Selth v Australasian Barrister Chambers Pty Ltd (No 3)
[2017] FCA 649
•8 June 2017
FEDERAL COURT OF AUSTRALIA
Selth v Australasian Barrister Chambers Pty Ltd (No 3) [2017] FCA 649
File number(s): NSD 975 of 2014
NSD 1019 of 2014Judge(s): GREENWOOD J Date of judgment: 8 June 2017 Catchwords: INTELLECTUAL PROPERTY – consideration of an application by the Australian Bar Association in the form of the unincorporated association known as the Australian Bar Association and the company limited by guarantee called ABA Australian Bar Association Limited (“ABA Ltd) for declarations and injunctions in relation to the conduct of the respondents in registering the business name Australian Bar Association and the business name Australian Barristers Association – consideration of contentions of infringement of registered trade marks now owned by ABA Ltd but formerly held by an individual on behalf of the ABA – consideration of claims in relation to the use of the name “AustBar” in various configurations – consideration of the use of domain names adopting austbar and austbaradr – consideration of the use by the respondents in the proceedings commenced by the New South Wales Bar Association of the sign or mark “AustBar” – consideration of the use of particular websites bearing particular domain names, in that context – consideration of the accessorial liability of Mr Minus Legislation: Trade Marks Act 1995 (Cth), s 120(1)
Business Names Registration Act 2011 (Cth), s 23(1)
Australian Consumer Law, ss 18(1), 29(1)(g), 29(1)(h) and 236
Cases cited: Australian Society of Accountants v Federation of Australian Accountants (1987) 9 IPR 282
Campomar v Nike International (2000) 202 CLR 45
Crescent Funds Management (Aust) Ltd v Crest Capital Partners Management Pty Limited [2017] FCAFC 2
Coco‑Cola Co v All‑Fect Distributors Ltd (1999) 96 FCR 107
CPA Australia Limited v Dunn (2007) 74 IPR 495
Shell Co of Australia Ltd v Esso Standard Oil (Australia) (1963) 109 CLR 407
Date of hearing: 1 February 2016 to 5 February 2016 Date of last submissions: 18 February 2016 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 360 Counsel for the Applicants: Mr R Macaw QC with Mr M O’Meara Solicitor for the Applicants: Mr A Christopher, Webb Henderson Counsel for the Respondents: Mr D Minus ORDERS
NSD 975 of 2014 BETWEEN: PHILIP SELTH IN A REPRESENTATIVE CAPACITY FOR THE MEMBERS OF THE AUSTRALIAN BAR ASSOCIATION
First Applicant
ABA AUSTRALIAN BAR ASSOCIATION LIMITED ACN 605 949 148
Second Applicant
AND: AUSTRALASIAN BARRISTER CHAMBERS PTY LTD ACN 133 736 848
First Respondent
DEREK MICHAEL MINUS
Second Respondent
DISPUTE RESOLUTION ASSOCIATES PTY LTD ACN 090 594 451 (and another named in the Schedule)
Third Respondent
JUDGE:
GREENWOOD J
DATE OF ORDER:
8 JUNE 2017
THE COURT ORDERS THAT:
1.The applicants are directed to submit proposed orders arising out of the reasons for judgment published today.
2.The parties are directed to file and serve submissions in relation to the costs of and incidental to the proceedings within three weeks.
3.Costs be reserved.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
ORDERS
NSD 1019 of 2014 BETWEEN: THE NEW SOUTH WALES BAR ASSOCIATION (ACN 000 033 652)
ApplicantAND: DEREK MICHAEL MINUS
First RespondentAUSTRALASIAN BARRISTER CHAMBERS PTY LTD (ACN 133 736 848)
Second Respondent
JUDGE:
GREENWOOD J
DATE OF ORDER:
8 JUNE 2017
THE COURT ORDERS THAT:
1.The applicant is directed to submit proposed orders arising out of the reasons for judgment published today.
2.The parties are directed to file and serve submissions in relation to the costs of and incidental to the proceedings within three weeks.
3.Costs be reserved.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
GREENWOOD J:
INTRODUCTION
These proceedings are concerned with two actions heard together. The first (NSD 975 of 2014) is a proceeding commenced by Mr Philip Selth in a representative capacity for the members of an unincorporated body (well‑known amongst the relevant cohorts) described as The Australian Bar Association (the “ABA”). The inaugural general meeting of the ABA was held on 24 January 1963 at Theatre Royal, 29 Campbell Street, Hobart, Tasmania. It seems that the first draft of the Constitution for the ABA was prepared by the Hon Nigel Bowen QC and was settled at a meeting of representatives of the New South Wales Bar Association, the Victorian Bar Council and the Queensland Bar Association at the home of the Hon Nigel Bowen QC in Wahroonga in Sydney.
The ABA is said to consist of practising barristers who are members from time to time of the Australian Capital Territory Bar Association, the Bar Association of Queensland, the New South Wales Bar Association, the Northern Territory Bar Association, the South Australian Bar Association, the Tasmanian Independent Bar, the Victoria Bar Incorporated and the Western Australian Bar Association, and such other practising barristers who may from time to time be admitted to membership of the ABA according to the constitutional arrangements for that purpose.
A company limited by guarantee, ABA Australian Bar Association Limited (“ABA Ltd”) joined the proceeding as second applicant. That company was incorporated on 20 May 2015 for the purpose of assuming the role and function of the ABA. The origin of the ABA and the relationship between the ABA and ABA Ltd is described later in these reasons. It should be noted, however, that all references in these reasons to the “ABA” should be understood as a reference to the unincorporated body up to the point in time at which ABA Ltd assumed the role and function of the unincorporated body and thereafter a reference to ABA Ltd unless expressly otherwise indicated. Where a particular reference to the legal character of the earlier body is necessary, I describe it as “ABAU”.
The respondents to the first proceeding
The first respondent is Australasian Barrister Chambers Pty Ltd (in liq) (“Chambers”). A liquidator was appointed to Chambers on 8 December 2015. On 18 December 2015, the applicants were given leave to proceed against Chambers in liquidation.
The second respondent is Mr Derek Minus (“Mr Minus”). Mr Minus is a barrister. He was formerly a member of the New South Wales Bar Association and at the date of the trial was a member of the Victorian Bar Association. Until 1 October 2014, Mr Minus was the sole director of Chambers. He has been the Secretary of Chambers since its incorporation on 15 October 2008. Since 1 October 2014, the sole director of Chambers has been Ms Armine Minasian, the wife of Mr Minus. All of the issued 10 shares in Chambers have been held by ABCD Corporation Pty Ltd (“ABCD”) and the sole directors of, and shareholders in, ABCD are Mr Minus and Ms Minasian.
The third respondent is Dispute Resolution Associates Pty Ltd (“DRA”). It was incorporated on 9 December 1999. Mr Minus has been a director of that company since 9 December 1999 and its sole director since 19 July 2006. The 300 issued shares in DRA are held by Aplus Pty Ltd (“Aplus”). The directors of Aplus are Mr Minus, Ms Minasian and Sathenik Minus. Of the 10 issued shares in Aplus, one is beneficially held by Ms Minasian and nine are held beneficially by Mr Minus. Aplus is the owner of a registered business name Australian Dispute Resolvers.
The fourth respondent is Austbar Pty Ltd (“Austbar PL”). That company was incorporated on 9 September 2015. The sole shareholder is Aplus. The sole director is Mr Minus.
At the trial, Mr Minus appeared on his own behalf and on behalf of DRA and Austbar PL. Chambers was not represented at the trial although it was represented by Mr Minus up until the appointment of a liquidator to that company. Thus, a reference in these reasons to the contentions of the respondents is a reference to all respondents other than Chambers.
The applicants’ claims in the first proceeding
The applicants seek the following relief.
First, a declaration that Chambers, by using the names and marks Australian Bar Association and Australian Barristers Association in connection with the conduct of an association, organisation or business concerned with representing or promoting the interests of Australian barristers (a collection of services described by the applicants as the “relevant services”), has infringed two Registered Trade Marks owned, since 27 July 2015, by ABA Ltd. Prior to that, they are said to have been owned by ABAU.
The two Registered Trade Marks are these:
(1)Trade Mark 1587902, “AUSTRALIAN BAR ASSOCIATION”, registered in Classes 9, 16, 35, 41 and 45 (TM 902); and
(2)Trade Mark 1558252 (the “device mark” or “TM 252”) as set out below, registered in Classes 9, 14, 16, 25, 35, 41 and 45.
The applicants describe the device mark as the “ABA Logo Mark”.
The applicants contend that each such use or proposed use by Chambers is use or proposed use of a name or mark (that is, a “sign”) substantially identical with, or deceptively similar to, each registered trade mark in respect of services for which each trade mark is registered: s 120(1), Trade Marks Act 1995 (Cth) (the “TM Act”).
The applicants also seek a declaration that Chambers, by use of the following names and marks:
·Australian Barrister Chambers;
·AustBar Chambers; and
·Australian Barrister,
in conjunction with, or in close proximity to, an image of the scales of justice “similar to” the scales forming part of the logo comprising the device mark (being use in conjunction with the relevant services), has infringed the device mark (TM 252) on the footing that such use is use of a sign substantially identical with, or deceptively similar to, TM 252 in respect of services for which the mark is registered: s 120(1), TM Act; Declaration 1A, Second Further Amended Originating Application (“SFAOA”).
The origin of the use of the marks by the applicants and the services for which they are registered is discussed later in these reasons. However, it should be noted at this point that none of the respondents have cross‑claimed for revocation of either mark and Mr Minus expressly disavowed any such claim on behalf of any of the respondents including Chambers (in the period up to the point at which a liquidator was appointed to that company).
Nevertheless, in answer to the claims of infringement, the respondents contend that ABAU is “unable to own any Australian trade mark” and ABAU has “no members” who have “formally applied” to join it or “authorised” an application to be made to it for membership for which a trade mark registration could be held on trust. Apart from that contention, the respondents say that the “ownership” of each registered trade mark is held on trust “as indivisible joint trustees on behalf of the members of the association” by those 12 identified members of the Australian Bar Council (the “AB Council”, being the management organ of ABAU under its Constitution) who applied for registration of each trade mark. They also contend that the assignment of ownership of each trade mark from those persons to those members constituting the AB Council on 17 April 2014 was invalid. The new Council was comprised of 11 members. The new members were Mr William Alstergren SC and Mr Peter Davis QC. The outgoing members were Mr Colbran QC, Mr Traves QC and Mr Walker. Those outgoing members assigned their “joint ownership” of each registered trade mark to the incoming members. That assignment is said, by the respondents, to be invalid. The respondents also contend that the assignment on 27 June 2015 of the trade marks to ABA Ltd was invalid because ABAU did not own and could not pass a valid title to ABA Ltd.
Second, the applicants seek a declaration that Chambers by use, in connection with the relevant services, of:
·Australian Bar Association;
·Australian Barristers Association;
·Australasian Barrister Chambers;
·Australian Barrister; and
·Australian Barristers Chambers, AustBar Chambers, and Australian Barrister, each in conjunction with, or in proximity to, the scales of justice forming part of the logo comprising the ABA logo,
engaged in conduct in contravention of s 18(1) of the Australian Consumer Law (“ACL”) and made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.
Third, they seek a declaration that Chambers by use, in connection with the relevant services, of the mark or name AustBar engaged in conduct in contravention of s 18(1) of the ACL and made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.
Fourth, they seek a declaration that Chambers by use, in connection with the relevant services, of each of:
·URL ˂ name AustBar Chambers;
·the name AustBar ADR; and
·the tweet identifier ˂Australian Barrister@AustBar˃;
·the URLs, names and marks above, and the name and mark “AustBar”, each in conjunction with, or in proximity to, the scales forming part of the logo comprising the ABA logo,
engaged in conduct in contravention of s 18(1) of the ACL and made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.
Fifth, they seek a declaration that Mr Minus is liable as a joint tortfeasor in respect of the infringement of TM 902 and TM 252 by Chambers; that Mr Minus has aided and abetted, counselled or procured, the contraventions by Chambers of the ACL falling within declarations 2, 3 and 4 above; and that Mr Minus has aided and abetted, counselled or procured, the contraventions by Austbar PL described below in these reasons.
Sixth, they seek a declaration that DRA has aided and abetted, counselled or procured, the contraventions by Chambers of the ACL falling within the scope of the fourth declaration sought by the applicants described above.
As to Austbar PL, the applicants seek a declaration that that company has, by the use of the name and mark “AustBar” and the name “AustBar Chambers”, in connection with the relevant services, engaged in conduct in contravention of s 18(1) of the ACL and has made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.
The applicants also seek injunctions against the respondents. They seek by para 7 of the SFAOA an order that the respondents be restrained from using, in trade or commerce in Australia, in respect of the relevant services:
·the name and mark Australian Bar Association or any name deceptively similar to that name;
·the name and mark Australian Barristers Association or any name deceptively similar to that name;
·the name and mark Australasian Barrister Chambers or any name deceptively similar to that name;
·the name and marks Austbar and AustBar Chambers or any name deceptively similar to those names;
·the name AustBar ADR or any name deceptively similar to that name;
·the tweet identifier ˂Australian Barrister@AustBar˃ or any identifier deceptively similar to that identifier;
·the URLs, names and marks referred to above, each in conjunction with, or in proximity to, the scales forming part of the logo comprising the ABA logo.
The applicants also seek an order by para 8 of the SFAOA that the respondents be restrained from representing, in trade or commerce in Australia, in respect of the relevant services, by use of:
·the name and mark Australian Bar Association or any name deceptively similar to that name;
·the name and mark Australian Barristers Association or any name deceptively similar to that name;
·the name and mark Australasian Barrister Chambers or any name deceptively similar to that name;
·the name and marks Austbar and AustBar Chambers or any name deceptively similar to those names;
·the name AustBar ADR or any name deceptively similar to that name;
·the tweet identifier ˂Australian Barrister@AustBar˃ or any identifier deceptively similar to that identifier;
·the URLs, names and marks referred to above, each in conjunction with, or in proximity to, the scales forming part of the logo comprising the ABA logo,
that any association, organisation and business set up by the respondents or any of them to provide services to Australian barristers is sponsored by, approved of or affiliated with, the applicants.
The applicants then seek a range of other orders consequential upon the earlier orders. It is not necessary to identify the full scope of those orders. It should be noted, however, that the claim for damages is not pressed by the applicants against any of the respondents.
The second proceeding
The second proceeding (NSD 1019 of 2014) is a proceeding commenced by the New South Wales Bar Association (“NSWBA”). The NSWBA was incorporated in 1936 and is now a public company limited by guarantee. It is also well‑known amongst the relevant cohorts. Its members are said to primarily comprise barristers holding Practising Certificates under the Legal Profession Act 2004 (NSW). It is governed by a Bar Council consisting of 21 members. In 1998, the NSWBA registered and has used since that date the domain name ˂ which is the website for the NSWBA.
The respondents to the proceeding are Mr Minus and Chambers.
In the proceeding, the NSWBA seeks the following relief.
First, a declaration that the respondents have infringed Registered Trade Mark 1564401 BARADR (“TM 401”) by use of the mark “BARADR” and the domain name ˂ in connection with the promotion of, and provision on the internet or otherwise of, information about alternative dispute resolution (“ADR”) and Australian barristers involved in ADR.
Second, a declaration that Chambers has, by the use of the mark “BARADR”; the domain name ˂ and the domain name ˂ in connection with the promotion of, and provision on the internet or otherwise of, information about ADR and Australian barristers involved in ADR, engaged in conduct in contravention of s 18(1) of the ACL and made representations in contravention of ss 29(1)(g) and 29(1)(h) of the ACL.
Third, a declaration that Mr Minus is liable as a joint tortfeasor in respect of the infringement of TM 401 by Chambers; and that Mr Minus has aided and abetted, counselled or procured, the contraventions by Chambers of ss 18(1), 29(1)(g) and 29(1)(h) of the ACL.
The applicant also seeks injunctions restraining the respondents from particular conduct.
An injunction is sought restraining the respondents, in trade or commerce in Australia, in respect of the promotion and provision on the internet or otherwise of information about ADR and Australian barristers involved in ADR, from using the mark “BARADR” and any mark substantially identical with or deceptively similar to that mark; the domain name ˂ and any domain name substantially identical with, or deceptively similar to, that domain name; and the domain name ˂ and any domain name substantially identical with, or deceptively similar to, that domain name.
The applicant also seeks an order that the respondents be restrained, in trade or commerce in Australia, in respect of the promotion of and provision on the internet or otherwise of information about ADR and Australian barristers involved in ADR, from representing, by use of the mark “BARADR” and any mark substantially identical with or deceptively similar to that mark; the domain name ˂ and any domain name substantially identical with, or deceptively similar to, that domain name; and the domain name ˂ and any domain name substantially identical with, or deceptively similar to, that domain name, that they or either of them, any website associated with either of them or any promotion or provision on the internet or otherwise by either of them of information about ADR and Australian barristers involved in ADR has the sponsorship or approval of or is associated with the NSWBA.
The NSWBA also seeks a series of consequential orders arising out of the relief otherwise claimed. It is not necessary to set out the nature of the consequential relief. The NSWBA does not press a claim for damages against either respondent.
I will now deal with the underlying factual matters relating to the ABA proceedings. I will then address the underlying factual matters in relation to the NSWBA proceedings.
THE ABA PROCEEDINGS
The applicants rely upon 10 affidavits recited in Ex 3(A). The respondents rely upon the affidavits also recited in Ex 3(A). There are, of course, other exhibits tendered in evidence and oral evidence arising out of the cross‑examination of the deponents.
The principal evidence given on behalf of the applicants concerning the ABAU, its activities, the formation of ABA Ltd and the relationship between those bodies was given by Mr Philip Alan Selth (“Mr Selth”). Mr Selth is the Executive Director of the NSWBA and Chief Executive Officer (“CEO”) of the ABA. He has held these positions since 10 November 1997 and 2 February 2015 respectively. Mr Selth has been involved with the affairs of the ABA since his appointment as Executive Director of the NSWBA in 1997. He has, from 1997, to the best of his recollection, attended every meeting of the AB Council and has been responsible for a significant part of the administration of the business of the ABA including its financial management.
The ABAU is an unincorporated Association governed by a Constitution. The Constitution provided, at the relevant time, that the name of the Association is “The Australian Bar Association”. The ABA’s objectives, set out at cl 3, include:
(a) To promote and maintain the rule of law.
(b) To promote the effective administration of justice.
(c)To encourage the continued existence and growth of an independent Bar in Australia including the Territories.
(d)To promote, maintain and improve the interests and standards of members.
(e)To form a bond of union among members of the Bar in the Commonwealth of Australia and its Territories and to provide means whereby:
(i)Their views can be easily ascertained and expressed;
(ii)Exchange of information and views on matters affecting barristers may be facilitated;
(iii)Common standards or rules may, where it is considered desirable, be adopted.
(f) …
(g)To maintain and improve standards of instruction and training of barristers and of those intending to become barristers.
(h)To maintain liaison, and when thought appropriate, cooperate with the Law Council of Australia or any other body representing the profession or any other body at the discretion of the Australian Bar Council.
(i)To arrange and promote continuing legal education and to undertake the occasional publication of transactions and other papers.
(j)To establish and publish a periodical Australian Bar review or journal.
(k)To make representations on behalf of barristers to Commonwealth and other government departments or bodies.
…
Clause 4(a) provides that the members of the ABA shall consist of the practising barristers who are members from time to time of the eight bodies described at [2] of these reasons described in cl 4(a) as the “Constituent Bodies”, and “such other practising barristers as may from time to time be admitted to membership by the [AB Council]”. Clause 5 provides for an AB Council charged with the control and management of the affairs of the Association. The AB Council consists of five officers who must all be members of the ABA and one representative from each of the Constituent Bodies. The officers are to be elected annually at the Annual General Meeting.
Mr Selth says that, historically, those practising barristers who hold a current Practising Certificate and are also a member of one of the Constituent Bodies, have “automatically” been registered as members of the ABA. For the 2015/2016 financial year, practising barristers who renewed their membership of the NSWBA could elect, on the renewal form, to opt out of continuing membership of the ABA. As to funding, the ABA receives membership revenue based on an annual fee deducted from the membership fees paid by practising barristers to the relevant Australian State or Territory Bar Association. The ABA also generates revenue through the conduct of conferences, events, functions and training courses.
As already mentioned, the inaugural Annual General Meeting of the ABA was held on 24 January 1963 in Hobart. The move to form such an Association began with a unanimous resolution of the New South Wales Bar Council on 26 June 1957, to do so. The circumstances that led to such a resolution seemed to have been a concern on the part of the Bar Council that the NSWBA had no voting rights on the Executive of the Law Council of Australia (the “LCA”) in 1955/1956; the notion that the Constitution of the LCA was thought to be “unsatisfactory”; and the concern that the Bar Council and the NSWBA had experienced difficulty in being “heard” by the Commonwealth Attorney‑General on issues of importance to the NSWBA, outside the primary consultation forum of the LCA. The Queensland Bar Association supported the proposal provided that the formation of the ABA did not “in any way subvert the condition or status” of the LCA. The Victorian Bar Association opposed the proposal. The proposal to form such an Association was put to the Australian Law Convention held in Melbourne in 1957 in a paper presented by the President of the NSWBA (later Wallace J and President of the New South Wales Court of Appeal). The proposal, however, was “with one exception condemned”. The exception was the support of the Bar Association of Queensland in the proposal. The concern, resulting in the proposal being condemned, was, as expressed by Else‑Mitchell QC (later Else‑Mitchell J), and others, that “no other consequence would follow than the dismemberment of the [LCA] if there were formed an [ABA] on the basis and with the powers and scope [as proposed]”, should such a proposal be supported: see The Founding of the Australian Bar Association, Hart J and Mr John Helman (later Helman J), Australian Bar Gazette, cited as 1968 2(3), Aust Bar Gaz 3.
Since its formation, aspects of the functions and role of the ABA have been recognised under statutory arrangements: The Legal Profession Uniform Law Application Act 2014 (Vic); The Legal Profession Uniform Law Application Act 2014 (NSW). Under those Acts, the ABA has statutory duties and roles concerning the development of Uniform Rules relating to barristers; Legal Practice Rules; Legal Professional Conduct Rules; and Continuing Professional Development Rules.
Mr Selth says that in pursuing its objects, the ABA, over time, has undertaken, and continues to undertake, various “activities for its members” and “provides various services to the legal profession generally” both of which he describes as the “ABA Services”. The activities are set out at para 16 of Mr Selth’s affidavit of 22 April 2015 and they include these activities:
(a)In about 2005 the ABA established the Advocacy Training Council (ATC). The ATC allows the ABA to become directly involved in the initial and ongoing training of barristers practising in Australia. Each year the ABA conducts a series of advocacy courses (ABA Advocacy Courses) comprising:
i.a five‑day residential Advanced Trial Advocacy course in January;
ii.a five day residential Essential Trial Advocacy course in June; and
iii.a three day Appellate Advocacy course in September.
The advocacy coaches of the ABA Advocacy Courses include senior judges and senior silks from around Australia, as well as international silks and performance coaches. …;
(b)The organisation and conduct of international legal conferences which are frequently attended by judges of the High Court of Australia and the Federal Court of Australia as well as prominent members of the judicial and the various State Bars. Many of the judges of both these courts have supported the ABA in this activity by either attending or speaking. …;
The speeches given at ABA conferences are often reproduced in the Australian Bar Review. An example is the keynote address by Mason CJ at the 1992 ABA Conference, London and Edinburgh [see Tab PS‑1, Tab 9]. …;
(c)[Involvement] with several international bodies and affiliation with international legal organisations including the International Bar Association (IBA) and the International Council for Advocates and Barristers. …;
(d)The establishment of best practice principles not only in Australia but also overseas. In about July 2009 APEC held a two day workshop in Singapore on admission of lawyers in different jurisdictions. [Mr Selth] attended that workshop as the representative [of] all of the State Bars;
(e)Developing a code of conduct for Australian barristers which resulted in the publication in 1993 of a Code of Conduct for Australian barristers. In 2007 the ABA agreed to a review of each State Bar’s conduct rules with the aim of developing a uniform set of rules for them;
(f)Being involved in the activities of the Council of Australian Governments (COAG), the peak intergovernmental forum in Australia, to achieve national regulation of the Australian legal profession. ... [Mr Selth] was appointed as a member of COAG’s Consultative Group as a representative of the State Bars. The function of COAG’s Consultative Group was to advise and assist a specialist taskforce appointed by the Attorney‑General to make recommendations to implement the national regulation of the Australian legal profession.
(g)Attending ceremonial sittings at Federal, State and Territory courts. …;
(h)Commenting on proposed amendments to the procedural rules of both the High Court of Australia and the Federal Court of Australia;
(i)Each year in January or February it has become the ABA’s practice to hold the annual Australian Bar Association Dinner for new silks in the Great Hall, High Court of Australia, Canberra. This is typically held on the night of the new silks taking their bows in the High Court. All judges and barristers, not just the new silks, and their partners are invited to attend;
(j)Seeking sponsorships for its various activities including the conduct of conferences. Sponsors have included American Express Australia Limited (American Express), Commonwealth Bank of Australia, Australian and New Zealand Banking Group Limited, Trans Airlines Australia, Qantas Airways Limited, CCH Australia Limited, Law Book Company Limited and Suncorp Group Limited.
The ABA has had a long association with American Express. For example, in 1976 American Express was the official ABA travel Co‑ordinator and Consultant for the Round World Study Tour. Since 2006, American Express has offered an ABA Platinum Credit Card to members of the ABA featuring, with the permission of the ABA, the ABA logo [being the device mark] …
…
The ABA’s conferences and courses sponsored by third parties have included [conferences and courses in 1976, 1984, 2005, 2009, 2011, 2012 and 2013].
(k)Conducting a Member Benefits Program providing a range of services to [members of the ABA] …; and
(l)Commenting publically on matters of national interest. [Mr Selth sets out examples of such publications for the period 1986 to 2015 at PS‑1, Tab 13].
The ABA has a website located at ˂ described by Mr Selth as the “Austbar website”. Mr Selth says that the National Library of Australia (the “NLA”) has sought and been given the permission of the ABA to create an archival record of the ABA’s website in the NLA’s Pandora web archive.
Apart from these activities, the ABA from 1963 to 1970 caused the Australian Bar Gazette to be published by the entity now known as the Law Book Company of Australasia Pty Ltd reporting on matters relating to the ABA and the practice of law nationally. Since 1963, the citation for the publication has been “Aust Bar Gaz”. The 1963 edition, for example, is cited as “1(1) Aust Bar Gazette” and then the page number of the article. The URL contains the sub‑page “/journals/AUBarGaz”. The Australian Bar Gazette was revived by the ABA in the period 1966 to 2007. Since 2005, many editions of the publication have been available online as downloadable publications through the “Austbar Website”. The device or logo depicted at [11](2) of these reasons is displayed on the front page of the Australian Bar Gazette. Mr Minus accepts that this “publication is frequently referred to Aust Bar Gaz” although he says that he has never had occasion to refer to it personally: T, p 208, lns 33‑40.
As to the Australian Bar Review, Mr Selth says this at paras 34 and 35:
34.From 1985 to date, with the support and the endorsement of the ABA, LexisNexis and its predecessors have published the legal journal Australian Bar Review. The Australian Bar Review publishes at least three issues per year and regularly features a report of the President of the ABA.
35.The Australian Bar Review has featured and continues to feature: articles on matters of current interest in legal doctrine and procedure; analytical articles of substantial length, shorter notes, comments and reviews of significant books; reports of the President of the ABA; speeches at ABA conferences; and extra‑judicial notes, that is, reports and statements of senior Australian judges.
Mr Selth says that Thomson Reuters has a “First Point Table of Abbreviations” which shows that the abbreviated citation reference for the Australian Bar Review is “Aust Bar Rev”. Mr Selth also says that the list of legal abbreviations compiled by Australian universities shows the abbreviated reference to the Australian Bar Review as “Aust Bar Rev”. Mr Minus accepts that “this publication is often referred to as Aust Bar Rev” and that it is published “under the auspices of the Australian Bar Association”: T, p 208, lns 16‑23.
Mr Selth says that “Aust Bar” has attracted broader use as a description of the ABA. He says that since 1963, the media, newspapers and other publications, have made reference to “Aust Bar” as a description of the ABA. One example (at PS‑1, Tab 26) is an article from the Daily Telegraph on 21 October 1963 reporting upon the formation of the Australian Bar Association, introduced under the heading:
4 STATES FORM
AUST. BAR
ASSOCIATION
Other examples of media use of “AUST BAR” as a reference to the ABA include: a Radio Australia item of 27 November 2008 bearing, in the printed form, “Aust Bar Association also concerned at Fiji situation”; ABC News 14 June 2014, “Mark Livesey Aust.Bar Association”. The applicants also rely upon a reference to: “The Aust Bar Association” as an institutionally recognised reference to the ABA to be found in footnote 657 (for example) at p 135 of a Law Reform Commission paper of 29 November 1995.
As to the Austbar Website ˂ Mr Selth says that the ABA has been the registrant of the Austbar Website since 24 July 2001. He says that since that date the AustBar Website has contained information about the activities of the ABA, details of Australian barristers, updates from the President, copies of ABA media releases, copies of speeches by ABA members, conference information, information about member benefits, links to State and Territory Bar associations and information related to national practice of concerned barristers.
There are two other ABA domain names that, when interrogated by an enquirer or user, direct traffic to the ABA Austbar Website and they are ˂ and ˂ The ABA also operates an email address in these terms: ˂[mail]@austbar.asn.au˃.
As to the use of the email address, Mr Selth attaches copies of ABA brochures for its educational conferences and courses held in Dublin 2005, Chicago 2007, Chicago 2009, Berlin 2011, Bologna 2013 and Rome 2013, all of which extensively display the logo work (shown at [11](2) of these reasons) and all of which direct enquiries to [the mail nominee] at austbar.asn.au.
In terms of the traffic or number of visits to the ABA’s Austbar website, Mr Selth attaches a report to his affidavit (PS‑1, Tab 32) provided by internet service providers which shows the number of “unique visitors” to the website for the period January to December for 2010, 2011, 2012, 2013 and 2014. Unique visitors are those persons who have made at least one visit to the website and that term excludes multiple visits by the same person: PS‑4, Tab 10. The “unique visitors” column therefore correlates with individual single visits. The report also shows the total number of visits, pages visited and total “hits”. The information is set out below:
Year
Unique Visits
Number of Visits
Pages
Hits
2010
16,641
24,335
101,524
216,178
2011
16,622
26,454
83,297
208,380
2012
17,563
27,616
229,110
380,554
2013
52,126
76,822
589,833
876,036
2014
24,821
39,328
527,713
774,436
127,773
194,555
1,531,477
2,455,584
Accordingly, for the period 2010 to 2014, there were 127,773 unique visits; 194,555 visits; 1,531,477 pages; and 2,455,584 hits.
From February 2014, the ABA registered a “Twitter account” adopting the “identifier” ˂“@AustBarAssoc”˃. The ABA posts short messages in accordance with the Twitter protocols on topics of interests to the ABA and in relation to its various activities, for the benefit of its Twitter followers.
The ABA has used the name Australia Bar Association and the abbreviation ABA since 1963 in the conduct of its affairs as described in these reasons at [44], [46] and [53]. Many examples are given by Mr Selth including brochures, announcements, correspondence and letterheads (showing dealings with third parties since the 1980s using these terms): see PS‑1, Tab 7‑9; 11‑15. Also at PS‑1, Tab 16, Mr Selth attaches a number of press articles which show that media discussion from 1963 onwards embraces both the name “Australian Bar Association” and “ABA” as descriptors of the Association.
It is now necessary to say something further about the Registered Trade Marks. Although the ABA had extensively used the ABA Logo Mark and the name Australian Bar Association over many years in connection with the promotion of its services to members, dealings with third parties in relation to such things as sponsorship arrangements and otherwise, applications for registration of each mark as a trade mark under the TM Act had not been filed until 2013.
An application for registration of the device mark was filed on 21 May 2013. It was accepted on 21 June 2013 and was entered on the Register on 18 December 2013 as registered from 21 May 2013. The renewal date is 21 May 2023. The application was filed on behalf of the “owners”, Mr Colbran QC, Mr Livesey QC, Mr Walker, Mr Boulten SC, Mr Traves QC, Mr Stretton SC, Mr Quinlan SC, Mr McTaggart, Ms McLeod SC, Mr O’Sullivan QC, Mr Lawrence SC and Mr Greenwood SC (who is not related to me). Each of the 12 individual owners assert ownership “as trustee for the Australian Bar Association”. On 17 April 2014, Mr Colbran QC, Mr Traves QC and Mr Walker, as assignors, entered into a Trade Mark Assignment Deed with Mr Alstergren SC and Mr Davis QC, as assignees. The Deed recites that the assignors had retired from the AB Council and had been replaced by the assignees. The remaining nine trustee owners had not retired from the AB Council and were to continue as owners of TM 252 together with the assignees. Clause 2 of the Deed provides:
The ASSIGNORS, as joint owners of the Trade Marks, assign to the ASSIGNEES and the ASSIGNEES accept as trustees for the ABA, the assignment of the Trade Marks throughout the world in perpetuity. This includes the right to bring and maintain suits arising before the date of this deed.
The Trade Marks are defined to mean TM 252, the application which became TM 902 and Trade Mark Application 1560119 for the word AUSTBAR (which became the subject of opposition by Chambers).
The application for registration of TM 902 (the word mark Australian Bar Association) was filed on 25 October 2013. It was accepted on 6 January 2014 and was entered on the Register on 30 May 2014 as registered from 25 October 2013. The applicant owners were the same 12 individuals described at [58] of these reasons and, again, they each asserted ownership “as trustee for the Australian Bar Association”. The Deed of Assignment earlier mentioned effected an assignment of the ownership interest of each assignor as trustee to the assignees of TM 902 (as it did in relation to Application 1560119). The goods and services for which the word mark AUSTRALIAN BAR ASSOCIATION is registered (TM 902) are set out in Schedule “A” to these reasons and the goods and services for which the device mark is registered (TM 242) are set out in Schedule “B” to these reasons.
On 10 September 2014, Mr Livesey QC, Ms McLeod SC, Mr Boulten SC, Mr Stretton SC, Mr Quinlan SC, Mr McTaggart SC, Mr O’Sullivan QC, Mr Lawrence SC, Mr Greenwood SC, Mr Alstergren QC and Mr Davis QC, as assignors, entered into an Assignment Deed with Mr Selth, as assignee, by which they assigned to Mr Selth TM 252, TM 902 and Application 1560119. By cl 2, Mr Selth acknowledges that he holds the legal title as trustee for the members of the ABA consistent with his agreement with the ABA to so hold each trade mark and the trade mark application.
Mr Selth says that he became the registered owner of TM 252 and TM 902 by assignment pursuant to a resolution of the AB Council in September 2014. He says that he holds each trade mark registration on behalf of the members of the ABA “from time to time”. He says he is also now the applicant for the AUSTBAR application and also Application No. 1650033 for the word mark AUST BAR.
As already mentioned, ABA Ltd was incorporated on 20 May 2015. In the President’s Report (Ms McLeod SC’s Report) of June 2015 to members, the President advised members of the incorporation of ABA Ltd and reported that the new entity would “assume the role and function of the ABA going forward”: affidavit Mr Andrew Christopher (“Mr Christopher”) sworn 27 July 2015, AJC‑3, Tab 3. The President also said this in that report:
The ABA Council also proposes to assign all rights and interests of the ABA to ABA Limited. It has been a long‑held plan of the ABA to incorporate and this is a positive development for the future activities and governance of the ABA.
The objects of ABA Ltd are essentially those of the ABAU. All of the objects (except (j)) recited at [39] of these reasons are present in the Constitution for ABA Ltd. The additional object is: “to assist other jurisdictions internationally with advocacy training”: cl 3(i). ABA Ltd has two categories of membership. The first is “constituent bodies” which, by cl 7, means the eight State and Territory Bar Associations and the second is “individual members” which by cl 8, means practising barristers, life members and honorary members. A practising barrister means a person who practises only as a barrister. By cl 9.2, all practising barristers who are members of a constituent body are individual members of the ABA subject to the Constitution. Clause 9.3 provides that in order to give effect to cl 9.2, the Constitution of each constituent body must include a provision to the effect that by becoming and remaining a member of the relevant constituent body, the member agrees to become and remain a member of ABA Ltd subject to the Constitution of ABA Ltd and a member who ceases to be a member of the relevant constituent body ceases to be a member of ABA Ltd, unless otherwise provided for by the Constitution of ABA Ltd.
By cl 28.1, ABA Ltd has 11 directors. Each constituent body appoints one director in accordance with cl 29 (which includes the right to specify the term of that director). There are three others being office holders, namely, a President, a Vice‑President and a Treasurer, all appointed at the Annual General Meeting under cl 35. The directors are the voting members of the AB Council: cl 37. The AB Council is responsible for the governance and management of the ABA. Because ABA Ltd was formed to assume the role and function of the ABA going forward, the Constitution of ABA Ltd contains transitional provisions at cl 67. Clause 67(a) provides that until a constituent body has amended its Constitution as contemplated by cl 9.3, cl 9.2 may be satisfied by the constituent body obtaining an individual member’s consent to membership of ABA Ltd.
Mr Christopher is a partner of Webb Henderson, the solicitors for the applicants. He exhibits to his affidavit of 27 July 2015 (at AJC‑3, Tab 4) a copy of a resolution of the Board of ABA Ltd executed by each director (in July 2015) to enter into a Deed of Assignment with Mr Selth by which Mr Selth is to assign “all rights and interests” held by him on behalf of members of the ABA to ABA Ltd including TM 252, TM 902 and the AUSTBAR and AUST BAR applications. The Deed of Assignment is dated 27 July 2015. The assignment to ABA Ltd was given effect by cl 1.1 of the Deed.
A database search of the Trade Marks Register maintained by IP Australia confirms that AB Ltd was recorded as the owner of TM 252 and TM 902 as from 27 July 2015: Mr Christopher’s affidavit, sworn 9 September 2015, AJC‑4, Tabs 1‑3. The AUSTBAR and AUST BAR applications were also recorded as applications of ABA Ltd as from 30 July 2015: AJC‑4, Tab 4.
I will return later in these reasons to the contentions of Mr Minus that neither ABAU nor ABA Ltd has or had any members as a matter of fact and law and his contentions of invalidity in the title to sue on TM 252 and TM 902.
The conduct of the respondents about which complaint is made by the applicants takes a number of forms.
First, Chambers on 14 June 2003 registered under the provisions of the Business Names Registration Act 2011 (Cth) (the “BNR Act”) the name AUSTRALIAN BAR ASSOCIATION. Moreover, the registration of that business name was renewed by Chambers on 14 June 2014. On 1 November 2015, the business name was deregistered. As earlier mentioned, Mr Minus was the sole director of Chambers until 1 October 2014 and thereafter the sole director was Ms Armine Minasian, the wife of Mr Minus. Mr Minus has been the Secretary of Chambers since its incorporation on 15 October 2008.
Second, on 9 May 2014, Chambers registered the business name AUSTRALIAN BARRISTERS ASSOCIATION.
Third, on 29 May 2014, Chambers registered the business name AUSTBAR. That registration was cancelled on 9 October 2015. However, the business name was registered on 9 September 2015 by Aplus.
Fourth, on 3 January 2014, Chambers registered the business name AUSTBAR Chambers. That registration was cancelled on 11 October 2015. However, the business name was registered by Austbar PL on 9 October 2015.
The applicants contend that the lodging of these applications for registration of the various business names is only consistent with an intention to use each name in the course of carrying on a business under that name. That follows because s 23(1) of the BNR Act provides that only an entity that intends to carry on a business under a name may lodge an application for that name to be registered to the entity so applying as a business name. The applicants ask: why would the various entities otherwise apply for registration of these business names?
Fifth, in July 2011, DRA registered the domain name ˂ On 23 July 2014, Chambers registered the domain name ˂ Mr Minus is the Registrant and Technical Contact for the purposes of each of these domain name registrations: AJC‑1, Tabs 11 and 12. The Registrant Contact email address and Technical Contact email address for each registration is ˂[email protected]˃. Mr Christopher deposes to a search he caused to be made by use of the Google search engine conducted on 17 April 2015 of austbar which produced a search result listing as the second entity on the results list (after the ABA result ˂ the website for Chambers ˂ and as the third entry a “twitter page” linked to the Chambers website ˂ under the “handle” ˂@AustBar˃. The next in the search results was AustBar ADR ˂ being the website registered by Austbar PL on 26 September 2015. The search also shows prominently the name of the first respondent, Chambers, and contact details. It also shows as “images for austbar” the device consisting of the scales of justice together with the name Australasian Barrister Chambers as depicted at [78] of these reasons.
On 15 May 2013, Mr Minus for Chambers wrote to each State and Territory Bar Association announcing his initiative to launch the activities or undertaking of Australasian Barrister Chambers. The example set out below is the letter sent to Mr Selth for the NSWBA although the content of the body of the letter is the same in the case of each letter sent to the State and Territory Bar Associations. The letter is in these terms:
Mr Philip Selth OAM
[address]Launch of Australasian Barrister Chambers (˂ Mr Selth OAM
The legal environment in which barristers operate is changing and Australian barristers need to change with it.
Last October, the Bar Council of the NSW Bar Association recognised this situation and in a bold response, adopted a three year Strategic Plan that identified initiatives to be undertaken by the Association to respond to the rapid pace of change in the Australian legal environment.
The Plan supported the development of a National profession; dispute resolution outside of the court; the increasing internationalisation of the law; marketing and promoting the work of barristers; harnessing of the rapid changes in technology and communication in society, including social networking, to increase the visibility and accessibility of barristers.
Australasian Barrister Chambers has been established as a true virtual chambers in support of these new and imaginative ideas, and ˂ as a single web address and place to find an Australian barrister with a national focus. With the eventual move to a national profession, any member of an Australian Bar association can be listed and will be able to promote their expertise to consumers of legal services both in Australia and Asia.
It is intended that the Australasian Barrister Chambers website will provide information and advice for, and eventually services to barristers who wish to avail themselves of the benefits of internet delivery to support their practice: greater national visibility, increased accessibility and lower cost of delivery of their services into an evolving marketplace for learned advice.
I am writing to you and your Bar Association to advise of the imminent launch of this website, to illicit your support for this initiative and to request that you inform your members of this development. I also welcome your Association’s comments, suggestions for changes, improvements and recommendations for clarification, before the site is widely promoted.
Yours sincerely
Derek Minus[emphasis added]
The letterhead recites the full name of the Chambers entity; the address at 6th Floor, 67 Castlereagh Street, Sydney, telephone and fax numbers, an email address of ˂[email protected]˃ and the website ˂ The letterhead also bears the following logo:
On 23 May 2013, Mr Colbran QC, the President of the ABA, responded to the letter from Mr Minus. Mr Colbran QC said this:
Dear Mr Minus
I refer to your letter of 15 May to the Presidents and Chief Executive Officers of the Australian Bars that make up the Australian Bar Association concerning the “Australasian Barrister Chambers”.
I am replying on behalf of each of the Bars, including the NSW Bar Association.
I understand that you have had no contact with the NSW Bar Association on this matter. Had you done so, you would have been informed that the NSW Bar Association does not wish to be associated with your website. You would also have been informed that both the Australian Bar Association and the Law Council of Australia are developing a national listing of all practitioners and that the proposed national board will be doing likewise.
The Australian Bar Association notes that in your letter and on your website found at ˂
-you are using a logo that is deceptively similar to the ABA’s scales of justice logo;
-you are using a domain name (namely ˂ that is deceptively similar to the ABA’s domain name (namely ˂ have references to the NSW Bar Association’s strategic plan; and
-you have links on your website to the various state and territory barristers’ associations.
The Australian Bar Association is concerned that people will be misled into believing that your “virtual chambers” in some way has the support, affiliation, approval or sponsorship of the Australian Bar Association.
It does not.
I ask that you confirm within seven days that you will discontinue using the misleading logo, cancel the domain name ˂ and refrain from making any further representations that suggest that you have the support, affiliation, approval or sponsorship of the Australian Bar Association.
Yours sincerely
Michael Colbran QC
President, Australian Bar Association[emphasis added]
The letterhead of the ABA appearing on Mr Colbran QC’s letter bears the following logo:
Mr Minus for Chambers responded to that letter on 30 May 2013. Mr Minus noted that Mr Colbran QC’s response was on behalf of the Australian Bar Association and each of the State and Territory Bar Associations. He said that the response was both “disappointing” and “surprising”. He said this:
…
Disappointing that an initiative designed to assist Australian barristers and one which is in support of the well thought out strategic plan published by the NSW Bar Association, does not have the favour of the established Associations. Surprising that the Bar Associations would be concerned at competition from within the ranks of its own members to do this very thing.
I welcome your news that both the Australian Bar Association and the Law Council of Australia are “developing a national listing of all practitioners”. However, I fear that you have misunderstood the nature and purpose of the Australasian Barrister Chambers website. It does not provide a national listing of all barristers (as useful as that would be) rather a listing of Australian barristers who are interested in providing their services nationally.
To deal with your specific issues:
1.The “scales of justice” logo employed is I understand derived from the Greek mythological figure, Themis, an oracle at Delphi who became known as the goddess of divine justice. It is in common usage by hundreds of organisations that deal with the provision of justice.
2.The website address is derived from the words of our registered company name “Australasian” and “Barrister”, it complies with the auDA Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs (Policy No. 2008‑06) and it is located in a totally different gTLD from that of your Association, namely “.com”.
3.The Australian Bar Association’s concern that people will be misled into believing that the Australasian Barrister Chambers website has the “support, approval or sponsorship of the Australian Bar Association”. In relation to this last point, and to ensure that there is no such confusion, I have had the following Disclaimer added to the front page of the website, to read (in bold print):
This website and the information it contains does not have “the support, affiliation, approval or sponsorship of the Australian Bar Association”.
Yours sincerely
Derek Minus[original emphasis]
Mr Wayne Covell, a solicitor and trade mark attorney carrying on practice under the name “Worthy of the Name” sent a letter to Mr Minus dated 7 June 2013. In that letter, Mr Covell referred to the letter of 15 May 2013 from Mr Minus, the ABA’s letter in response of 23 May 2013 and the letter from Mr Minus in reply of 30 May 2013. Mr Covell said that his firm had been instructed to act on behalf of the Australian Bar Association in relation to the matters raised by the correspondence. The letter sets out information in relation to the ABA. It addresses the contended conduct of Chambers and Mr Minus. The letter seeks undertakings that the domain name ˂austbar.com.au˃ located at the URL ˂ be transferred to the Australian Bar Association; that Chambers and Mr Minus cease using AUSTBAR (or any substantially identical or deceptively similar name); and that Chambers and Mr Minus cease linking any website under their control to the ABA website and cease using the ABA logo or any logo substantially identical with or deceptively similar to the ABA logo.
The letter, across 10 pages, sets out the relevant matters of complaint. The letter also seeks to address the particular point of distinction made at point 2 by Mr Minus in his letter dated 30 May 2013 to the effect that the website address for Chambers ˂ “is located in a totally different gTLD from that of your Association, namely, ‘.com’”. The reference “gTLD” is an acronym for the phrase “generic top level domain”. Mr Covell contended that although one domain name adopts use of “.com.au” and another adopts “asn.au”, both domain names contain the “au” suffix and both websites are aimed at, and concern, the Australian legal profession. The letter concluded by saying that in the absence of the undertakings being given, Mr Covell held instructions to commence proceedings against Chambers and Mr Minus.
Mr Minus responded to that letter on 11 June 2013. He asked Mr Covell to advise him of the “legal status” of “The Australian Bar Association”; whether it was a registered company; whether it was an incorporated association; and, if an unincorporated association, the names of the individuals who had authorised the threatened action to be taken in the absence of undertakings. He also asked:
Is it an entity of some form, operating under a Registered Business Name? If so, in which State was the name first registered, the Date of that registration and the National Business Names Registration number?
[emphasis added]
Mr Minus also asked whether the name “Australian Bar Association” was a registered trade mark and, if so, what was the date of registration and the registered number of the trade mark.
As to the “ABA logo device”, Mr Minus asked Mr Covell to identify the legal or beneficial owner of the device, when and where it was first used, whether it was a registered trade mark and, if so, the registered number and the applicant for registration. Mr Covell responded on 12 June 2013 and advised Mr Minus that the ABA is an unincorporated association governed by a Council which had approved the actions foreshadowed in the letter of 7 June 2013. Mr Covell otherwise responded to the letter from Mr Minus.
Mr Minus responded on 12 June 2013 and requested Mr Covell to please provide him with a copy of the written minute of the Council confirming the passing of a motion to instruct Mr Covell to issue demands upon Mr Minus of Chambers and a request for undertakings.
Mr Minus also asked to be told such things as the date and time of the meeting, where it was held, the members of Council present, the identity of each person present and their role, the proposer of the motion, the seconder and who voted for and against the motion.
On 14 June 2013, Chambers registered the business name Australian Bar Association under the provisions of the BNR Act.
At that date, Mr Minus was the sole director of Chambers.
Mr Covell sent a further letter to Mr Minus dated 26 June 2013.
In that letter, Mr Covell referred to “previous correspondence concerning the above matter” and observed that “[o]ur client notes that following our 7 June 2013 letter”, Chambers had applied to the Australian Securities and Investments Commission (“ASIC”) on 14 June 2013 to register the business name Australian Bar Association. Mr Covell observed, among other things, that it appeared to be the case that the step of registering the business name was undertaken either because Mr Minus and/or Chambers intended to carry on a business under that name or Mr Minus and Chambers intended to “block [the ABA’s] registration” of the business name Australian Bar Association, or both. Mr Covell asserted that the ABA would seek urgent relief about that matter but in the interests of resolving the dispute, the ABA would participate in a mediation with Mr Minus.
Mr Minus responded to that letter by letter dated 3 July 2013.
In that letter, his first point was that Mr Covell, in the 26 June 2013 letter, had made a reference to “our client” but had “failed to identify” to whom he was referring. In the sequence of correspondence, of course, Mr Covell had made it plain from 7 June 2013 that he was acting for the Australian Bar Association and by the letter of 12 June 2013 he had made it plain that that body was an unincorporated association. Mr Minus could not have been in any serious doubt about the party for whom Mr Covell was acting in this sequence of correspondence.
The second point made by Mr Minus was that the “unincorporated entity trading as the Australian Bar Association” did “not have the legal capacity to instruct [Mr Covell]”. Mr Minus then responded to a range of matters set out in Mr Covell’s letter of 7 June 2013 on behalf of the Australian Bar Association. In the letter, Mr Minus develops 16 points in answer to Mr Covell’s letter of 7 June 2013. One aspect, of note, about the letter from Mr Minus of 3 July 2013 is that he is entirely silent about the complaint made in the letter of 26 June 2013 concerning the registration by Chambers (by reason of decisions made by Mr Minus) of the business name, Australian Bar Association. The letter from Mr Minus of 3 July 2013 seeks to comprehensively respond, across four pages, to the matters of complaint made by Mr Covell on behalf of the ABA in the letter of 7 June 2013. It is odd that Mr Minus did not take the opportunity to say something about the registration of the business name Australian Bar Association in the name of Chambers on 14 June 2013.
As earlier mentioned, Chambers renewed the registration of that business name on 14 June 2015 and ultimately abandoned it on 1 November 2015.
The registration of the business name Australian Bar Association by Chambers by reason of the conduct of Mr Minus in electing to do so is inherently odd. Plainly enough, neither Mr Minus nor Chambers nor any entity controlled by Mr Minus enjoyed any standing whatsoever to register the business name Australian Bar Association for the purpose of carrying on a business or providing services under that name or for any other purpose.
In the course of a case management hearing on 18 December 2015, I sought to explore with Mr Minus the position in relation to the registration of that business name. Mr Minus accepted that the business name Australian Bar Association had been registered by Chambers and had been abandoned by it in November 2015. Mr Minus observed that “there is no evidence it was ever used apart from being registered”: T, p 23, ln 21. The Court asked Mr Minus: “Why was it registered? What was the point of registration of it?”: T, p 23, ln 23. Mr Minus said that Chambers had received a letter of demand from the Australian Bar Association in May 2013 requiring it to “divest itself”, “sign undertakings”, pass over its intellectual property to the ABA and to “take down” the website. That was undoubtedly a reference to Mr Colbran QC’s letter of 23 May 2013 seeking confirmation within seven days that Mr Minus would discontinue using the contended misleading logo, cancel the domain name ˂ and refrain from making representations that suggested that he had the support, affiliation, approval or sponsorship of the ABA. Mr Minus said this at T, p 23, lns 30‑34:
On examination of the register held by ASIC, the respondents were unable to identify what type of entity the ABA actually was, and what type of status it had, because we’re not able to find any instance of Australian Bar Association that was registered as a business name or had any existence.
In response, the Court said this, relevantly, at T, p 23, lns 36‑41:
But that entity, Australasian Barrister Chambers Pty Limited, must, – one imagines it must have realised that there was a term, Australian Bar Association, used in the relevant markets over a long period of time, which would have been, presumably, a name associated with someone. … What was the point of it, registering Australian Bar Association when it did so?
Mr Minus responded at T, p 23, ln 43:
To protect the interests of Australian barristers.
The following exchange occurred at T, p 24, lns 1‑47:
Mr Minus:Here was an entity claiming to be an incorporated entity and threatening to undertake legal action when, in fact, it was no such thing.
It’s committee were barristers, senior barristers, senior counsel, from every [S]tate in Australia who apparently had instructed a firm of lawyers, who send a letter threatening that the ABA would undertake litigation when it was an unincorporated [body] who had no right to undertake such litigation, was unregistered and unincorporated.
The Court:Well, putting to one side for the moment the proposition that there may have been some apprehension about what was the status of the applicant asserting rights about that topic, your point is that Australasian – so the first respondent secured registration of the business name on the footing that it was acting protectively of Australian barristers.
Mr Minus:Most certainly, your Honour … This was an organisation owned by barristers who were seeking to support barristers in Australia by providing them with other opportunities for promoting themselves, particularly on a national basis.
The Court:But what was the basis upon which the first respondent sought to propound the proposition that it could carry on a business, which is the nature of a business name – carry on a business under the name of Australian Bar Association?
Mr Minus:It never proposed to carry on a business under that basis, your Honour … and has never carried on a business on that basis.
The Court:Yes. But its registration was just protective.
Mr Minus:Most certainly.
The Court:And so in November, I think of 2015 it … relinquished that business name?
Mr Minus:Well, didn’t renew it.
[emphasis added]
As to the trade marks, Mr Minus observed that the respondents collectively had never challenged the Australian Bar Association as to its rights to register the trade marks and no opposition had been made to those trade marks, that is to say, the registered trade marks. This exchange occurred at T, p 31, lns 28‑42:
Mr Minus:It [the respondents] recognised the long history of the ABA using its symbol and the letters stamped on it and also the name Australian Bar Association.
The Court:Now, you’re talking about the unincorporated body now?
Mr Minus:Yes.
The Court:Yes.
Mr Minus:It [Chambers] has never sought to use that name. And although it registered it for the protection of that name, it has never, ever propounded that it was the ABA or thought to be the ABA and never opposed the registration of those trade marks. …
[emphasis added]
Mr Minus made an enquiry of Mr Covell on 11 June 2013 expressly on the question of whether the Australian Bar Association was operating under a registered business name and by 14 June 2013, Mr Minus had caused Chambers to register the business name Australian Bar Association. Apart from the oddity that Mr Minus had no standing to register such a business name, he took no step to volunteer the transfer of the registered business name to such person or persons as the Australian Bar Association, by its AB Council, might direct. Nor did he cause it to be transferred consequent upon demands made upon him by the solicitors appointed by the ABA to address that very question. Moreover, the questions asked of Mr Covell by Mr Minus described at [88] and [94] of these reasons seem to be matters of obfuscation rather than legitimate forensic inquiries by a person the subject of the letters of Mr Covell in question.
Mr Minus was asked some questions about these things in cross‑examination.
In his affidavit sworn 16 October 2015, Mr Minus says at para 9 that he is aware that under the BNR Act “an organisation that operates under a business name that is not its corporate registered name is required to register the business name under which it operates”. Mr Minus understood that if Chambers proposed to operate under a different name, such as Australian Bar Association, it would need to register that business name: T, p 186, lns 29‑33. Mr Minus accepted that he had secured the registration of the business name Australian Bar Association for Chambers: T, p 185, lns 45‑46. He said that he secured it “on behalf of all barristers in Australia”: T, p 186, lns 1‑2. He did not accept that by making the application he had represented that Chambers was proposing to carry on business under that name (T, p 186, lns 38‑40) because “it was not the intention of the company to operate under that name”: T, p 186, lns 42‑44.
When he was asked which company was going to operate under the business name, he said: “My assumption was that barristers of Australia who had some incorporated entity would want to use that name”: T, p 187, lns 1‑3. The time at which Mr Minus apparently held that assumption was 14 June 2013: T, p 187, ln 3. Mr Minus said that the registration on that date was “directly referable to” the “string of correspondence” earlier described (that is, Mr Covell’s letter of 7 June 2013; the response of 11 June 2013 by Mr Minus; and Mr Covell’s letter in reply of 12 June 2013): T, p 187, lns 5‑7; lns 21‑36.
Mr Minus said that once he understood that the ABA was an unincorporated association (by reason of Mr Covell’s letter of 12 June 2013), he also understood that the Australian Bar Association was “an unregistered association, and that the registration should be secured” and “I therefore secured the registration of that name on 14 June, two days later”: T, p 187, lns 39‑41.
Mr Minus was then taken to Regulatory Guide 235: Registering your business name (which is a document at Tab 8 to the affidavit of Mr Minus sworn 16 October 2015). That document says this at p 9:
When must your business name be registered?
Key points
If you wish to carry on a business under a business name, you must register your business name with us, unless one of the exemptions in the Business Names Registration Act applies (e.g. if your business name is exactly the same name as your registered company name).
Thus, Mr Macaw QC, for the applicants, put to Mr Minus that he therefore understood that by registering the business name he was “signifying to the Registrar that [the entity Chambers] was proposing to carry on business under the name Australian Bar Association”: T, p 188, lns 6‑9. He said, in response, “no” and added that he understood that one company might register a name and a later company might use it: T, p 188, lns 14‑15.
When then asked who Mr Minus had in mind as the entity that would use the business name Australian Bar Association he said: “Well, after doing the research it seemed to me that the barristers of Australia were entitled to that name” (T, p 188, lns 17‑19) and because the ABA had no members who were barristers and was simply a collection of unincorporated Bar Associations, the “Australian barristers” ought to have the name: T, p 188, lns 23‑24. Notwithstanding that premise, Mr Minus had earlier put to Mr Selth in cross‑examination of him that ABAU had approximately 5,600 members although that proposition seems to have been put to Mr Selth for the purpose of establishing the contended numbers of members (actually 6,000 members) “not their status”: T, p 188, lns 28‑30.
Mr Minus accepted that he did not “explain on the form lodged with the Registrar that [Chambers] was not itself proposing to carry on business under that name, but instead [Mr Minus] expected that barristers Australia‑wide would be doing so”: T, p 188, lns 45‑46; T, p 189, lns 1‑2; lns 15‑16.
This exchange then occurred at T, p 189, lns 26‑35; T, p 190, lns 2‑10:
Mr Macaw: Yes?
Mr Minus:So the name being registered was a name that would be available to Australian Barristers to utilise?
Mr Macaw:Why on earth, was my question, would an Australian Barrister want to utilise the name Australian Bar Association? An individual Barrister is not an association?
Mr Minus:No, because there should be an association of Australian Barristers. There should be an association. My view was that the ABA purported to be an association of Australian Barristers but, in fact, was not. The name that was being utilised by the ABA was unregistered and should have been available to Australian Barristers for an association.
…
… You’re asking me why would a Barrister want to carry on business? But an association of Barristers would, I believe, need to have a registered name. And to register the name you have to fill out this form.
Mr Macaw: Yes.
Mr Minus: It should have a registered name.
Mr Macaw:You accept by that answer that an individual Australian Barrister would not want to operate under the name Australian Bar Association. But an association of such Barristers might?
Mr Minus:Yes.
[emphasis added]
This exchange then followed at T, p 190, lns 12‑45; T p 191, lns 1‑17:
Mr Macaw:Thank you. Well, what was the association that you had in mind you were protecting?
Mr Minus:The association of all Barristers in Australia who were – who believed they were members of the ABA and whom the ABA purported to include as their members but didn’t.
Mr Macaw:So may we take it that you immediately wrote off to the ABA and said: “I’ve discovered that you don’t exist. I’m concerned about the protection of your members and the name Australian Bar Association. So here is what I’ve done for their protection”?
Mr Minus:I didn’t, no.
Mr Macaw:Why not?
Mr Minus:Well, at that point they were suing me and, as Mr Selth explained in his evidence, he didn’t feel that it was necessary to phone or contact me. And I understood that they wished to proceed to the resolution through various means which did not involve discussions. And the point we were at at that stage was that they were threatening litigation.
Mr Macaw:This is 14 June 2013?
Mr Minus:Yes.
Mr Macaw:You weren’t being sued. There were threats, weren’t there, that unless you made certain concessions and removed certain references they would sue you?
Mr Minus:That’s correct.
Mr Macaw:Yes. Well I don’t understand, Mr Minus, and perhaps you could explain, why, if your true purpose was to protect the association of Barristers in Australia, which you say the Australian Bar Association did not adequately protect, you would not tell that association of what you had done?
Mr Minus:Because it was the council of that association who had determined that they would take litigation against me. And as there was no channel of communication in the sense of an opportunity to discuss my view about their actions, I didn’t see there was any point. … It was certainly something that I would have liked to have discussed with Australian Barristers.
Mr Macaw:You had been writing letters, Mr Minus. Why was that not an available channel of communication at this point?
Mr Minus:… There was no – I believe no opportunity to engage in a discussion, meaningful discussion, with them at that time.
Mr Macaw:Did you communicate with anybody else that you had registered this name in effect for the protection of the association of Australian Barristers for which the Australian Bar Association did not provide adequate protection?
Mr Minus:I don’t believe so, no.
Mr Macaw:Why not?
Mr Minus:I wasn’t involved in discussions at that time with anyone that I would be advising of that.
Mr Macaw:Mr Minus, I suggest that you’ve just made this up. You had no such protective purpose at all?
Mr Minus:I disagree with that. I did.
Mr Macaw:If you had such a purpose, why on earth would you not communicate it first to the Registrar and second to the Australian Bar Association, and perhaps third to Australian Barristers whose protection was not assured by the Australian Bar Association?
Mr Minus:In turn, (1) I’m not certain but I don’t believe the electronic form provides that sort of mechanism. (2) The ABA engaged solicitors who had written to me in terms of specifically, all communication is to be with us and you are not to deal directly with the Bar Association. None of the people at the Bar Association council, despite the fact of my membership both of the New South Wales Bar and of the Australian Bar Association for over 20 years, were interested apparently in having a discussion with me. … Thirdly, your third point is why didn’t I communicate it to other barristers? I have, I believe, done so at a later time. I did not have the wherewithal at that time to communicate with 6,000 Barristers and I was, at that time, dealing with proposed litigation by the Australian Bar Association.
[emphasis added]
Mr Minus was then taken to the exchange between the Court and Mr Minus on 18 December 2015 already described in these reasons at [98] to [102]. This exchange then occurred at T, p 193, lns 18‑47; T, p 194, lns 1‑24:
Mr Macaw:Now, Mr Minus, do you accept that this was the first time this proposition was put that those [circumstances described in the exchange with the Court on 18 December 2015] were the circumstances in which the registration was obtained and that was the purpose for which it was obtained? That’s to say, it had not been disclosed in correspondence and it had not been disclosed in any of your affidavits.
Mr Minus:Yes.
Mr Macaw:Why was it not disclosed in the affidavit?
Mr Minus:I didn’t think it was relevant because it has never been used.
Mr Macaw:Mr Minus, you realised, didn’t you, that the proposition was being put that the registration signified a proposal to use the name “Australian Bar Association” and on that basis there was at least a threat to infringe the registered trade mark and to carry on activities in contravention of the Australian [C]onsumer [L]aw?
Mr Minus:There was no registered mark at the time.
Mr Macaw:Mr Minus, at the time you made your affidavits, you knew there was a registered mark, didn’t you?
Mr Minus:Yes.
Mr Macaw:And so your affidavits were directed, weren’t they, amongst other things to deal with the allegation that you or your company which you controlled had signified a proposal to carry on business under the name “Australian Bar Association”? Why, in those circumstances, did you not deal with what you now say is the true purpose of the application?
Mr Minus:I believe, in making those affidavits, it was sufficient to simply point out that over a period of two years, those names have never been used. If they had been used [in some manner], [then] I think an explanation would have been called for how it came about that these were registered and what was the intent of that use. But I didn’t think it was even necessary to deal with that. The fact is from the date of registration, the – neither myself nor the company that registered them had any intention to utilise that name whatsoever except to pass it on to an entity that – of barristers who may come together to be the real Australian Bar Association of barristers.
Mr Macaw:And how did you envisage that association might be formed and that transfer might be achieved?
Mr Minus:At – which time? At the time I registered it?
Mr Macaw:Yes.
Mr Minus:Vaguely.
Mr Macaw:Well at that time, as I apprehend your evidence, this was your purpose was it not?
Mr Minus:It was but you asked me how I envisaged it and it was vaguely. I could see that there was a need for barristers to be represented by a national organisation. I could see from looking at the ABA as it existed that that was not the organisation. It is a secretive organisation that collects money from barristers, doesn’t disclose how it spends it, is not guided by the – the membership generally although the Constitution of the ABA states that its members are those barristers. I thought it was a fraud.
Mr Macaw:Do you mean by that answer, that you had in mind to put together a competing association which would truly protect Australian barristers – [w]hich the Australian Bar Association did not?
Mr Minus:I don’t believe it would be competing because I don’t believe there was an organisation of Australian barristers other than one … that the ABA define[s] for themselves. I don’t believe that organisation actually exists.
[emphasis added]
The conclusions that arise out of all of these events are these.
I accept the evidence of Mr Selth and Mr Christopher. I find as facts those matters of fact described at [255] to [296]. At [297] to [328], I note matters of evidence given by Mr Minus in relation to all of the issues in controversy. I also find, as facts, those matters of fact which became uncontroversial as a result of the acceptance by Mr Minus of matters put to him in cross‑examination.
Although Mr Minus has offered an explanation of his thinking on 20 December 2010 and the factors influencing his mind on 22 December 2010 when he added the new category “BarADR” to the Dispute Resolvers website and he has also offered an explanation of his thinking, later in time, when on 18 March 2011, two days after the NSWBA launch of its new “BarADR service” and its new “BarADR kit”, he registered the domain name, those explanations are ultimately not an answer to the central difficulty confronting use of the sign, name or mark “BarADR”.
It is, of course, true that when the name was announced as a result of the competition and when the launch of the new BarADR service and new BarADR kit occurred on 16 March 2011, no application had been made for any form of intellectual property protection for the name which had been chosen as the badge of origin for the new service of the NSWBA. It was the first user of that name, sign or mark as a badge of origin of its new service. The NSWBA made great moment of its new service and the new name for its new service and launched the new service, the new name and the new kits at a major public function attended by 80 people. The new service, the new name for the service and the new kits were launched by the Hon Chief Justice Spigelman AC, Chief Justice of the New South Wales Supreme Court. Nobody attending the function or reading the online messages of the NSWBA could have been in any doubt at all that the NSWBA was putting a stake in the ground and asserting a new name by which its new service would be promoted and would become, over time, known. The application for the registration of the trade mark BARADR was ultimately filed on 23 June 2013.
An individual barrister accredited by the NSWBA as a mediator, arbitrator or expert determiner (or all three) would undoubtedly wish to promote his or her accreditation with a view to attracting the engagement of those persons who would be likely to retain a barrister in the various ways that that is now done in those areas. An individual barrister carrying on practice in these areas of accreditation might describe themselves as a member of the ADR Bar or a member of the Bar practising in ADR. Such a barrister would have no reason to describe their individual services as “BarADR”.
In the case of Mr Minus, he chose to register a domain name within two days of the launch of the NSWBA’s new BarADR service. He says that he regarded himself as free to do that because the name, mark or sign had no claim to protection and no protection otherwise. He says that he thought he was free to use the term “BarADR” because he was a member of the NSWBA accredited to practice in the relevant areas. Nevertheless, there can be no doubt that he had no standing to appropriate or seek to appropriate to himself and companies he controlled and operated, the name “BarADR” or a domain name adopting the very name selected by the NSWBA for its own service. Mr Minus would have no reason to call his own individual services “BarADR”. Further, there was no proper basis upon which Mr Minus could commence using the sign “BarADR” as a badge of origin of “services” provided by entities controlled or influenced by him.
As to the question of “services offered or promoted” or those attributes which the various entities offered or promoted, it is clear that “services” or “offerings” were being “promoted” by means of Annexure D, by DRA, and by the email to Dr Keogh of 22 December 2010, also by DRA (in circumstances where Mr Minus knew that that was the kind of service the NSWBA was intending to provide by reference to its new “BarADR” name): see [302] and [303] of these reasons. See also the Barristers’ Classifieds advertisement by the entity Chambers and the evidence at [308]. Also, Mr Minus regarded the operation of ˂ website as proprietary and conferring proprietary entitlements because “it’s my website”: [312]. The evidence discussed at [311] to [318] makes it plain that services of the kind described were being provided. As to the website ˂ registered by Mr Minus, that too was promoting, amongst other things, lists of people able to supply ADR services and promoting the desirability of the provision of such services: see [332]. “Virtual chambers” services were being provided by the entity Chambers as described in the document attached to the email of 28 June 2012. Services as described on the respondents’ “AUSTBAR ADR” website (at AJC‑2, Tabs 15 and 16); [327] to [330]) were also being provided. As to these matters, I so find.
From 2015 the particular mark “BarADR” was used as an internet address for the purpose of directing users to the “AustBar ADR” website operated by the entity, Chambers, as a virtual chambers for barristers practising in ADR.
Clearly enough, Chambers has used the sign or mark “BarADR” as a trade mark or badge of origin to indicate a connection in the course of trade between Chambers and Mr Minus and the services supplied through the “BarADR” website of the respondents and, later in time, the ˂ website.
Undertaking the orthodoxy of the side by side comparison required by Shell Co of Australia Ltd v Esso Standard Oil (Australia) (1963) 109 CLR 407 at 414, makes plain that “BarADR” is “substantially identical with” “BARADR” for the purposes of s 120(1) of the TM Act.
There is a slight difference between the two marks. The mark “BarADR” as used by the respondents is a mark which is also “deceptively similar to” the registered trade mark “BARADR”, for the purposes of s 120(1) of the TM Act, because the selected mark used by the respondents so nearly resembles the trade mark that it is likely to deceive or cause confusion. It is likely to do so because persons engaging with the selected mark and website services (that is, potential users of the services of the respondents and/or the services of the NSWBA including members of the public to whom the services of the NSWBA are, among others, directed by the use of the registered trade mark) are likely to be confused about the source of the services provided under the mark “BarADR” used by the respondents for their services which are also directed to members of the public on their “BarADR website”, or their “AustBar website”, by leading users to believe that the services are those of the NSWBA or services connected or associated with the NSWBA. The conduct of the respondents is also likely to cause confusion by leaving persons engaging with the “BarADR website” of the respondents in a positon where they are caused to wonder as to the source or origin of the services.
I am also satisfied that the use, by the respondents, is use of their mark in connection with services for which the trade mark is registered: electronic publications (Classes 9 and 41); directories (Class 16); indexes of online information (Class 42); legal mediation services (Class 45).
Apart from these considerations, the applicant contends that the respondents have engaged in conduct in contravention of ss 18, 29(1)(g) and 29(1)(h) of the ACL.
The central elements of the contended misleading and deceptive conduct are that two days after the launch of the NSWBA’s new BarADR service, its new name and its new BarADR kits, Mr Minus caused a domain name to be registered ˂ The respondents did not populate the website for some time but nevertheless registered the domain name and preserved ownership of the website for later use. As to use of the website, the website was used by the respondents in the way already described in these reasons and the subject of the findings. Ultimately, the website and domain name ˂ was used to direct traffic, from at least 17 April 2015, to another website ˂ operated by the entity, Chambers.
These websites operated by the respondents were directed, amongst others, to members of the public. The observations I have made already about the relevant cohorts equally apply to an understanding of the cohorts engaging with these websites of the respondents. I am satisfied that ordinary, reasonable, fair‑minded members of the class of consumers seeking to engage with the websites of the respondents to seek out information about barristers, their skills, experience and relevance to a controversy in which the citizen might be engaged which might call for ADR services, or potentially lawyers in particular areas of legal practice not used to engaging counsel for clients in mediations or arbitrations, or related professionals seeking out the possibility of acquiring the ADR services of a barrister, are likely to be led to believe that there is an association or affiliation between the respondents BarADR site, its AustBar ADR site, Chambers and the NSWBA
Alternatively, there is a likelihood that such users will be led to believe that the sites and Chambers have the licence, consent, approval or authority of the NSWBA.
There is, of course, no such licence, consent, approval or authority.
I am also satisfied that, for the purposes of s 29(1)(g) and s 29(1)(h), the same conduct suggests a representation that the “BarADR” site and the “AustBar ADR” site of the respondents, its operator Chambers, and the services promoted through those sites are : first, activities supported by the NSWBA; second, Chambers is an operator supported by the NSWBA; third, those sites are connected with, supported and sponsored by, the NSWBA as sites and activities which have the consent, approval or licence of the NSWBA.
There is very little doubt on the evidence that the step taken by Mr Minus to register and preserve, for himself and his entities’ use, the name “BarADR” through the vehicle of the website ˂ coupled with use of the mark on the website, so quickly after the launch of the BarADR services under that name on 16 March 2011 was, in practical operation and effect, an appropriation by Mr Minus to his own use of “BarADR” recognising that that name or mark would be likely to grow in prominence and reputation as the NSWBA went about the activity of promoting its services under that name. This is not to say that I reject the evidence of Mr Minus that he also believed that the NSWBA had failed to “appropriate” the mark to itself, properly or at all, and it is not to say that I reject the evidence of Mr Minus that he believed as an ADR practitioner and a member of the NSWBA that he could use the term “BarADR” without the need for some form of formal authority from the NSWBA. Nevertheless, the effect of the conduct was, in its practical operation, an appropriation of the sign or mark for his own purposes which, plainly enough, was a sign or mark that the NSWBA had, after some real effort, selected for its new re‑launched service.
For all the reasons indicated earlier, I am satisfied that Mr Minus was intimately knowledgeable of all of the facts and circumstances relevant to the conduct in issue and I am satisfied that he is a joint tortfeasor in the conduct and is knowingly concerned in all of the relevant conduct.
I propose to make declarations and other orders as sought by the NSWBA. I will direct the NSWBA to submit proposed draft orders.
As to the costs of each proceeding, the applicants in the ABA proceedings (without seeking to definitively restate the precise detail of the matters) have been successful but for an issue in relation to the name Australasian Barrister Chambers and the related issue of the scales of justice connected with that name. The applicants have been successful in their contentions in relation to use of the name Australian Bar Association, Australian Barristers Association, AustBar, electronic use of austbar and ausbaradr, among other issues. The NSWBA has been successful in its proceeding. In principle, the applicants in the ABA proceeding are entitled to their costs of and incidental to the proceeding and in principle, the NSWBA is entitled to the costs of and incidental to its proceeding. However, I will entertain submissions on the question of costs.
For present purposes, directions will be made that the applicants in the ABA proceedings submit proposed orders within two weeks and that the NSWBA in its proceedings submit proposed orders within two weeks. The parties will be directed to file and serve submissions on the question of costs within three weeks.
I certify that the preceding three hundred and sixty (360) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate:
Dated: 8 June 2017
SCHEDULE “A”
Australian trade mark registration 1587902
AUSTRALIAN BAR ASSOCIATION
Goods & Services
Class 9: Education software; Films bearing recorded educational material; Interactive education software; Magazines downloaded via the internet; Directories (electric or electronic); Computer programs for planning conferences; Computer programs (downloadable software); Downloadable image files; Downloadable webcasts; Electronic publications (downloadable); Pre‑recorded audio discs; Pre‑recorded discs; Pre‑recorded films; Recordings of television programmes; Training materials (apparatus); Electronic and recorded multimedia publications, Carrying cases adapted for electronic media; Computer software; Holograms; Electronic diaries; Computer databases; Data compilations; Telecommunications apparatus; Apparatus for electronic publishing
Class 16: Diaries (printed matter); Directors (printed matter); Printed matter; Books; Educational materials in written form; Magazines (periodicals); Newsletters; Books for celebrating important events; Membership certificates; Journals; Holograms (decals); Printed holograms; Decalcomanias
Class 35: Association services being the promotion of the interests of members of the association; Association services being the provision of business support or advice; Career information and advisory services (other than educational and training advice); Compilation of directories for publishing on the internet; Compilation and provision of online directories; Compilation of business directories; Online promotion on a computer network; Market research; Sponsorship (promotion and marketing services); Marketing; Advertising; Compilation of information into computer databases; Vocational guidance (employment advice and information); Lobbying (promoting, publicising or otherwise representing the interests or concerns of others); Charitable services, namely organising and conducting volunteer programmes and community service projects
Class 41: Association services being the provision of training and education to members of the association; Legal education services; Education services; Publication of magazines; Publishing of newsletters; Publishing services; Event management services (organisation of educational, entertainment, sporting or cultural events); Organisation of ceremonial events; Arranging and conducting of conferences; Conducting of educational conferences; Providing online electronic publications (not downloadable); Online (electronic) publication of news; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of education services via an online forum; Publication of electronic books and journals online; Publication of multimedia material online; Weblog (blog); services (online publication of journals or diaries); Arranging and conducting of lectures; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops (training); Conducting of conventions; Conducting of exhibitions for educational purposes; Conducting seminars; Mentoring (training); Multimedia production, other than for advertising purposes; Electronic publication of information on a wide range of topics, including online and over a global computer network; Career advisory services (education or training advice); Vocational guidance (education or training advice); Publication of journals; Charitable services, namely education and training
Class 45: Association services (providing legal representation or legal advice to members of the association); Compilation of legal information; Information services relating to legal matters; Legal advice; Legal advocacy services; Legal consultancy services; Legal enquiry services; Legal lobbying services; Legal mediation services; Legal research; Legal services; Legal support services; Providing information, including online, about legal services; Provision of judicial information; Barrister services; Alternative dispute resolution services; Dispute and conflict resolution (arbitration services); Mediation; Forensic advice for criminal investigations; Litigation advice; Lobbying services relating to legislation and regulation; Charitable services, namely mentoring (personal or spiritual); Certification (licensing) services
SCHEDULE “B”
Australian trade mark registration 1558252
Goods & Services
Class 9: Education software; Films bearing recorded educational material; Interactive education software; Magazines downloaded via the internet; Directories (electric or electronic); Computer programs for planning conferences; Computer programs (downloadable software); Downloadable image files; Downloadable webcasts; Electronic publications (downloadable); Pre‑recorded audio discs; Pre‑recorded discs; Pre‑recorded films; Recordings of television programmes; Training materials (apparatus); Electronic and recorded multimedia publications; Carrying cases adapted for electronic media; Computer software
Class 14: Key rings (trinkets or fobs); Key rings of precious metals; Tie clips; Tie pins; Trinkets (jewellery); Cufflinks; Jewellery; Watches; Horological articles; Presentation boxes for horological articles
Class 16: Directories (printed matter); Printed matter; Books; Educational materials in written form; Magazines (periodicals); Newsletters; Books for celebrating important events; Membership certificates; Journals
Class 25: Apparel (clothing, footwear, headgear); Ties (for wear); Scarves
Class 35: Association services being the promotion of the interests of members of the association; Association services being the provision of business support or advice; Career information and advisory services (other than educational and training advice); Compilation of directories for publishing on the Internet; Compilation and provision of online directories; Compilation of business directories; Online promotion on a computer network; Market research; Sponsorship (promotion and marketing services); Marketing; Advertising; Compilation of information into computer databases; Vocational guidance (employment advice and information)
Class 41: Association services being the provision of training and education to members of the association; Legal education services; Education services, Publication of magazines; Publishing of newsletters; Publishing services; Event management services (organisation of educational, entertainment, sporting or cultural events); Organisation of ceremonial events; Arranging and conducting of conferences; Conducting of educational conferences; Providing online electronic publications (not downloadable); Online (electronic) publication of news; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of education services via an online forum; Publication of electronic books and journals online; Publication of multimedia material online; Weblog (blog) services (online publication of journals or diaries); Arranging and conducting of lectures; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops (training); Conducting of conventions; Conducting of exhibitions for educational purposes; Conducting seminars; Mentoring (training); Multimedia production, other than for advertising purposes; Electronic publication of information on a wide range of topics, including online and over a global computer network; Career advisory services (education or training advice); Vocational guidance (education or training advice)
Class 45: Association services (providing legal representation or legal advice to members of the association); Compilation of legal information; Information services relating to legal matters; Legal advice; Legal advocacy services; Legal consultancy services; Legal enquiry services; Legal lobbying services; Legal mediation services; Legal research; Legal services; Legal support services; Providing information, including online, about legal services; Provision of judicial information; Barrister services; Alternative dispute resolution services; Dispute and conflict resolution (arbitration services); Mediation; Forensic advice for criminal investigations; Litigation advice
Date:
______________________________________
Signed by Andrew John Christopher
Lawyer for the ApplicantsSCHEDULE “C”
SCHEDULE OF PARTIES
NSD 975 of 2014 Respondents
Fourth Respondent:
AUSTBAR PTY LTD ACN 608 133 768
11
1
3