Pinex Pty Ltd v Pinex Pty Ltd

[1987] FCA 620

IN THE FEDERAL COURT OF AUSTRALIA )

)

VICTORIA DISTRICT REGISTRY	)	V.	No.	G 431 of 1986
)
GENERAL DIVISION	)

PINEX PTY. LTD. Appllcant

and

PINEX PTY. LTD. and OTHERS Respondents

m:  NORTHROP J.

: 13 NOVEMBER 1987

PLACE : MELBOURNE

MINUTE OF ORDER

THE COURT ORDERS THAT the motion for an order that the

applicant's solicitors continually inform the Registrar of

Trade Marks of the progress of the actlons herein, lncluding any detalls of proposed settlement agreements, be refused.

Rules of Court.)
IN THE FED-	COURT OF AUSTRALIA )

(Settlement and entry of Orders 1s dealt with in 0.36 of the

l

VICTORIA DISTRICT REGISTRY	I	V. No. G 431 of 1986
GENERAL	DIVISION	)
BETbEEN:

PINEX PTY. LTD. Appllcant

and

PINEX PTY. LTD. and OTHERS Respondents

m: NORTHROP J.

-

DATE : 13 NOVEMBER	1987
W: MELBOURNE
REASONS FOR JUDGMENT

The issue raised on the motlon before the Court 1s

whether the Reglstrar of Trade Marks ("the Reglstrar") should be made a party to proceedlngs In the Federal Cour t In which

a party is seeking orders to rectlfy the Reglster of Trade

Marks ("the Register") under the Trade Marks Act 1955. The proceedlngs were commenced before 1 September 1987, being the date the amendments made to the Trade Marks Act by the Jurlsdrction of Courts (Miscellaneous Amendments) Act 1987 came into operation; see sections 3 and 5 of that Act. Thus,

it must be remembered that references to the Trade Marks Act will be to that Act as it was before It was amended by the Act of 1987.

Unless care is taken, confusion will arise in this

matter because the names of some of the parties to this

proceeding are identical. In an attempt to avoid that

confusion. in these reasons the appllcant Pinex Pty. Ltd.

shall be called "the person aggrieved" and the respondent

Pinex Pty.	Ltd. and its related companles shall be called
"the reglstered proprietor.	"

By appllcatlon dated 24 December 1386, the person aggrieved commenced proceedings In the Federal Court agalnst

the reglstered proprletor seeking orders	under the	Trade
Practlces Act 1374.	The	object of the orders sought was to

prevent the registered proprietor from using the word "Pinex"

in connection with Its busmess of dealing	with	timber
products.	In addltion, pursuant to the accrued	]urisdlction

of this Court, the person aggrieved clalmed relief based	on
the tort of passing off.	As a result of interlocutory steps

in that proceeding, the registered proprietor sought orders

against the person aggrleved including orders based upon

breaches of the Trade Marks Act. In this regard, the

registered proprietor relied upon the accrued	]urisd~ctlon of
this Court and also its associated	]urlsdictlon under 5 . 3 2 of

the Federal Court of Australia Act 1976. slnce, for the

purpose of the proceeding, this Court was	not a	"prescribed
court" within the meaning	of those words	as set out In

sub-section 6(1) of the Trade Marks Act. Further, the

proceeding, not being in the nature of an appeal, did not constitute the Federal Court a prescrlbed court by reason of s.6A of the Trade Marks Act.

The basis for the orders sought by the registered

proprietor was that it was reglstered as the proprletor of

the trade mark "Pinex" belng trade mark	nos. A78.141, A386543
and A386544 In Part A of	the Reglster In Classes 19, 18 and
20 respectively; and that the person aggrleved, ln using	the

mark "Plnex", was infrlnging the rlghts of the reglstered

proprletor under the Trade Marks Act. In answer to the

clalms of the reglstered proprletor, the person aggrleved

alleges that each of the three trade marks constltutes "an

entry wrongly made andlor wrongly remamlng In the Reglster"

and is seeklng an order that each of the three trade marks be

removed from the Reglster m respect of all goods and

servlces In respect of whlch each 1s reglstered.

The order sought by the person aggrleved 1s based

upon 5.22 of the Trade Marks Act.	The relevant parts of that
sectlon are set out:-

"22. (1) Sub~ect to this Act, a prescrlbed

court may, on the appllcatlon	of a person aggrieved
or of the Reglstrar, order the rectlflcatlon	of the
Reglster -

(a) ...

(h)	by the expunglng or amendment of an entry
wrongly made In or remalnlng In the

Register; ...

( 3 ) The power to order the rectificatlon of

the Reglster conferred	by thls section lncludes
power to order the removal	of a reglstratlon In

Part A of the Reglster to Part B of the Register.

( 4 ) The Registrar shall not make applicatlon

to a prescrlbed court under this sectlon unless he

considers the appllcation desirable	In the public
interest.

( 5 ) Notice of an application to a prescrlbed

court under thls section (other than an appllcatlon
by the Registrar) shall be glven to the Reglstrar,
who may appear and be heard and shall appear if so

dlrected by the prescribed court.

16) An offlce copy of an order under thls

sectlon shall be served on the Reglstrar. who

shall, upon receipt of the order, take such steps

as are necessary to glve effect to the order."

At a directions hearing held on 7 August 1987, the Court. as presently constituted, querled whether notlce	of
the orders sought by	the aggrreved person had been given to

the Registrar. Apparently no notice had been given. By

letter dated 24 August 1987, the sollcltors for the aggrieved

person gave notlce of the proceeding to the Reglstrar and

sought hls advlce. By letter dated 11 September 1987, the

Reglstrar replled, In substance as follows:-

"I am now In a posltion to respond to your request for advlce on the Registrar S posltlon m relatlon

to these proceedings. Unless requlred by the Court

to do so, the Reglstrar would not wlah to be

involved In the rectlflcation proceedings. He

would, however, wish to	be kept lnformed of the
progress of the matter, Including	any detalls of
proposed settlement agreements."

By motlon, notice of which 1s dated 22 September

1987, the person aggrleved sought a number of orders

including the following:-

“1. That the Applicant‘s Solicitors contlnually

inform the Registrar of Trade Marks of the progress of the actions hereln including any details of proposed settlement agreements.”

On 25 September 1987, the Court, as presently constltuted,

gave a number of dlrections in the proceedlng but declined to

make the order numbered 1 as set out wlthout hearing

submlsslons from the Reglstrar. In partlcular. the Court

deslred to hear submissions on whether the Reglatrar should

be made a party to the proceedlng. On 23 October, the

Registrar made aubmlsslons bjr counsel to the effect that he

should not be made a party to the proceedlngs.

Thls 1s not the case for the Court CO glve detalled conslderatlon to the practice and procedure to be followed ln

thls Court In proceedings lnvolvlng what are now descrlbed as

“intellectual property laws”;	see the side-note to s.5 of the
Jurisdictlon of Courts (Miscellaneous Amendments)	Act 1987.

Prevlously, those laws seem to have been descrlbed as laws

involving “mdustrlal property”,	see, for example, the Hlgh
Court Rules and in partlcular Orders 66, 66A and 66B of those
Rules.

Prlor to 1 February 1977, the ~urlsdlctlon to order

the rectlficatlon of the Reglster under s . 2 2 of the Trade

Marks Act was vested In the Hlgh Court. Followlng the

creatlon of the Federal Court, that ~urlsdictlon	was vested
in prescrlbed courts; see the Trade Marks Amendment	Act 1976.

Those amendments gave effect to part of the then new policy

adopted by Parllament wlth respect to the courts exercising

~urisdiction	in	intellectual property matters. The policy
has been changed further; see the Jurlsdlction	of	Courts

(Mlscellaneous Amendments) Act 1987. Some aspects of these pollcies are discussed by me In R.D. Werner & Co. Inc. v.

Ballev Aluminium Products	Ptv. Ltd., unreported, 4 November
1967.

Under the Hlgh Court Rules, an appllcatlon for an

order under 5 . 2 2 of the Trade Marks Act was commenced by motlon; see 0.66B and In partlcular r.4(1). Notlce of the appllcation had to be given to the Registrar; r.5. Under

r.9(1) the Registrar was empowered to appear and be heard in

proceedings before the Court and thls Included an appllcatlon under s.22, see deflnltlon of "proceedlng" in r.1, but he was "not (to) be deemed to be a party to the proceedlngs except in the case of an appeal from a declslon, determlnatlon,

order or dlrectlon of the Reglstrar of Trade	Marks not
affectlng a person other than the appellant." Under rules

9(2), ( 3 ) and	( 4 ) ,	the Registrar was empowered to submit to
the Court a statement	In writing.	If he dld so, he had to
give copies of the statement	to the partles.	The Court was
empowered to make such	use of the statement	as It thought
just.

In The Shell Commnv of Australla Ltd. v. Rohm and

Haas Co. (1949) 78 C.L.R. 601, comment was made	on the
question of whether the Registrar should	be made a party to

an application for rectlficatlon of the Reglster. The

~udgment appears to have been given before 0.66B was inserted

into the High Court Rules. The Act under conslderatlon m

that case was the forerunner of the current Trade Marks Act

but the relevant provisions were the same. The Registrar had

been named as a party to the appllcatron. At p.622, Latham

U.J. said:-

"Sectlon 7 1 ( 1 ) (of the Trade Marks Act

1905-1936) provldes that the Court, on the

appllcation of	any person aggrieved	or	of	the
registrar, may	order	the	rectlflcation	of the

register. Section 71(3) provides that 'Notice of

every application to the Court pursuant to thls

section (other than an applicatlon by the

Registrar) shall be given to the Reglstrar, who may

be heard thereon.' The registrar should not be

made a party to an application by a 'person

aggrieved' but notice of such	an applicatlon should
be given to hlm.

At p.630, Dixon J. said:-

"The Registrar of Trade Marks ralsed a point

of practice for our conslderatlon.	He had been
made a party both to the motlon for	rectlflcatlon

and to the appeal. He suggests that s.71(3) does not Intend that he shall be a party on the record, but rather that he shall be notlfred and shall have

a right to be heard If he thinks It desirable to

bring any matter or views to the notice of the

court. I think that the better practice 1s In

accordance with his suggestion."

It IS apparent that these n e w s were consldered

when the Justlces of the High Court made 3.668, as well as

0.66 and 66A of the High Court Rules.	The practlce in the
High Court was that normally the Reglstrar was not a	party to

an appllcatlon under 5.22 of the Trade Marks Act. The High

Court Rules are sllent on whether the Reglstrar had to enter

an appearance before exercising the	power conferred by	0.668
r.9.

Following the amendments made to the Trade Marks

Act m 1977, the Judges of the Supreme Court of Vlctorla made

the Supreme Court (Industrial Propertv) Rules 1381; sec

Chapter VI11 of the Supreme Court Rules.	Those rules are
slmllar	to the correspondlnq Hlgh Court Rules. Appllcations

to the Supreme Court under s . 2 2 of the Trade Marks Act were

to be by motlon on notlce; (VI11 4.1). Notlce of the

appllcatlon had to be glven to the Reglstrar; (VI11 4.2)	xho
was to be served with every aifldavlt to be used by a	party;
(VI11 4.4).	The provislons of VI11 4.6 are almost identlcal
to the provislons of 0.66B	r.9 of the High Court Rules, but

the Victorlan Supreme Court Rules do not provlde that that

Court may make such use of the statement as It thinks lust.

The Victorlan Rules are sllent on whether the Reqlatrar 1s

requlred to enter an	appearance before he can appear and be
heard on	an application. Presumably, under the Victorian
Rules, the Registrar was	not made a party to the proceedlnqs.

At the present time, the Judges of the Federal

Court have not made rules wlth respect to lntellectual

property.	In these circumstances, there	1s much to be sald
for the vlew	that past practlce should be followed and,	on

the facts of thls case, the Reglstrar should not be made a party to the proceedlng. At the same tune, it 1s noted that

m F.H. Fauldlnu ii Co. Ltd. v. Imperlal Chrmical Industrles

of Australia and New Zealand Ltd. (1365) 112 C.L.R. 537, m a case where the defendant to proceedlngs In the Hlgh Court

counter-clalmed, seeklng an order under 5 . 2 2 of the Trade

Marks Act expunglng the plalntlff's trade mark from the Reglster, the trlal Judge, McTiernan J., said at p.539 that a counter-clam was not the appropriate way of applylng for that rellef. Subsequently, the defendant gave notlce of a motlon seeklng simllar rellef and the issue was tried on that

procedure. Thls aspect was not argued before me and I make

no comment on the proper procedure to be adopted In thls

proceedlng.

In each of the Hlgh Court Rules and the Victorian Supreme Court Rules provlslon 1s made under which notlce of

the appllcatlon can be glven by post directed to the offlce of the Registrar. In the llght of those provislons, there 1s

much to be sald for the n e w that the Reglstrar should not be

required to enter an appearance before appearing and belng

heard during the hearing of the application.

Accordlngly, I hold that the Reglstrar need not be

made a party to thls proceeding. Nevertheless, the person

aggrleved must glve notlce of h16 appllcation under 5 . 2 2 of

the Trade Marks Act to the Registrar. In the clrcumstances of this case, it 1s not appropriate that the Court should

make the order sought in	the motion, but this does not mean
that as a matter	of prudence, the solicitors for the person

aggrleved should not keep the Registrar informed	of what	IS
happening.	The solicitors should do that, but It 1s not	for

the Court to dlrect the solicltors to do that.

In the result, I refuse to make the order numbered

1 m the notice of motion dated 2 2 September 1987.