registrar’s exercising the power under reg 17A.27 after the Non-revocation Decision as it was before the Registrar made the Non-revocation Decision. N1G does not submit that, had it been given notice that the Registrar intended to renounce the 7 May position, N1G would have provided submissions or material it had not already provided on 4 May 2024 in support of its contention that the Registrar should not exercise the power under reg 17A.27. In other words, N1G does not submit that it had in some way detrimentally relied on the Non-revocation Decision. Adapting to N1G the words of Gleeson CJ in The Minister for Immigration and Multicultural and Indigenous Affairs v Lam,[63] “[n]o practical injustice has been shown”; N1G “lost no opportunity to advance [its] case” in support of its contention that the Registrar should not revoke the acceptance of the N1G IRDA; N1G “did not rely to [its] disadvantage on the” Non-revocation Decision; and “[i]t has not been shown that there was procedural unfairness”.
[63] The Minister for Immigration and Multicultural and Indigenous Affairs v Lam [2003] HCA 6, at [38]
N1G’s claim based on the breach of natural justice appears to be predicated on the Non-revocation Decision having generated an expectation on the part of N1G that the Registrar would not revoke the acceptance of the N1G IRDA; and that such expectation constituted a sufficient interest such that the Registrar was obliged to give notice to N1G before it acted in a manner that affected that expectation. Given the construction I have given to reg 17A.27, a decision not to exercise the power conferred by reg 17A.27, by itself, is incapable and, in the case of N1G, was incapable of giving rise to any such expectation.
Did the Registrar accord procedural fairness?
The Registrar gave N1G notice of the possibility of her exercising the power under reg 17A.27 of the Regulations to revoke the acceptance of the N1G IRDA by the letter dated 4 March 2024 in which it was stated that the Assistant Director considered “it reasonable to revoke the acceptance in accordance with regulation 17A.27 of the” Regulations, and inviting N1G to provide submissions regarding the proposed revocation within 2 months. That discharged the obligation to afford procedural fairness that arose when the Registrar formed the view that she proposed to consider revoking the acceptance of the N1G IRDA. For reasons I have already given, the Non-revocation decision and the Registrar’s renunciation of the 7 May position did not give rise to any duty on the part of the Registrar to give N1G any further notice in relation to the Registrar’s considering whether to exercise the power under reg 17A.27 to revoke the acceptance of the N1G IRDA.
Conclusion
For these reasons, I am not satisfied that a breach of the rules of natural justice occurred in connection with the making of the Revocation Decision.
CLAIM BASED ON S 203 OF THE TM ACT
In its counsel’s written submissions N1G submits the Registrar failed to comply with the obligation imposed by s 203 of the TM Act, which provides as follows:
The Registrar may not exercise a power under this Act in any way that adversely affects a person applying for the exercise of that power without first giving that person a reasonable opportunity of being heard.
In her oral address, counsel for N1G submitted that s 203 “enshrines natural justice”;[64] and that s 203 applies each time a decision that adversely affects a person is made.[65]
[64] T6.5
[65] T6.35: “What we say is that each time a decision is made, if it’s adverse to us, under section 203 and the rules of natural justice we have an opportunity to be heard. And we haven’t been given that here, and I will come to that.”
The Registrar, in her counsel’s written submissions, submits that s 203 of the TM Act does not create a freestanding statutory obligation on the Registrar to afford an opportunity to be heard; s 203 in terms only applies to the exercise of powers by the Registrar in relation to a person where that person has applied for the exercise of the power.[66]
[66] Respondent’s Outline of Submissions, [55]
On the basis of the plain meaning of the text of s 203, the obligation for which it provides is engaged when a person applies for the exercise of a power, and the obligation is owed specifically to that person. The apparent intention of s 203 is to require the Registrar to give the person who applies for the exercise of the power an opportunity to be heard where the Registrar intends not to exercise the power, or to exercise the power in a way different from the way the person has requested the power be exercised. The effect of s 203, however, must be viewed in light of the following passage from the judgment of Mortimer J (as her Honour then was) in Beling v Sixty International S.A:[67]
Section 203 conditions the manner in which all powers and functions exercised by the Registrar under the Act may be exercised, by imposing an obligation to afford procedural fairness. This provision clearly conditions the exercise of power under s 221 of the Act.
[67] Beling v Sixty International S.A. [2015] FCA 250, at [61]
Whether s 203 is construed according to the plain meaning of the text, or according to Mortimer J’s brief explication of s 203, does not matter in this proceeding, because I have already concluded that I am not satisfied that a breach of the rules of natural justice occurred in connection with the making of the Revocation Decision.
This part of N1G’s claims, therefore, also fails.
IMPROPER EXERCISE OF POWER
N1G contends that the Revocation Decision resulted from an improper exercise of the Registrar’s power under s 38 of the TM Act or reg 17A.27 of the Regulations because:[68]
(a)the Registrar purported to make the Revocation Decision despite the Registrar having made the Non-revocation Decision;
(b)there is no evidence from the Registrar to support a contrary position or reasonableness to revoke;
(c)s 203 of the TM Act required the Registrar, but the Registrar failed, to afford N1G an opportunity to be heard on whether the Decision should be reviewed.
[68] Applicant’s Outline of Submissions, [34]
N1G relies on s 6(1)(e) of the ADJR Act, which provides:
(1)Where a person has engaged, is engaging, or proposes to engage, in conduct for the purpose of making a decision to which this Act applies, a person who is aggrieved by the conduct may apply to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) for an order of review in respect of the conduct on any one or more of the following grounds:
. . . .
(e)that the making of the proposed decision would be an improper exercise of the power conferred by the enactment in pursuance of which the decision is proposed to be made
. . . .
The expression “improper exercise of a power” is defined in s 6(2) as follows:[69]
[69] Subsection 6(3) specifies conditions that must be satisfied before s 6(2)(h) may be taken to be made out.
(2)The reference in paragraph (1)(e) to an improper exercise of a power shall be construed as including a reference to:
(a)taking an irrelevant consideration into account in the exercise of a power;
(b)failing to take a relevant consideration into account in the exercise of a power;
(c)an exercise of a power for a purpose other than a purpose for which the power is conferred;
(d)an exercise of a discretionary power in bad faith;
(e)an exercise of a personal discretionary power at the direction or behest of another person;
(f)an exercise of a discretionary power in accordance with a rule or policy without regard to the merits of the particular case;
(g)an exercise of a power that is so unreasonable that no reasonable person could have so exercised the power;
(h)an exercise of a power in such a way that the result of the exercise of the power is uncertain; and(j) any other exercise of a power in a way that constitutes abuse of the power.
It may be that N1G in fact intends to rely, or also to rely, on s 5(1)(e) of the ADJR Act which contains the same grounds of review as those specified in s 6(1), except they are framed by reference to decisions to which the ADJR Act applies.
Parties’ submissions
N1G submits as follows:
(a)In the Non-revocation Decision the Registrar concluded it would not be reasonable to revoke the acceptance of the IRDA.[70]
(b)Neither the TM Act nor the Regulations provide for the review of the Non-revocation Decision.[71]
(c)No explanation has been given for the “review” of the Non-Revocation Decision, other than the Registrar having noted that “the decision not to revoke had been reviewed” “due to the complexity of the revocations and opposition process working in tandem”.[72]
(d)The Revocation Decision was made after the Registrar refused N1G’s application to suspend the opposition proceedings; and the Registrar has given no explanation about how the opposition and revocations processes working in tandem give rise to complexity, noting that matters of revocation have been considered while opposition proceedings are on foot.[73]
(e)Where an opposition notice has been filed, it would be appropriate to allow the opposition process to continue.[74]
[70] Applicant’s Outline of Submissions, [38]
[71] Applicant’s Outline of Submissions, [39]
[72] Applicant’s Outline of Submissions, [40]
[73] Applicant’s Outline of Submissions, [41]
[74] Applicant’s Outline of Submissions, [42]
The Registrar, in her counsel’s written submissions, submits that N1G does not in its written submissions identify any of the matters stated in s 6(2) of the ADJR Act; but it appears that N1G claims under this ground that the Registrar had no power to exercise the discretion conferred by reg 17A.27 of the Regulations once the Registrar notified N1G of the Non-revocation Decision, or that it was unlawful for the Registrar to do so without providing some explanation. The Registrar submits that if N1G intends to make such claim, it is misconceived; and that is because there is nothing in the terms of reg 17A.27 of the Regulations that suggest that, once the power has been considered, it is spent or cannot be re-exercised, particularly whether previous consideration did not in fact involve the exercise of the power.[75] The Registrar refers to the judgment of Gummow J in Minister for Immigration v Kurtovic,[76] in which his Honour considered the effect of a power to make deportation orders which his Honour found could be exercised from time to time.[77] The Registrar particularly relies on the principle contained in the following passage from his Honour:[78]
Even if the facts upon which the original decision was based remain constant, it may be the policy of the donee of the power which changes and thus requires a reconsideration of decisions previously made. The significance of a change in either the facts or in ministerial policy would go merely to the merits of the decision upon which the court is not entitled to decide. The appellant could not therefore have been functus officio, and an estoppel could not be allowed which would have the effect of stifling the future exercise of the statutory discretion
[75] Respondent’s Outline of Submissions, [42], [43]
[76] Minister for Immigration v Kurtovic (1991) 21 FCR 193
[77] Respondent’s Outline of Submissions, [44]
[78] Minister for Immigration v Kurtovic (1991) 21 FCR 193, at pages 218-219
The Registrar submits the principle stated by this passage applies to the circumstances of this case.
Determination
It appears to be the case, as the Registrar submits, that this part of N1G’s claims is premised on the contention that, in some way, the Non-revocation Decision bound the Registrar not to further consider, or at least constrained the Registrar’s freedom to consider, whether she should exercise the power conferred by reg 17A.27. Given the matters to which I have referred in relation to the construction of reg 17A.27, I would not accept this contention. The Registrar did not, by making the Non-revocation Decision, in any way constrain her ability to consider after 7 May 2024 whether she should exercise the power to revoke the acceptance of the N1G IRDA and, after so considering, decide to revoke its acceptance.
This part of the N1G’s claims, therefore, fails.
ERROR OF LAW
Parties’ submissions
In its counsel’s written submissions, N1G submits the Registrar made an error of law by failing to “properly apply the test in reg 17A.27 of the Regulations and [by failing] to engage s 203 of the Act”.[79] I have already considered, and not accepted, N1G’s claim based on s 203 of the TM Act.
[79] Applicant’s Outline of Submissions, [35]
The matters on which N1G relies for submitting that, in making the Revocation Decision, the Registrar failed to properly apply the test in reg 17A.27 are as follows:
(a)In the Non-revocation Decision it was stated that it would not be reasonable to revoke acceptance; yet in the Revocation Decision it was stated that it must be revoked because of the complexity caused by the opposition without any reason being given.[80]
(b)N1G, in the submissions its lawyer sent on 4 May 2024, addressed “all the circumstances” relevant, which included the contentions that there was no error in the examination; the opposition was well progressed; N1G proposed that the opposition proceeding be suspended, but the Registrar refused to do so; and that N1G had commenced non-use proceedings.[81]
(c)The Revocation Decision did not address why the Non-revocation decision was wrong, and does not explain why it was reviewed.[82]
(d)The adverse examiner’s report on the basis of which the Registrar made the Revocation Decision was based on the premise that online gambling is similar to or closely related to the goods and services with respect to which the ELVIS Registrations are registered.[83]
[80] Applicant’s Outline of Submissions, [44], [45]
[81] Applicant’s Outline of Submissions, [46]
[82] Applicant’s Outline of Submissions, [47]
[83] Applicant’s Outline of Submissions, [48]
In her counsel’s written submissions, the Registrar interprets N1G as in effect submitting that the Revocation Decision was legally unreasonable; but submits that the Revocation, was within the scope of what a rational and reasonable decision-maker would have decided in the same circumstances.
Determination
N1G does not identify the test it submits reg 17A.27 required the Registrar to apply, and the manner in which N1G contends that the Registrar failed to do so. For that reason alone this ground fails.
In any event, to the extent N1G intends to submit that it was not open to the Registrar to make the Revocation Decision, I would not accept that submission.
DISCRETION NOT TO GRANT RELIEF
Subsection 16(1) of the ADJR Act provides that, on an application for an order of review in respect of a decision, the Federal Court or this Court “may, in its discretion”, make all or any of the orders specified in the subsection. Subsection 16(2) and (3) contain similar provisions in relation to applications for an order of review in respect of conduct, and in respect of a failure to make a decision, respectively. There is therefore no question that where a ground of application has been made out, it is within the discretion of the Court whether to make any one or more of the orders provided for in s 16; and it has been so held by the Full Federal Court in Kamha v Australian Prudential Regulation Authority:[84]
The grant of relief under the ADJR Act is discretionary. That is consistent with the principles concerning the grant of relief under the prerogative writs. There was a discretion for a court to refuse prerogative relief where an alternative remedy was available. That principle is also the origin of the express discretion conferred by s 10(2)(b). Nevertheless, that express discretion does not derogate from the general discretion arising under s 16. Section 16 undoubtedly reserves a discretion to the Court as to whether to grant relief in a particular case. While s 10(2)(b) is directed to the specific circumstance where adequate provision is made by another law for an applicant to seek review of a decision and giving rise to an express discretion to refuse relief, the absence of engagement of that provision does not preclude the exercise of the residual discretion conferred on the Court by s 16.
[84] Kamha v Australian Prudential Regulation Authority [2005] FCAFC 248, at [87]
One set of circumstances in which it may be appropriate to exercise the discretion against making an order of review under s 16 of the ADJR Act is where the decision that is the subject of the application for review is anterior to a final administrative decision that confers rights, and the statutory scheme under which such rights may be created manifest a Parliamentary intention that an application to a court should ordinarily be limited to the administrative decision that either creates or refuses to create rights. In 1-800-Flowers.Com, Inc v Registrar of Trade Marks, Katzmann J held that the powers the TM Act confers in connection with the making and progressing of applications for the registration of a trade mark, manifest a Parliamentary intention that applications for judicial review of decisions should not be made to decisions that are anterior to the decision to refuse or grant an application to register a trade mark.[85]
[85] 1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209
In 1-800-Flowers an application for an order of review of the Registrar’s decision under s 38(1) of the TM Act to revoke the acceptance of two trade mark applications. The Registrar submitted that the revocation was not determinative of the applicant’s rights; the delegate did not reject the application for registration; the effect of the delegate’s decision was to require the applications to be examined afresh where all of the applicant’s concerns could be put before the examiner; if the application were rejected, the applicant has a right to appeal under s 35 of the TM Act, and the appeal is in the nature of a hearing de novo. The applicant submitted that the case was not a proper one for relief to be refused because the case would constituted the first occasion on which the Federal Court considered the relationship between s 38 and s 44 of the TM Act; there was no right of appeal on the merits from a decision to revoke made under s 38 of the TM Act; and, if no relief were granted, the applicant would have to bear the additional costs of a new examination.[86]
[86] 1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209, at [65]
Katzmann J accepted the Registrar’s submissions. After noting that it was common ground that s 16(1) of the ADJR Act gives the Court “the discretion make no order at all, even if the grounds of review are made out”,[87] and referring to Kirby P’s observation in Boral Gas (NSW) Pty Ltd v Magill[88] that prerogative relief will be withheld if there is “an equally effective and convenient remedy”, Katzmann J said:[89]
It is true that the Act does not provide for a right of appeal from a decision of the Registrar to revoke the acceptance of an application for registration. But doubtless that is because there is a full right to appeal from any subsequent decision to reject the application. The legislative purpose is clear. Parliament intended that any challenges be made to the decision to refuse or limit registration, not to the anterior decision to revoke acceptance. The only prejudice the applicant could identify if relief were refused on discretionary grounds was in costs, although there was no evidence about the amount of additional costs likely to be incurred. That inconvenience should yield to the legislative intention.
[87] 1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209, at [62]
[88] Boral Gas (NSW) Pty Ltd v Magill (1993) 32 NSWLR 501
[89] 1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209, at [67]
Her Honour also referred to the following passage from the judgment of Drummond J in Stack v Commissioner of Patents which was directed to an application under the ADJR Act for the review of a decision of a delegate of the Commissioner of Patents to refuse summary dismissal of an opposition:[90]
Such a decision, while no doubt a decision to which the AD(JR) Act applies, is not determinative of the rights of either of the parties to the proceeding before the delegate … The applicants have full opportunity in the final hearing to (sic) which they are entitled to pursue all the arguments they wish to raise against the sustainability of the notice of opposition, including those they have raised for the first time in this court. Even if the continuing pendency before the commissioner of the applicants’ claim for the extension of time does not enliven the special discretion conferred on the court by s 10(2)(b) the AD(JR) Act, I consider that the policy considerations underlying that provision and which were referred to in Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31 at 34; 38 ALD 251 are of relevance in the circumstances of this case to the exercise of the more general discretion conferred on this court by s 16(1) the AD(JR) Act.
[90] Stack v Commissioner of Patents (1999) 55 ALD 654 at [14]
Katzmann J said that “the same can be said of the position in the present case” before her Honour.[91]
[91] 1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209, at [71]
The Registrar submits that the reasoning of Katzmann J in 1-800-Flowers applies to N1G’s application to the Revocation Decision. The Revocation Decision is not determinative of N1G’s rights in relation to whether protection will be extended to the N1G IRDA; N1G has an opportunity to respond to the Registrar’s adverse report in one of the ways provided for by reg 17A.17(1) of the Regulations, which includes a request for a hearing; and if after the Registrar considers N1G’s response she continues to believe the N1G IRDA there are grounds under s 44 for rejecting it, N1G may appeal to this Court or to the Federal Court of Australia pursuant to s 35 of the TM Act, as provided for by reg 17A.26 of the Regulations. It may be accepted that this will involve N1G incurring costs it would otherwise not incur, if the Revocation is set aside; but, as Katzmann J said in 1-800-Flowers, “the inconvenience should yield to the legislative intention”.
Counsel for N1G submitted that the facts in this case are distinguishable from those in 1-800-Flowers. Counsel submitted that in 1-800-Flowers the challenge was directed to the merits revocation itself, whereas in this case the challenges is directed to “a breakdown in the administrative power that has been exercised”, that breakdown consisting of, on the one hand, a delegate of the Registrar on 7 May 2024 stating that it was not reasonable to revoke the acceptance of the N1G IRDA, and, on the other, on 3 June 2024 a delegate of the Registrar stating it was reasonable to revoke the acceptance, in circumstances where the Registrar provided no explanation to explain these inconsistent statements.[92]
[92] T41.10
Characterising the conduct that is the subject of an application for an order of review under the ADJR Act as a breakdown in the administrative process, rather than a matter that relates to the merits of the application itself, does not remove any of the considerations that led Katzmann J in 1-800-Flowers to discern a legislative intention that any challenges be made to the decision to refuse or limit registration, not to the anterior decision to revoke acceptance”. An alleged error by an administrative officer when deciding the merits of a trade mark application in the course of exercising a power anterior to the decision to grant or refuse to grant a trade mark is functionally no different from the breakdown in the administrative process that relates to deciding the merits of an application for a trade mark application in the course of the exercise of such anterior power.
I am therefore satisfied that, even if N1G had made out any of the grounds of review under the ADJR Act on which it relied, I would, in the exercise of the discretion conferred by s 16(1) of the ADJR Act, refuse to grant any relief.
DISPOSITION
N1G has failed on each of the grounds on which it relied and, in any event, I would have refused N1G relief, even if it had established one or more of the grounds on which it relies. I therefore propose to order that the proceeding be dismissed. Counsel agreed that costs should follow the event. I will therefore also order that N1G pay the Registrar’s costs, as agreed or as assessed pursuant to Part 40 of the Federal Court Rules 2011 (Cth).
I certify that the preceding one hundred and four (104) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis. Associate:
Dated: 8 November 2024
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