Shahin Enterprises Pty Ltd and Registrar of Trade Marks and Exxon Mobil Oil Corporation

CATCHWORDS – JURSIDICTION – TRADE MARKS

– refusal of Trade Marks Registrar to extend time for lodging evidence opposing registration – whether Tribunal has jurisdiction to review that decision – lodgment of evidence not relevant act – whether jurisdiction limited to decisions not to extend time for doing a relevant act – Tribunal has jurisdiction.

CATCHWORDS – PRACTICE AND PROCEDURE – whether “an act” should be read as “a relevant act” – ordinary meaning considered – whether Regulations may be used in interpreting words of the Act – extrinsic materials considered.

Trade Marks Act 1995 ss. 6, 7, 17, 18, 19, 21, 22, 26, 27, 28, 29, 30, 31, 32, 33, 34, 39, 40, 41, 42, 43, 44, 52, 54, 55, 57, 58, 59, 60, 61, 62, 105, 169, 174, 175, 178, 180, 180A, 191, 224, 226, 228A and 231
Trade Marks Regulations 1995 rr. 3.1, 4.12, 5.1, 5.2, 5.3, 5.4, 5.6, 5.7, 5.8, 5.9, 5.10, 5.11, 5.12, 5.13, 5.15 and 21.28
Administrative Decisions (Judicial Review) Act 1977

Acts Interpretation Act 1901 ss. 15A, 15AA(1) and 15AB
Trade Marks Bill 1995

Trade Marks Bill 1994
Trade Marks Act 1994

Trade Marks Act 1955
Administrative Appeals Tribunal Act 1975 ss. 25, 27 and 37

Re Application of the NEWS CORP LTD (1987) 15 FCR 227

Chugg v Pacific Dunlop Ltd (1990) 170 CLR 249

Parke Davis Pty Ltd v Sanofi (No. 2) (1982) 43 ALR 487
Intencity Pty Ltd and O’Mahoney (1997) 40 IPR 514
Cooper Brookes (Wollongong) Pty Ltd v Federal Commissioner of Taxation (1980-81) 147 CLR 297
Parrett v Secretary, Department of Family and Community Services [2002] FCA 716, (2002) 69 ALD 359
Blount v Registrar of Trade Marks (1998) 83 FCR 50
Registrar of Trade Marks v Woolworths Pty Ltd (1999) 93 FCR 365
Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45
Mills v Meeking (1989-90) 169 CLR 214
Executors of the Estate of the late Miss Santha Thevy Subrahmanyam and Commissioner of Taxation [2002] ATC 2303; (2002) 51 ATR 1173; [2002] AATA 1298
Commissioner of Taxation v Murray (1990) 21 FCR 436
R v Bolton; Ex parte Beane (1987) 70 ALR 225
Hunter Resources Ltd v Melville (1988) 77 ALR 8
Secretary, Department of Health, Housing, Local Government and Community Services v Kaderbhai (1994) 122 ALR 577
Webster v McIntosh (1980) 32 ALR 603
Hanlon v Law Society [1981] AC 124

Elazac Pty Ltd v Commissioner of Patents (1994) 125 ALR 663

DECISION AND REASONS FOR DECISION [2003] AATA 765

ADMINISTRATIVE APPEALS TRIBUNAL     )
  )          V2002/410
GENERAL ADMINISTRATIVE DIVISION     )

Re Shahin Enterprises Pty Ltd

Applicant

And Registrar of Trade Marks

Respondent

And ExxonMobil Oil Corporation

Party Joined

DECISION

Tribunal:                   Deputy President S A Forgie
Date:  7 August, 2003
Place:  Melbourne

Decision:The Tribunal has jurisdiction to review the Registrar’s decision dated 25 March, 2002.

S A FORGIE
Deputy President

ADMINISTRATIVE APPEALS TRIBUNAL )

) V2002/410

GENERAL ADMINISTRATIVE DIVISION )

Re Shahin Enterprises Pty Ltd

Applicant

And Registrar of Trade Marks

Respondent

And ExxonMobil Oil Corporation

Party Joined

Tribunal: Deputy President S A Forgie

Place: Melbourne

Date: 17 September, 2003

CORRIGENDUM TO DECISION [2003] AATA 765

The Tribunal amends its reasons for decision published on 7 August, 2003 as follows:

Reasons for decision

page 3, paragraph 2, line 4
delete the sentence “The documents required to be lodged in the Tribunal pursuant to s. 37 of the Administrative Appeals Tribunal Act 1975 (“AAT Act”) have not been prepared or lodged pending the outcome of whether the Tribunal has jurisdiction”.
page 3, paragraph 2, line 7
after the words “Materials before the Tribunal include” insert “the documents lodged in the Tribunal pursuant to s. 37 of the Administrative Appeals Tribunal Act 1975 (“AAT Act”),”

(signed S A Forgie)

S A FORGIE
Deputy President

REASONS FOR DECISION

On 22 April, 2002, the applicant, Shahin Enterprises Pty Ltd (“Shahin Enterprises”), applied for review of a decision of a delegate of the respondent, the Registrar of Trade Marks (“Registrar”), dated 25 March, 2002. The decision declined Shahin Enterprises an extension of time, of three months, within which it could serve evidence in support of its opposition to the registration of a trade mark applied for by ExxonMobil Oil Corporation (“ExxonMobil”). On 13 June, 2002 the Tribunal ordered with the consent of the parties that ExxonMobil be joined as a party to the application.

A hearing was held to consider whether the Tribunal has jurisdiction to review the Registrar’s decision. At the hearing, Shahin Enterprises was represented by Mr Caine of counsel, the Registrar by his solicitor, Mr Linden and ExxonMobil by Ms Strong of counsel. The documents required to be lodged in the Tribunal pursuant to s. 37 of the Administrative Appeals Tribunal Act 1975 (“AAT Act”) have not been prepared or lodged pending the outcome of whether the Tribunal has jurisdiction. Materials before the Tribunal include a written submission from Shahin Enterprises dated 22 July, 2002, a written submission from the first respondent, Registrar of Trade Marks, dated 12 August, 2002, a written submission from the second respondent, ExxonMobil, dated 12 August and the applicant’s submissions in reply dated 23 August, 2002.

THE ISSUE

The issue is whether the Tribunal has jurisdiction to review the Registrar’s decision to refuse to extend the three month time period within which Shahin Enterprises could serve evidence in support of its opposition to the registration of a trade mark applied for by ExxonMobil Oil Corporation (“ExxonMobil”). This requires a consideration of s. 224(7) of the Trade Marks Act 1995 (“Act”) and r. 5.15 of the Trade Marks Regulations 1995 (“Regulations”).

LEGISLATIVE BACKGROUND

A “trade mark” is defined in the Act as a:

“… sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.” (s. 17)

A “sign” is defined to include “the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent” (s. 6).

The Act regulates trade marks. So, for example, it regulates the use of certain signs as a trade mark or part of a trade mark (s. 18) and provides for the registration of trade marks in respect of goods, services or both goods and services as well as in respect of goods and/or services of more than one class (s. 19). The Regulations provide for the classes into which goods and services may be divided for the purposes of the Act (s. 19(3)). They are set out in Schedule 1 of the Regulations (r. 3.1) and are amended from time to time to reflect the International (Nice) Classification of Goods and Services published by the World Intellectual Property Organisation.

Although there is no compulsion to register a trade mark, once it has been registered, certain consequences follow. Within the limits of Part 3 of the Act, for example, the registered owner of a trade mark has exclusive rights to use it and to authorise others to use it in relation to goods and/or services in relation to which it is registered. A registered trade mark is personal property (s. 21(1)) and its registered owner may, subject only to the rights vested in another person, deal with it as its absolute owner and give in good faith discharges for any consideration for that dealing (s. 22(1)). The registered owner of a trade mark or an authorised user of that trade mark is given not only power to use the trade mark in relation to the goods and/or services in relation to which it is registered and subject to any condition or limitation subject to which it is registered, but may bring an action in respect of any infringement of it and may give the Chief Executive Officer of Customs a notice objecting to the importation of goods that infringe it (s. 26).

Pursuant to s. 27 of the Act, a person may apply for the registration of a trade mark in respect of goods/and or services. He or she may do so if claiming to be the owner of the trade mark and one of the following applies:

“(b) one of the following applies:
(i)the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii)the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii)the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.”

What is meant by the expression “use of a trade mark” either alone or in combination with the words “in relation to goods” or “in relation to services” is set out in s. 7 (s. 6).

The application must include a representation of the trade mark and the goods and/or services in respect of which it is sought to register it (s. 27(3)). It must be in accordance with the Regulations and must be filed with any prescribed document in accordance with those Regulations (s. 27(2)). Particular provision is made in the Act for an application by joint owners (s. 28) and for an application in respect of a trade mark whose registration has already been sought in a Convention country (s. 29).

On receiving an application, the Registrar must publish its particulars in accordance with the Regulations (s. 30). Again in accordance with the Regulations, he must examine and report on whether the application has been made in accordance with the Act and whether there are grounds under Division 2 of Part 4 of the Act for rejecting it (s. 31). If relevant to do so, the Registrar is to decide the class in which goods or services are comprised (s. 32(1)). After examining the application, the Registrar must accept the application unless he or she is satisfied that it has not been made in accordance with the Act or there are grounds for rejecting it (s. 33(1)). The grounds for rejecting an application are set out in Division 2 of Part 4 of the Act. Taking only the headings of the sections in that Division, the six grounds for rejecting an application are that the trade mark contains certain signs (s. 39), it cannot be represented graphically (s. 40), it does not distinguish the applicant’s goods or services (s. 41), it is scandalous or its use is contrary to law (s. 42), it is likely to deceive or cause confusion or it is substantially identical with, or deceptively similar to a trade mark registered by another person in respect of similar goods or closely related services or to a trade mark whose registration is respect of such goods or services is sought by another person (s. 44).

The Registrar may accept the application subject to conditions or limitations (s. 33(2)). If the Registrar is satisfied that the application has not been made in accordance with the Act or that there are grounds for rejecting it, he or she must reject it (s. 33(3)). Before rejecting an application, the Registrar is obliged to give the applicant an opportunity of being heard (s. 33(4)). Whether the Registrar accepts or rejects an application, he or she must give the applicant written notification of the decision and must advertise it in the Official Journal (i.e. the Official Journal of Trade Marks that the Registrar is required to issue pursuant to s. 226) (s. 34).

If the Registrar has accepted an application, a person may oppose the registration on any of the grounds specified in Division 2 of Part 5 (s. 52(4)). Again, there are six categories of grounds for opposing registration. The first comprises those grounds on which the application for registration of a trade mark might be rejected (s. 57). The others are that the applicant is not the owner of the trade mark (s. 58), the applicant does not intend to use the trade mark (s. 59), the trade mark is similar to another that has acquired a reputation in Australia (s. 60), it contains or consists of a false geographical indication (s. 61) and that the application, or a document filed in support of it, was amended contrary to the Act or the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars (s. 62).

A person may oppose registration by filing a notice of opposition (s. 52(1)) and is known as the “opponent” (s. 6(a)). The notice must be in a form approved by the Registrar and must be filed at the Trade Marks Office within the prescribed period or within that period as extended in accordance with the Regulations (ss. 52(2) and 6). Regulation 5.1 provides that the period for filing a notice of opposition is three months from the day on which acceptance of the application is advertised in the Official Journal.

If a person wishes to apply for an extension of that three month time limit (r. 5.2(1)), he or she must do so in a form approved by the Registrar and accompanied by a declaration specifying the facts on which the application is made and why the application was not made before the expiration of the three month period (ss. 5.3 and 6). Regulation 5.2(2) sets out the grounds upon which an application for an extension of the time within which to file a notice of opposition may be made if that application is made within the three month period permitted by r. 5.1 for filing a notice of opposition. If the three month period has already ended, an application may be made at any time before the trade mark is registered but may only be made on certain grounds. Those grounds are those set out in rr. 5.2(a), (b) or (c) and no other (r. 5.2(3)). They are:
“(a) an error or omission by a trade marks officer;
(b)an error or omission by the person applying for the extension of time, or by the person’s agent;
(c)circumstances beyond the control of the person applying for the extension of time.”

The notice of opposition must be served on the applicant for registration of the trade mark (s. 52(3)).

Subject to rr. 5.4(2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for an extension of time to file a notice of opposition, he or she must grant that extension. He or she must not do so, however, unless reasonably satisfied that the applicant for the extension has served a copy of it and the accompanying declaration on the applicant for the registration of the trade mark (r. 5.4(2)(a)) and that there is sufficient reason for the application’s not having been made in time (s. 5.4(4)). The Registrar must also give both the opponent who is applying for the extension and the applicant for the registration of the trade mark a reasonable opportunity in which to make representations concerning the application (r. 5.4(2)(b)).

Once a notice of opposition has been filed, the Registrar must give the opponent and the applicant for registration of the trade mark an opportunity to be heard on the opposition (ss. 54(1)). Subject only to that limitation, the proceedings for dealing with the opposition must be in accordance with the Regulations. Regulations 5.7 to 5.13 are directed to giving the opponent and the applicant for registration of a trade mark opportunity to provide and file evidence in support of the opposition or in answer to that evidence.

If an opponent does not intend to rely on evidence in support of the opposition, he or she must file a notice to that effect and serve it on the applicant within three months of filing the notice of opposition (r. 5.8). If an opponent intends to rely on evidence in support of the opposition, he or she must serve a copy of that evidence on the applicant within three months from the day on which the notice of opposition is filed (r. 5.7(1)). As soon as practicable after that, the opponent must file the original of the evidence with the Registrar together with a statement of service on the applicant (r. 5.7(2)). Regulations 5.9, 5.10, 5.11, 5.12 and 5.13 provide respectively for service of a copy of the evidence in answer to the opposition and in reply to the evidence in answer or for a notice that there will be no such evidence.

Regulation 5.15(1) provides that a party to opposition proceedings may apply to the Registrar for an extension of the period in which a copy of the evidence relied upon must be served under rr. 5.7, 5.10 and 5.12 (r. 5.15(1)(a)) or for permission to serve a copy of further evidence on the other party (r. 5.15(1)(b)). The Registrar must not grant an application unless reasonably satisfied of the matters specified in r. 5.15(3). Those matters are that he or she:

“(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
(b)has given the parties a reasonable opportunity to make representations concerning the application; and

(c) is reasonably satisfied that:
(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and
(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;

is appropriate.”

Representations concerning the application may be made in writing or at a hearing or given in any other way as the Registrar reasonably allows (r. 5.15(4)). Where an application has been made under r. 5.15(1)(b) and the Registrar has granted it on terms that require the service of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period (r. 5.15(5)).

Unless the proceedings are discontinued or dismissed, the Registrar must make a decision either refusing to register the trade mark or registering it either with or without conditions or limitations in respect of the goods and/or services then specified in the application (s. 55). In doing so, he or she must have regard to the extent, if any, to which any ground on which the application was opposed has been made out (s. 55).

Once a decision has been made to register a trade mark, the Registrar must effect its registration in accordance with Part 7 of the Act. Unless its registration is cancelled in accordance with Part 8 or the trade mark is removed from the register in accordance with Part 9, registration is for a term of ten years (s. 72(3)). Registration may be renewed in accordance with Division 2 of Part 7.

Part 21 of the Act makes provision for a range of miscellaneous matters such as the way in which applications must be made, filed and served, fees and certain aspects of proceedings before the Registrar. Section 224 makes provision for an extension of time in certain circumstances. It provides:
“(1)   If, because of an error or omission by a trade marks officer, a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar must extend the time for doing the act.
Note:For trade marks officer see section 6.
(2)If, because of:
(a)     an error or omission by the person concerned or by his or her agent; or
(b)circumstances beyond the control of the person concerned;
a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
(3)If:
(a)a relevant act that a person is required by this Act to do within a certain time is not, or cannot be, done within that time; and
(b)on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;
the Registrar may extend the time for doing the act.
(4)The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
(5)If an application is made under subsection (2) or (3) for an extension of time for more than 3 months, the Registrar must advertise the application in the Official Journal.
(6)A person may, as prescribed, oppose the granting of the application.
(7)An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for the doing of an act.
(8)In this section:
relevant act means:
(a)any act (other than a prescribed act) done in relation to a trade mark; or
(b)     the filing of any document (other than a prescribed document); or
(c)any proceedings (other than court proceedings).”

Section 231(1)(a) provides that Regulations may be made prescribing matters required or permitted by the Act. In so far as it is relevant, r. 21.28 provides that:

“For the purposes of paragraph (a) of the definition of relevant act in subsection 224(8) of the Act, the following acts are prescribed:
…
(f)serving a copy of the evidence under regulation 5.7, 5.9 or 5.12;
…
(h)serving a copy of further evidence under regulation 5.15;
…”

FACTUAL BACKGROUND

On 18 June, 1999, ExxonMobil, a company incorporated in the United States of America, lodged an application with the Registrar to register the words “ON THE RUN” (in plain script) as a trade mark in Classes 4, 25 and 32 (the ExxonMobil mark”). On 7 February, 2001, Shahin Enterprises, a company incorporated in South Australia, lodged a trade mark application for the registration of a word and device mark including the words “ON THE RUN” in class 35 with respect of retail services including supermarket and convenience store retail services.

On 28 June, 2001, the application of the ExxonMobil mark was accepted and advertised in the Official Journal. Then, on 26 September, 2001, Shahin Enterprises filed and served a Notice of Opposition to the registration of the ExxonMobil mark. Citing its grounds for making the application, Shahin Enterprises then filed an application for an extension of the time within which to serve evidence in support of its opposition. It sent a copy to ExxonMobil which, on 4 January, 2002, objected to the extension sought and requested a hearing.

A hearing was held and evidence and/or submissions were made on behalf of both Shahin Enterprises and ExxonMobil. Following the hearing, a decision was made on 25 March, 2002 to refuse the extension of time. The initial letter dated on that day and forwarding the decision and reasons to the parties stated that an application to review the decision could be made to this Tribunal. A subsequent letter dated 10 April, 2002 advised that this was incorrect and that an application for review could only be made to the Federal Court pursuant to the Administrative Decisions (Judicial Review) Act 1977.

THE SUBMISSIONS

I will set out the essence of the submissions made by each of the parties in this section. On behalf of Shahin Enterprises, Mr Caine submitted that s. 224 is a general extension of time provision. Sections 224(1) to (4) permit the grant of an extension of time for doing of “relevant acts” and ss. 224(5), (6) and (8) relate to applications under those provisions. Section 224(7) provides a general right to apply to the Tribunal. In referring simply to the review of a decision of the Registrar not to extend the time for doing “an act”, it is to be distinguished from ss. 224(1) to (4), which refer to a “relevant act”. “An act” is not limited by the definition of a “relevant act” in s. 224(8). Therefore, s. 224(7) is broad enough to encompass an application to review a decision not to extend the time within which to serve evidence or further evidence in opposition proceedings. Review is not otherwise provided in Part 5 for such decisions.

Referring to s. 15AA(1) of the Acts Interpretation Act 1901 (“AI Act”), Mr Caine submitted that, while a construction that will promote the underlying purpose or object of the Act should be preferred, it should be borne in mind that the ultimate task is to ascertain and enforce the actual command of the legislature. Relying on Re Application of the NEWS CORP LTD (1987) 15 FCR 227 (Bowen CJ, Lockhart and Beaumont JJ) at 236 per Bowen CJ, Mr Caine submitted that s. 15AA(1) does not provide a warrant for adopting an interpretation that effectively re-drafts legislation so that it accords more closely with what is assumed to be the desire of the legislature. The choice given by s. 15AA(1):

“… is not as to the construction which ‘will best achieve’ the object of the Act. Rather, it is a limited choice between ‘a construction that would promote the purpose or object [of the Act]’ and one ‘that would not promote the purpose or object’..” (Chugg v Pacific Dunlop Ltd (1990) 170 CLR 249 at 262 in which the High Court considered the equivalent section to s. 15AA(1) in the Interpretation of Legislation Act 1984 (Vic) i.e. s. 35(a))

On behalf of the Registrar, Mr Linden submitted that s. 224(7) should be read in its context as part of s. 224.. Consequently, it should be construed as applying to the subject matter of s. 224 and so to non-prescribed acts and the filing of non-prescribed documents. To adopt an interpretation that s. 224(7) applies to both prescribed and non-prescribed acts would lead to the conclusion that every decision taken in relation to applications to extend time in relation to them would be reviewable by the Tribunal. There would be no need for s. 224 to have drawn the distinction between “an act” and “a prescribed act”. The purpose of the distinction is to allow certain processes under the Act to be regulated by the Regulations. The Registrar’s power to extend time in relation to serving evidence and serving further evidence derives from r. 5.15 and not from ss. 224(1) to (3). A construction that would limit the word “act” in s. 224(7) to an act other than a “prescribed act” would promote the purpose of object of the Act. Mr Linden referred to s. 15AA of AI Act and to Parke Davis Pty Ltd v Sanofi (No. 2) (1982) 43 ALR 487 (Bowen CJ and Ellicott J, Deane J dissenting).

Mr Linden also submitted that I might have regard to extrinsic material for the purposes set out in s. 15AB of the AI Act. Paragraph 160 of the Explanatory Memorandum relating to clause 224(7) the Trade Marks Bill 1995 (“1995 Bill”) and circulated in the Senate stated that:

“an application may be made to the Administrative Appeals Tribunal for the review of a decision of the Registrar not to extend the time for the doing of a relevant act (subclause (7)).”

The Explanatory Memorandum to the Trade Marks Bill 1994 was also circulated in the Senate and it dealt with clause 234(7) in the following terms:

“an application may be made to the Administrative Appeals Tribunal for review of a decision of the Registrar not to grant an extension of time (subclause (7)).”

Except for the addition of one subsection that is not relevant in the context of this case, clause 234 of the Trade Marks Act 1994 (“1994 Act”) was in the same terms as s. 224 of the Act in its present form. The 1994 Act did not come into operation and was repealed together with its predecessor by the Act.

In his Second Reading Speech, the Minister for Communications and the Arts in the House of Representatives noted that the 1995 Bill had resulted from a consultative process and:

“implement[ed] the government’s response to the July, 1992 report, Recommended changes to the Australian trade marks legislation, as modified by the consultation process … That report was prepared by the working party to review the trade marks legislation, which comprised representatives from the legal and patent attorney professions, industry and government. It was asked initially to review and streamline the trade marks legislation, but as the work progressed its objective expanded to take into account the international developments …
The working party made 57 recommendations for change to Australia’s trade marks system. Except for three recommendations relating to the so-called ‘association’ of trade marks and the structure of the Trade Marks Register, the working party’s recommendations were unanimous. The government accepted those unanimous recommendations. In regard to those recommendations on which the working party could not agree, the government decided that it would accept the minority recommendations of the working party in the interests of harmonising the law with international needs.”

The Minister went on to observe that the 1995 Bill was, in many respects, the same as the 1994 Act. He then outlined “some of the more noteworthy features of the trade marks system that have been carried over from the 1994 act”. Later, he said that the “… bill differs from the 1994 act, mostly in matters of clarity and technical detail …” but considered that three changes were worthy of special mention. Those changes were: the omission of the concept of associated trade marks found in the 1994 Act; the omission of provisions relating to the use of a trade mark by a person other than the trade mark owner; and the introduction of significantly increased penalties for offences relating to counterfeiting and forging of trade marks but with the omission of strict liability for offences.

Mr Linden’s written submission noted that:

“… recommendation 42H(5) of the Report of the Working Party to Review the Trade Marks Legislation, July 1992 states, relevantly, that ‘decisions as to further evidence or an extension of time once opposition is lodged should be (i) exempt from appeal to the Administrative Appeals Tribunal.’”

The general comments made at the beginning of Chapter 4 regarding Time Limits in its Report of the Working Party to Review the Trade Marks Legislation (“Working Party Report”) began with a general statement that:

“… Office members were particularly concerned to address what they perceived to be problems in too generous allowances of time during the processing of trade mark applications, and to promote more expeditious prosecution of all matters before the Registrar. They considered provisions similar to those included in the Patents Act would be appropriate for this purpose.
Institute members were concerned that the provisions should preserve greater flexibility than allowed under the Patents legislation, arguing that trade marks proceedings were distinguishable from those under the Patents Act.
The majority of comments received indicate concerns that a general provision along the lines of section 223 of the Patents Act would be insufficient to encompass all circumstances in which an extension of time would be justified.” (paragraph 4.1.1)

The Working Party recommended that:

“41A. A Notice of Opposition to registration should be filed within 3 months of the advertisement of acceptance.
41B.The Notice of Opposition should state the grounds of opposition.
41C.Additional time to lodge the Notice of Opposition should be allowable only on the grounds of:
(1)error or omission on the part of the person concerned or their agent or of an employee of the Trade Marks Office;
(2)circumstances beyond the control of the person concerned; or
(3)genuine negotiations between the parties concerned or genuine research to decide whether opposition is justified or the grounds thereof.

41D.It would be mandatory to allow additional time if error or omission on the part of an employee of the Office was involved. The allowance of additional time on any of the other grounds would be discretionary.
41E.Applications for extension of time to lodge Notice of Opposition on grounds (1) and (2) could be made at any time before registration and the additional time would not be limited as to length.
41F.Applications for extensions of time to lodge Notice of Opposition on ground (3) could only be made during the first 3 months and the additional period would be limited to a maximum of 3 months.
41G.Applications for extension on any ground must be accompanied by a statutory declaration setting out the reasons for seeking the additional time.
41H.In line with regulation 5.10 of the Patents Regulations and section 224 of the Patents Act and with the exception of the time provided for filing Notice of Opposition:
(1)the Registrar should be able to give directions, either at the request of one of the parties or unilaterally, as and when appropriate;
(2)the times for serving evidence should be extendible at the discretion of the Registrar;
(3)the parties should be able to lodge further evidence at the discretion of the Registrar;
(4)the Registrar should be able to make an order as to costs where times are extended or further evidence is allowed; and
(5)directions as to procedures, and decisions as to further evidence or an extension of time once opposition is lodged (as distinct from a decision on an extension of time to lodge Notice of Opposition) should be:
(i)exempt from appeal to the Administrative Appeals Tribunal (appeal to the Federal Court remains an option);
(ii)such that the Registrar is reasonably satisfied that they are ‘appropriate in all the circumstances’; and
(iii)made only after a reasonable opportunity has been given to the parties to make representations. (Such representations may, at the request of a party, be made at a hearing, or in writing or by telephone; as per regulations 5.12 and 5.13 of the Patents Regulations.”

Finally, Mr Linden submitted that s. 231(2)(a) of the Act specifically provides for regulations to be made for appeals against decisions of the Registrar made under the Regulations. This express provision of power, he continued, militates against construing s. 224(7) as conferring a right to review a decision of the Registrar under the Regulations.

On behalf of ExxonMobil, Ms Strong submitted that an application for an extension of time in which to serve evidence in support of an opposition under r. 5.7 falls outside the procedure in s. 224 but under r. 5.15. No provision is made for review of the Registrar’s decision regarding such an application under r. 5.15. Serving evidence in support of an opposition is a “prescribed act” and so cannot be a “relevant act” within the meaning of s. 224. This has been decided in a decision of the Trade Marks Office: Intencity Pty Ltd and O’Mahoney (1997) 40 IPR 514 at 518. Section 224(7) does not provide for such review as it has its place in the scheme of s. 224 and it provides only for review of applications for extension of time made under that section.

Ms Strong also referred to s. 15AA(1) of the AI Act and to the cases requiring regard to be had to the purpose or object of legislation when interpreting its provisions. In that context, she referred to Re Application of THE NEWS CORP LTD, Cooper Brookes (Wollongong) Pty Ltd v Federal Commissioner of Taxation (1980-81) 147 CLR 297 (Gibbs CJ, Stephen, Mason and Wilson JJ, Aickin J dissenting) and Parrett v Secretary, Department of Family and Community Services [2002] FCA 716, (2002) 69 ALD 359 (Madgwick J). The purpose or object of the Act, she submitted, has shifted from its predecessor, the Trade Marks Act 1955 (“1955 Act”). She referred to Blount v Registrar of Trade Marks (1998) 83 FCR 50 at 56-7 (Branson J), Registrar of Trade Marks v Woolworths Pty Ltd (1999) 93 FCR 365 at 381 (French, Branson and Tamberlin JJ) and Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 at 65 (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

Ms Strong submitted that, although Parliament had not inserted the word “relevant” in s. 224(7), the context demanded that the provision be read as if it had been inserted. The Act leans towards ease of registration. The Tribunal can be satisfied that, when Parliament took so much care to define narrowly the category of “relevant act” that it has overlooked the effect of allowing any act to be reviewed. It is possible to point with certainty to the words that Parliament would have inserted had its attention been drawn to the defect in the drafting.

Ms Strong also submitted that s. 15AB of the AI Act permits regard to be had to the extrinsic material to which Mr Linden referred and she referred to Parrett v Secretary, Department of Family and Community Services.

CONSIDERATION

Section 25 of the AAT Act is fundamental to any consideration of the Tribunal’s jurisdiction to review a decision. It necessarily precedes any consideration of who may apply to the Tribunal for review of a decision under s. 27 for that notion assumes that the AAT Act or another enactment has provided that an application may be made to the Tribunal for the review of a decision. Section 25 is lengthy and I will start with s. 25(1) which provides:

“An enactment may provide that applications may be made to the Tribunal:
(a)for review of decisions made in the exercise of powers conferred by that enactment.”

Sub-section 25(4) provides the necessary corollary to this sub-section when it provides that the “.... Tribunal has power to review any decision in respect of which application is made to it under any enactment.” The general powers of the Tribunal are found in other provisions of the AAT Act.

The remaining ten sub-sections of s. 25 go on to refine the general proposition made in s. 25(1) and to provide that an enactment may modify the operation of any particular provision of the AAT Act. Of particular interest in this case is s. 25(3) which provides:

“Where an enactment makes provision in accordance with subsection (1), that enactment;
(a)shall specify the person or persons to whose decisions the provision applies;
(b)may be expressed to apply to all decisions of a person, or to a class of such decisions; and
(c)may specify conditions subject to which applications may be made.”

It is clear from s. 25 generally and from ss. 25(1) and 25(3) which I have set out that Parliament intended that the Tribunal’s power of review be defined and circumscribed by the enactment making provision for that review. If that were not the case, there would have been no need for the Parliament to have provided that, for example, the enactment may apply to all of the decisions of a person whom it specifies or to a class of those decisions.

This interpretation is consistent with the statements made by the Attorney-General in his Second Reading speech in the House of Representatives when he said:

“The intention of the present Bill is to establish a single independent tribunal with the purpose of dealing with appeals against administrative decisions on as wide a basis as possible. The Bill would establish the Tribunal and provide for its membership, powers and procedures. The Tribunal thus established would be a standing body that can be given jurisdiction as new legislation creating administrative discretions is introduced. At the same time, the Government proposes to review discretionary powers under existing legislation to determine whether there should be appeals to the Tribunal against decisions in the exercise of those discretions, and whether existing provisions for appeal would be brought within the framework of the new Tribunal.” (Hansard, House of Representatives, page 1187)

The effect of s. 25 is that regard must be had to the terms of the enactment to decide whether or not the Tribunal has been given jurisdiction. When that is done, it is apparent that specific provision is made for review by the Tribunal in three groups of situations. The first group relates to certification trade marks, which are the subject of Part 16 of the Act. A certification trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade and certified in relation to some characteristic from other goods or services dealt with, or provided, in the course of trade but not so certified (s. 169). The Tribunal may review a refusal by the Australian Competition and Consumer Commission (“ACCC”) s. 174(1) to issue a certificate that the criteria specified in s. 175(2) have been met (s. 175(5)). The Tribunal may also review the ACCC’s decision to approve or not approve a variation of the rules governing the use of a certification trade mark, which may be varied in accordance with the Regulations (s. 178(5)). A registered certification trade mark and a certification trade mark in respect of which there is an application for registration may be assigned only with the consent of the ACCC (s. 180(1) and 180A(1)). In either case, an application may be made to the Tribunal should the ACCC decide to refuse to give its consent (ss. 180(4) and 180A(4)).

The second group of situations in which the Tribunal has been given jurisdiction comprises only one provision and that provision is s. 228A.. It provides that a person may apply to the Tribunal for review of a decision not to register a person as a trade marks attorney.

The third group, which also comprises one section, is s. 224, which has been at the centre of consideration in this case. In effect, it permits the Registrar to extend the time allowed in three situations. The first two arise when, because of an error or omission (or, in the second, because of circumstances beyond the control of the person concerned), a relevant act is not, or cannot be done, within the time required by the Act. The first occurs when there has been an error or omission by a trades mark officer. In that situation, the Registrar must extend the time for doing the act. The second occurs when there has been an error or omission by the person concerned or by his or her agent or by circumstances beyond the control of that person. In that situation, the Registrar is given the discretion to extend the time. In the third situation, the Registrar is also given the discretion to extend the time. That situation arises when a relevant act is not, or cannot be done, within the time required by the Act and the Registrar is of the opinion that special circumstances exist justifying an extension of the time. In the second and third situations, the Registrar must advertise any application to extend time in the Official Journal (s. 224(5)).

These three situations are not the only provisions in the Act and Regulations that permit the Registrar to extend the time. I have referred to others above. One is r. 5.15, which is at the heart of these proceedings, and I have already set out its terms above (see paragraph 17). Within parameters specified in r. 5.15(3), it gives the Registrar the discretion to extend the period for serving a copy of evidence under rr. 5.7, 5.10 and 5.12 or for permission to serve a copy of further evidence on the other party. Another is r. 5.2, which requires the Registrar to grant an extension of time in which to file a notice of opposition if reasonably satisfied as to the grounds on which it is made but those grounds are circumscribed by rr. 5.2(2) and (3). The Registrar’s discretion is circumscribed by r. 5.4. Regulation 4.12 also requires the Registrar to extend the time before an application lapses. It is a section that specifically recognises that the Registrar’s power under that regulation is in addition to his or her power under s. 224. Regulation 4.12 only confers power if an application to extend the time has been made within the period prescribed in r. 4.12(1) or within the period as extended under s. 224 or under r. 4.12(4). If made outside that period or if an extension is sought for a period beyond six months after the end of the period specified in r. 4.12(1), the only provision enabling and application for extension is that in s. 224.

Of the acts in relation to which the Registrar may extend time, only those under rr. 5.7, 5.9, 5.12 and 5.15(1)(b) are named as prescribed acts in r. 21.28(1).. That provision sets out those acts that are prescribed acts for the purposes of s. 224(8) of the Act. Those acts that are prescribed are not relevant acts for the purposes of s. 224 and so the Registrar cannot use his or her power under ss. 224(1), (2) or (3) to extend the time for doing them. Each of the acts under rr. 5.7, 5.9, 5.12 and 5.15(1)(b) is concerned with evidence in relation to an opposition; either in support, in answer or in reply or further evidence. It does not name as prescribed acts those under r. 5.1 in relation to the filing of a notice of opposition or 4.12 in relation to the lapsing of applications.

That brings me back to s. 224 and, more particularly, to ss. 224 and 224(7). Section 224(6) makes no reference to the person to whom or the subject about which “the application” has been made and so no reference to the application that may be opposed but it is clear from its place in the order of subsections in s. 224 that it is an application made under ss. 224(1), (2) or (3) of the Act. It is not an application made to the Tribunal.

It is in this context that s. 224(7) is found. In considering whether its reference to “an act” is a reference to “a relevant act” that is the subject of the remaining provisions of s. 224, I am mindful that s. 15AA(1) of the AI Act requires me to prefer a construction that would promote the purpose or object underlying the Act, whether or not that purpose or object is expressly stated, to a construction that would not promote that purpose or object. Having that requirement in mind, Bowen CJ said in Re Application of THE NEWS CORP LTD:

“…In the end the task of the court is to ascertain and to enforce the actual commands of the legislature: Scott v Cawsey … [(1907) 5 CLR 132] at 155. This will best be achieved by studying the words used and the context and the purpose or object underlying the Act.” (page 236)

Section 15AA(1) is consistent with the approach previously adopted by, for example, the High Court in Cooper Brookes (Wollongong) Pty Ltd v Federal Commissioner of Taxation.. In a joint judgement, Mason and Wilson JJ said:

“… The fundamental object of statutory construction in every case is to ascertain the legislative intention by reference to the language of the instrument viewed as a whole. But in performing that task the courts look to the operation of the statute according to its terms and to legitimate aids to construction.
The rules, as D C Pearce says in Statutory Interpretation, p 14, are no more than rules of common sense, designed to achieve this object. They are not rules of law. If the judge applies the literal rule it is because it gives emphasis to the factor which in the particular case he thinks is decisive. When he considers that the statute admits of no reasonable alternative construction it is because (a) the language is intractable or (b) although the language is not intractable, the operation of the statute, read literally, is not such as to indicate that it could not have been intended by the legislature.
On the other hand, when the judge labels the operation of the statute as ‘absurd’, ‘extraordinary’, ‘capricious’, ‘irrational’ or ‘obscure’ he assigns a ground for concluding that the legislature could not have intended such an operation and that an alternative interpretation must be preferred. But the propriety of departing from the literal interpretation is not confined to situations described by these labels. It extends to any situation in which for good reason the operation of the statute on a literal reading does not conform to the legislative intent as ascertained from the provisions of the statute, including the policy which may be discerned from those provisions.
Quite obviously questions of degree arise. If the choice is between two strongly competing interpretations, as we have said, the advantage may lie with that which produces the fairer and more convenient operation so long as it conforms to the legislative intention. If, however, one interpretation has a powerful advantage in ordinary meaning and grammatical sense, it will only be displaced if its operation is perceived to be unintended.” (pages 320-321)

Regard should also be had to the words of warning in the judgement of Gibbs CJ in the same case:
“It is an elementary and fundamental principle that the object of the court, in interpreting a statute, ‘is to see what is the intention expressed by the words used’: River Wear Commissioners v Adamson (1877) 2 App Cas 743, at p 763. It is only by considering the meaning of the words used by the legislature that the court can ascertain its intention. And it is not unduly pedantic to begin with the assumption that words mean what they say: cf Cody v J H Nelson Pty Ltd (1947) 74 CLR 629, at p 648. Of course, no part of a statute can be considered in isolation from its context--the whole must be considered. If, when the section in question is read as part of the whole instrument, its meaning is clear and unambiguous, generally speaking ‘nothing remains but to give effect to the unqualified, words’: Metropolitan Gas Co v Federated Gas Employees' Industrial Union (1925) 35 CLR 449, at p 455. There are cases where the result of giving words their ordinary meaning may be so irrational that the court is forced to the conclusion that the draftsman has made a mistake, and the canons of construction are not so rigid as to prevent a realistic solution in such a case: see per Lord Reid in Connaught Fur Trimmings Ltd v Cramas Properties Ltd [1965] 1 WLR 892, at p 899; [1965] 2 All ER 382, at p 386. Examples of that sort of case may be found in Maxwell on the Interpretation of Statutes, 12th ed, (1969), at p 228 et seq, and Craies on Statute Law, 7th ed, (1971), at p 520 et seq. However, if the language of a statutory provision is clear and unambiguous, and is consistent and harmonious with the other provisions of the enactment, and can be intelligibly applied to the subject matter with which it deals, it must be given its ordinary and grammatical meaning, even if it leads to a result that may seem inconvenient or unjust. To say this is not to insist on too literal an interpretation, or to deny that the court should seek the real intention of the legislature. The danger that lies in departing from the ordinary meaning of unambiguous provisions is that ‘it may degrade into mere judicial criticism of the propriety of the acts of the Legislature’, as Lord Moulton said in Vacher & Sons Ltd v London Society of Compositors [1913] AC 107, at p 130; it may lead judges to put their own ideas of justice or social policy in place of the words of the statute. On the other hand, if two constructions are open, the court will obviously prefer that which will avoid what it considers to be inconvenience or injustice. Since language, read in its context, very often proves to be ambiguous, this last mentioned rule is one that not infrequently falls to be applied.” (pages 304-305)

In Mills v Meeking (1989-90) 169 CLR 214 (Mason CJ, Brennan and Toohey JJ, Dawson and McHugh JJ dissenting), Dawson J wrote of the Victorian equivalent to s. 15A(1) of the AI Act:

“…The approach required by s 35 needs no ambiguity or inconsistency; it allows a court to consider the purposes of an Act in determining whether there is more than one possible construction. Reference to the purposes may reveal that the draftsman has inadvertently overlooked something which he would have dealt with had his attention been drawn to it and if it is possible as a matter of construction to repair the defect, then this must be done. However, if the literal meaning of a provision is to be modified by reference to the purposes of the Act, the modification must be precisely identifiable as that which is necessary to effectuate those purposes and it must be consistent with the wording otherwise adopted by the draftsman. Section 35 requires a court to construe an Act, not to rewrite it, in the light of its purposes.” (page 235)

It is clear that I may have regard to the Act itself in ascertaining its purpose or object and I will consider that first before I consider the extent to which I may have regard to sources outside the Act. Section 15AB of the AI Act provides that:

“(1)Subject to subsection (3), in the interpretation of a provision of an Act, if any material not forming part of the Act is capable of assisting in the ascertainment of the meaning of the provision, consideration may be given to that material:
(a)to confirm that the meaning of the provision is the ordinary meaning conveyed by the text of the provision taking into account its context in the Act and the purpose or object underlying the Act; or
(b)to determine the meaning of the provision when:
(i) the provision is ambiguous or obscure; or
(ii) the ordinary meaning conveyed by the text of the provision taking into account its context in the Act and the purpose or object underlying the Act leads to a result that is manifestly absurd or is unreasonable.”

Madgwick J considered s. 15AB(1)(a) and said of it in Parrett v Secretary, Department of Family and Community Services [2002] FCA 716, (2002) 69 ALD 359:

“[32] Section 15AB (1) (a) has sometimes been considered as being of limited utility: see Pearce and Geddes, op cit, pp 60–2. The view seems to have been taken that one cannot look to extrinsic material under para (1) (a) of s 15AB if the effect of such resort would be to depart from the ordinary meaning of the statutory text. However, with respect, para (1) (a) permits resort to extraneous material for the purpose of confirming (to confirm) that the real meaning of the text is its ordinary meaning. Paragraph (1) (a) does not prohibit sensible use of a contrary indication resulting from a lack of such confirmation after looking at the non-statutory material, nor would it seem logical or profitable that such a prohibition should be implied, having regard to the far-reaching effect, which I take now to be settled, of s 15AA.” (page 369)

The sources of extrinsic material to which reference may be made are the subject of s. 15AB(2), which provides:
“(2) Without limiting the generality of subsection (1), the material that may be considered in accordance with that subsection in the interpretation of a provision of an Act includes:
(a)all matters not forming part of the Act that are set out in the document containing the text of the Act as printed by the Government Printer;
(b)any relevant report of a Royal Commission, Law Reform Commission, committee of inquiry or other similar body that was laid before either House of the Parliament before the time when the provision was enacted;
(c)any relevant report of a committee of the Parliament or of either House of the Parliament that was made to the Parliament or that House of the Parliament before the time when the provision was enacted;
(d)any treaty or other international agreement that is referred to in the Act;
(e)any explanatory memorandum relating to the Bill containing the provision, or any other relevant document, that was laid before, or furnished to the members of, either House of the Parliament by a Minister before the time when the provision was enacted;
(f)the speech made to a House of the Parliament by a Minister on the occasion of the moving by that Minister of a motion that the Bill containing the provision be read a second time in that House;
(g)any document (whether or not a document to which a preceding paragraph applies) that is declared by the Act to be a relevant document for the purposes of this section; and
(h)any relevant material in the Journals of the Senate, in the Votes and Proceedings of the House of Representatives or in any official record of debates in the Parliament or either House of the Parliament.
(3)In determining whether consideration should be given to any material in accordance with subsection (1), or in considering the weight to be given to any such material, regard shall be had, in addition to any other relevant matters, to:
(a)the desirability of persons being able to rely on the ordinary meaning conveyed by the text of the provision taking into account its context in the Act and the purpose or object underlying the Act; and
(b)the need to avoid prolonging legal or other proceedings without compensating advantage.

No specific reference is made in s. 15AB(2) to extrinsic sources such as the reports of working groups or consultations that have taken place over a Bill laid before the Parliament to enable broad consideration to be given to its terms before its being debated in Parliament. The provision is written in the form that the “material …includes” that which is listed. I have previously considered the interpretation of that form of definition and the related expressions “means” and “means and includes” in Executors of the Estate of the late Miss Santha Thevy Subrahmanyam and Commissioner of Taxation [2002] ATC 2303; (2002) 51 ATR 1173; [2002] AATA 1298 and adopt my previous views. The choice of the word “includes” leads me to conclude that s. 15AB(2) must be read as being capable of including material other than that specifically named in the provision.

The extrinsic material to which regard is had must, however, have some cogency in eliciting Parliament’s intention. In Commissioner of Taxation v Murray (1990) 21 FCR 436, Hill J, with whom Sheppard and Neaves JJ concurred, said:

“But the intention of the Commissioner in submitting a matter for consideration of a governmental committee and the deliberations of that committee will, even if proved to come from the suggested source, tell little at all of the parliamentary intention. At best such material may suggest the mischief which some person had in mind when framing a bill before it is put before Parliament. But if the Parliament is not appraised of that mischief by the proponent of the bill in a second reading speech, by an explanatory memorandum or in debate, it will be hard to be sure that the mischief was in truth that which Parliament sought to overcome. A surer guide in such a case will be the words of the statute themselves. Particularly will that be the case where the words to be construed are ordinary English words not attended with ambiguity.” (page 449)

Regard should also be had to the cautionary words expressed by Dawson J in Mills v Meeking:

“… The report of a speech of a member of Parliament other than that of the Minister moving the second reading of a Bill may often be unhelpful and even a second reading speech may be of little relevance. If greater significance is to be attributed to a second reading speech it seems that it must be based upon the assumption that it is less likely to express a mere individual view. Be that as it may, the words of a Minister cannot be substituted for the text of the law: Re Bolton; Ex parte Beane (1987) 162 CLR 514, at p 518. Having regard to the basis upon which I have reached my conclusion it is sufficient to say that there is nothing in the reports of the proceedings to which we have been referred which is inconsistent with that conclusion.” (pages 236-237)

In an earlier case, Dawson J had made the same point in a joint judgement delivered with Mason CJ and Wilson J and did so in a case in which there was a conflict between the words in a statutory provision and those in the extrinsic material. That case was R v Bolton; Ex parte Beane (1987) 70 ALR 225 (Mason CJ, Wilson, Brennan, Deane, Dawson and Gaudron JJ, Toohey J dissenting) and the statutory provision under consideration was s. 19 of the Defence (Visiting Forces) Act 1963.. The Court considered that s. 19 was ambiguous as to whether it authorised the arrest in Australia of deserters or absentees without leave from the armed forces of a country to which the legislation applied whether or not the desertion or absenting of the person occurred outside Australia. Mason CJ, Wilson and Dawson JJ said:

“ There are powerful arguments, as appears from the reasons for judgment of Toohey J, in support of the respondents’ contention that on its proper construction s 19 of the Act authorises the arrest in Australia of a deserter or absentee without leave from the forces of a country to which the section applies notwithstanding that the desertion or absenting occurred outside Australia. There are the textual matters that tend to distinguish Pt III of the Act from Pt II, thereby emphasising that s 19 is not intended to be confined to deserters or absentees from visiting forces while in Australia. Furthermore, given that s 19 is ambiguous, consideration may be given in ascertaining the meaning of the provision to the second reading speech of the Minister when introducing the Bill for the Act into the House of Representatives in 1963: Acts Interpretation Act 1901 (Cth), as amended, s 15AB.. That speech quite unambiguously asserts that Pt III relates to deserters and absentees whether or not they are from a visiting force. But this of itself, while deserving serious consideration, cannot be determinative; it is available as an aid to interpretation. The words of a Minister must not be substituted for the text of the law. Particularly is this so when the intention stated by the Minister but unexpressed in the law is restrictive of the liberty of the individual. It is always possible that through oversight or inadvertence the clear intention of the Parliament fails to be translated into the text of the law. However unfortunate it may be when that happens, the task of the Court remains clear. The function of the Court is to give effect to the will of Parliament as expressed in the law.” (pages 227-228)

Their Honours concluded that:

“In our opinion, notwithstanding the expressed intention of the government in introducing the law into the Parliament -- an aspect of the matter which, as we have said, must give the Court cause for earnest consideration -- we would not be justified in reading an implication carrying such serious consequences for the liberty of the individual into s 21(1) of the Act.” (page 229)

In their submissions, counsel referred to provisions both of the Act and the Regulations. As a general rule, provisions of Regulations cannot be used to interpret the provisions of the Act. The Australian authorities supporting this position are referred to in Statutory Interpretation in Australia by DC Pearce and RS Geddes (Butterworths, 4^th edition, 1996) and include Hunter Resources Ltd v Melville (1988) 77 ALR 8 at 14 per Mason CJ and Gaudron J and Secretary, Department of Health, Housing, Local Government and Community Services v Kaderbhai (1994) 122 ALR 577 at 583-4 per Foster, Whitlam and Cooper JJ in which reference was made to the passage from the judgement of Brennan J in Webster v McIntosh (1980) 32 ALR 603:

“… the intention of Parliament in enacting an Act is not to be ascertained by reference to the terms in which a delegated power to legislate has been exercised.” (page 606)

There are, however, exceptions to the general rule to which the authors refer. One exception may occur where the Act “… provides a framework built on contemporaneously prepared regulations” Hanlon v Law Society [1981] AC 124 at 193 per Lord Lowry. An illustration of that exception was found to comprise the Patents Act 1990 and the Patents Regulations which Heerey J found “… establish a quite detailed regime concerning amendments to patent requests, specifications and other filed documents. …” (Elazac Pty Ltd v Commissioner of Patents (1994) 125 ALR 663 at 666.

It seems to me that the Act and the Regulations that I must consider may be similarly described. The Regulations and the provisions of the Act relating to the scheme of regulation of trade marks both came into operation on 1 January, 1996. The Regulations contained the detail of the framework of the scheme of regulation set out in the Act and did so in keeping with the Minister’s Second Reading Speech that:

“ In keeping with modern legislative drafting practice, the bill sets out the guiding principles and general framework of the new trade mark system, with much of the detail devolved to the regulations.”

It seems to me, therefore, that this is a situation in which I may have regard to the Regulations in construing the provisions of the Act.

Putting to one side for the moment the extrinsic materials, I have considered the purpose or object of the Act. That has been considered in cases to which the parties referred me. Although the most recent of the cases, Campomar Sociedad, Limitada v Nike International Ltd focused on the 1955 Act. The particular facts of the case are not relevant but the High Court considered the scope and purpose of that legislation. It found that the 1955 Act “struck a balance between various interests” (page 65) and went on to enumerate those interests. There has been a development in the species of trade marks as one piece of trade marks legislation replaces another. There has also been an accommodation of commercial and the consuming public’s interests. Those interests touch upon matters such as protecting goodwill and creating property, protecting it and enabling its value to be exploited. The exploitation of a trade mark registration may involve questions of public interest such as those relating to restrictive trade practices. Trade marks also play a significant role in private and public life as metaphors quite unconnected with their traditional function as marks to indicate the source or origin of goods. There may be a need to balance the possibility of deception in the minds of the public against the commercial claims of concurrent users where different traders have unknowingly created similar marks. Where the balance amongst all of these interests has been struck differs from one statute to the next, the High Court said, as the markets and trade methods and practices have changed (page 68). With all of these interests in mind, the High Court said that “… the predominant interest manifested in the 1955 Act is the maintenance of the integrity of the Register against any apparent condonation of misleading or deceptive practices which may arise from the use of registered marks …” could not be supported (page 65).

Both Blount v Registrar of Trade Marks and Registrar of Trade Marks v Woolworths Pty Ltd were concerned with the Act I must consider. Branson J stated in Blount that:

“… Section 33(1) provides that the Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or that there are grounds for rejecting it. The 1955 Act, by s 44, required the Registrar to accept the application only if satisfied that there was no lawful ground of objection to it. The terms of s 33(1) of the Act are presumably intended to reflect the recommendation of the Working Party that the Act ‘should be expressed in terms which make it clear that there is to be a presumption of registrability when examining an application for registration. …” (page 56)

French J said in Woolworths:

“ Section 33 imposes upon the Registrar and the Court, on appeal from the Registrar, an obligation to accept the application unless satisfied either that the application has not been made in accordance with the Act or that there are grounds for rejecting it. The decision to reject an application regularly made must now be based upon positive satisfaction that a ground for rejecting it is made out. This may have implications for the Registrar's administrative practice. There will no doubt be cases in which the requisite state of satisfaction can be reached by consideration of the visual and aural features of the marks in question against the description of the goods and/or services to which they relate. But there will also be cases in which such materials will be of themselves inadequate to support a proper judgment. In some circumstances market or survey evidence might be necessary to form a concluded view. Unless the Registrar is to undertake inquiries of that kind going beyond the content of the application and the existing Register and prior applications, then the application will have to be accepted and determination of such questions as deceptive similarity left to opposition or expungement proceedings. Given the preliminary character of the acceptance decision and the availability of the later adversarial processes, it may be consistent with the policy of the 1995 Act that only in clear cases of deceptive similarity will the Registrar reject upon that ground. The policy of the 1995 Act can be said to some extent to have shifted the balance of the objectives of trade mark law more towards the identification and protection of commercial products and services than the protection of consumers, although the latter remains an objective. In respect of deceptive trade marks the interests of consumers are also protected by comprehensive Federal and State laws relating to conduct which is misleading or deceptive or likely to mislead or deceive. The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes. That, no doubt, is because ‘confusion’ used in that sense, does not of itself lead into error or affect choices at the point of sale. It is perhaps best described in trade mark law as effecting a prophylactic support for commercial distinctiveness.” (page 381)

Referring to particular sections within these passages, the written submissions made on behalf of ExxonMobil concluded that:

“It is clear that the purpose or object underlying the Act is one which allows efficient and speedy progress to registration. It is consistent with this shift in emphasis in trade mark legislation that oppositions be tightly controlled and not permitted to be used to frustrate and delay an Applicant in obtaining registration.” (12 August, 2002, paragraph 20)

I do not accept that Blount and Woolworths are authority for such a clear cut and single-minded purpose or object underlying the Act. While there is a presumption of registrability in the Act that was not in its predecessor, the 1955 Act, the Act does not ignore interests of persons other than the applicant for registration. This is apparent from s. 33 whose effect was explained in the passage from the judgement of Fox J in Woolworths as imposing “an obligation to accept the application unless satisfied either that the application has not been made in accordance with the Act or that there are grounds for rejecting it”.. The grounds on which there may be such opposition to the acceptance of an application (see paragraph 9 above) reveal a continuing recognition by Parliament that there are interests other than those of the person applying for registration of a trade mark. So too do the grounds for opposing registration (see paragraph 11 above). Some of those interests relate to the commercial interest of others (e.g. s. 44), others presumably protect the interests of consumers as well as commercial interests (e.g. s. 43) and yet others relate to the public interest in ensuring that a person cannot acquire trade marks, and presumably benefit from them by trading them at some future time, when he or she does not own them (e.g. s. 58).

An examination of the structure and provisions of the Act alone and without reference to the extrinsic material reveals that the various interests have been balanced. Provision has been made for oppositions to be made and considered and provision has also been made for extension of prescribed time limits. A balance has been struck between the interests of the applicant for registration of a trade mark and those opposing it.

Having reviewed the structure of the Act and the Regulations in light of the purpose or object of the Act as revealed by its terms and without reference to the extrinsic materials, it can be argued that Parliament has recognised the distinction between extending time under s. 224 and extending time under specific provisions such as those to which I have referred. It has continued to draw this distinction within the very terms of s. 224 itself. By adopting the language of a “relevant act” and defining it to exclude a “prescribed act”, Parliament has delineated those acts in relation to which the Registrar must, or may as the case may be, exercise his or her powers in the circumstances specified in ss. 224(1), (2) or (3). These are powers that are in addition to other specific powers given to the Registrar under the Regulations to extend time. The fact that the time for doing an act might be extended pursuant to one of the Registrar’s specific powers is not determinative of whether an act is named as a prescribed act. Such specific powers exist in relation to acts under rr. 4.12 and r. 5.1 but, unlike those under rr. 5.7, 5.9 and 5.12, they have not been prescribed.

In choosing to refer in s. 224(7) simply to a “decision of the Registrar not to extend the time for the doing of an act”, the argument continues, Parliament has chosen its words carefully. It has omitted the word “relevant” deliberately for it has recognised that the Registrar has power to extend time apart from the provisions of s. 224 and has chosen to provide for an application to be made to the Tribunal seeking review of such decisions. Had there not been other provisions in the Act providing for the extension of time, it could be said that s. 224(7) would have to be read as referring only to the review of the Registrar’s decisions not to extend the time for doing of a “relevant act”. That, however, is not the case and it would seem clear on this view that s. 224(7) permits an application to be made to the Tribunal for review of the Registrar’s decision not to extend the time for doing of an act.

On this view, I could not agree with Mr Linden’s submission that finding that the Tribunal has jurisdiction would effectively render the distinction between relevant and prescribed acts meaningless and that every decision taken in relation to applications to extend time in relation to them would be reviewable by the Tribunal. Certainly, the Tribunal would be able to review every decision in relation to the extension of time but the distinction between relevant and prescribed acts would be relevant. Putting to one side those acts in relation to which the Registrar is given a specific power to extend time, the distinction draws a line between those acts where there is power to extend time and those where there is not. In relation to some of those acts where the Registrar is given other specific powers to extend time, the naming of an act as a prescribed act takes it outside of those acts in relation to which the Registrar must extend time because of an error or omission by a trade marks officer under s. 224(1).. In the case of acts under rr. 5.7, 5.9 and 5.12, for example, such an error or omission remains one of the factors to be taken into account when the Registrar exercises his or her discretion under r. 5.15.. Where an act remains a relevant act, such as the filing of a notice of opposition under r. 5.2, the extension becomes mandatory under s. 224(1) in the face of such an error or omission even though the effect of provisions such as rr. 5.2 and 5.4(4) would not necessarily lead to the same result in the face of an error or omission by a trade marks officer.

Whichever interpretation of s. 224(7) is correct, I do not accept that the regulation making power in s. 231(2) to make regulations to provide for appeals against decisions of the Registrar made under the Regulations favours a narrower construction of s. 224(7). In adopting the word “appeals”, it seems to me that s. 231(2) is referring to appeals to the Federal Court “… against decisions, directions or orders of the Registrar …” as referred to in s. 191(2) and provision is made for them in, for example, s. 104 of the Act. In relation to the Tribunal, it has, as in s. 224(7) used the word “application”.

Looking only to the words of the Act and the Regulations, it seems to me that the argument that s. 224(7) should be given a broader construction to permit an application to be made to the Tribunal to review “an act”, and not simply “a relevant act” has merit and is to be preferred. Having regard to the structure of the Act and the various sources of the Registrar’s powers to extend time, there seems to be no ambiguity in the terms of s. 224(7).. The provision of a right of review to the Tribunal sits neatly with the other provisions and with the object or purpose of the Act as I have identified it to be.

Having considered the interpretation of s. 224 in the absence of the extrinsic materials, I will now consider it in light of them. It is clear from authorities such as R v Bolton; Ex parte Beane and Cooper Brookes (Wollongong) Pty Ltd v Federal Commissioner of Taxation that the clear intention of Parliament expressed in extrinsic material does not necessarily alter the interpretation that is to be given to the words of the legislation it has enacted. This is also clear from Mills v Meeking, in which the High Court said that an Act must be construed, and not rewritten, in light of its purposes. The High Court also said, however, that the literal meaning of legislation must be modified if three criteria are satisfied: it appears from the legislation’s purposes that the draftsman has inadvertently overlooked a matter and would have dealt with it had his attention been drawn to it; the modification is precisely identifiable; and the modification is consistent with the wording otherwise adopted by the draftsman.

Section 15AB of the AI Act does not purport to close the categories of material to which I may have regard but it is inherent in the passages of the judgements of Hill J in Commissioner of Taxation v Murray and of Dawson J in Mills v Meeking that the extrinsic materials must be those that can be regarded as reflecting Parliament’s view and not simply the views of individuals or groups of individuals.

The Second Reading Speech of the Minister is specifically referred to in s. 15AB(2)(f) of the AI Act. The Working Party Report is not a report of a type to which specific reference is made. Specific reference was, however, made to it in the Second Reading Speech. It is clear from the sections of the text of that speech that I have set out above that the government’s response to the Working Party Report was, together with the implementation of Australia’s obligations under the World Trade Organisation Agreement, at the foundation of the 1995 Bill. The Minister said that all but three of its recommendations had been accepted. If a fine tooth comb were to be drawn through the Act and the recommendations, it is open to question whether there were other recommendations that did not find their way into the Act. I raise, for example, recommendations 41D and 41E which would seem to be at odds with rr. 5.4(1) and (4), which commenced operation on 1 January, 1996 with the Act. Be that as it may, the Working Party Report can be considered as an extrinsic material that can, provided it is read with the Second Reading Speech, be given some weight in evincing Parliament’s intention.

The other extrinsic material to which my attention has been drawn and to which reference is made in s. 15AB(2) of the AI Act is the Explanatory Memorandum. I have set out the relevant clauses of both the Explanatory Memorandum to the 1994 Bill and to the 1995 Bill. A reading of the Working Party Report certainly indicates that there was an intention to exempt from review by the Tribunal those of the Registrar’s decisions as to further evidence or an extension of time once a notice of opposition has been lodged. A comparison of clause 234(7) in the earlier Explanatory Memorandum with clause 224(7) in the later indicates that an application could be made to the Tribunal for review of the Registrar’s decision not to grant an extension of time without reference either to “an act” or a “relevant act” in the earlier (although s. 234(7) of the 1994 Act clearly referred to a decision not to extend time for “the doing of an act”) but only a “relevant act” in the later.

Even though there was a clear change in the wording of the Explanatory Memorandum between the 1994 and the 1995 Bills, there was no change in the wording of s. 224(7) of the Act to reflect that change. What had been clause 234(8) in the 1994 Bill relating to an action in respect of infringement of a trade mark that had been removed from the Register in particular circumstances was omitted from the 1995 Bill. The omission of that provision but the retention of s. 224(7) in its same terms raises the following questions: did the draftsman not intend to change the wording because there was no intended change; did he or she inadvertently omit to amend s. 224(7) at the same time in view of the change of policy; or did he or she think that “an act” would be read as a “relevant act”? Rather than confirming the ordinary meaning of s. 224(7) as I have found it to be, the extraneous material has clouded what was otherwise clear.

The matter is further clouded by the fact that the statements in the Working Party Report and in the Explanatory Memorandum to the 1995 Bill are not entirely consistent. The Working Party Report recommended that “decisions as to further evidence or an extension of time once opposition is lodged (as distinct from a decision on an extension of time to lodge Notice of Opposition) should be … exempt from appeal to the Administrative Appeals Tribunal.” The recommendation clearly intended that the Tribunal would continue to be able to review decisions of the Registrar to refuse to extend time for the lodgement of a notice of opposition. The Working Party Report did not distinguish between the Registrar’s decisions in relation to the lodgement of a notice of opposition under ss. 224(1), (2) or (3) and those under r. 5.2. That is to say, the Working Party did not specify that the Registrar’s decision under r. 5.2 should be exempt from “appeal” to the Tribunal but those under ss. 224(1), (2) or (3) should not. Reading the passage of recommendations of the Working Party as a whole, it cannot be said that they are limited to matters related to s. 224.. The recommendations clearly relate to decisions under both r. 5.2 and to s. 224. In the passage of its report that I have been given, the Working Party made no specific reference to the review of decisions under r. 4.12 not to extend the period after which an application lapses. In the passage that I have been given, it is clear that the Working Party was considering only “directions as to procedures, and decisions as to further evidence or an extension of time once opposition is lodged (as distinct from a decision on an extension of time to lodge Notice of Opposition)” and not decisions of the sort made under r. 4.12.. There is no indication that it intended to exclude the Tribunal’s power to review such decisions.

It follows that, to read s. 224(7) as if the word “relevant” appeared before the word “act”, would have the effect of achieving part of Parliament’s purpose but it would also have the effect of removing the Tribunal’s jurisdiction to review the Registrar’s decisions made under r. 5.2 to extend the time for filing the notice of opposition and r. 4.12 not to extend the period after which an application lapses. That is so because the Tribunal’s power under s. 224(7) would have to be read as being confined to a decision of the Registrar made under s. 224(1), (2) or (3) for that is the context in which an act is a relevant act. When the Registrar exercises his or her power to extend time under r. 5.2 or r. 4.12, he or she is not doing so on the basis that the act concerned is, as it would be, a relevant act within the meaning of s. 224 but because of the specific powers given by rr. 5.2 or 4.12.. It follows that, whether viewed simply within the context of the words of the Act and the Regulations themselves or against a background of the extrinsic material, the inclusion of the word “relevant” in s. 224(7) would achieve Parliament’s stated purpose in one aspect but re-write it in another.

Although the statement in the Explanatory Memorandum to the 1995 Bill, clearly reflects a view that an application may only be made to the Tribunal to review the Registrar’s decision not to extend time for the doing of a relevant act, it is not at all clear from the wider extrinsic material, to which the Minister referred, that it was indeed Parliament’s intention to limit the Tribunal’s jurisdiction in the manner contended for by the Registrar. It seems to me that this is not a case in which an intention expressed by Parliament, but not reflected in the Act, can be achieved by reading s. 224(7) with a precisely identifiable modification that would be consistent with the wording otherwise adopted by the draftsman but which would not have the effect of rewriting the Act. Consequently, I do not consider that the ordinary and literal meaning of s. 224(7) should be modified so that it is read as permitting an application to be made to the Tribunal for review only of decisions not to extend the time for the doing of a relevant act. I have concluded that it should be read in its ordinary terms to permit and application to be made to the Tribunal for review of a decision of the Registrar not to extend the time for the doing of an act whether or not that act also meets the description of a relevant act.

For these reasons, I have concluded that the Tribunal has jurisdiction to review the Registrar’s decision dated 25 March, 2002.

I certify that the eight-four preceding paragraphs are a true copy of the reasons for the decision herein of
Deputy President S A Forgie

Signed: ................................................................
P. Paczkowski Associate

Date of Jurisdiction Hearing         26 August, 2002
Date of Decision  7 August, 2003
Counsel for the Applicant             Mr B. Caine
Solicitor for the Applicant            O’Loughlins
Solicitor for the Respondent         Mr S. Linden
  Australian Government Solicitor
Counsel for the Party Joined         Ms E. Strong
Solicitor for the Party Joined        Phillips Ormonde & Fitzpatrick

[2003] AATA 765

17 September 2003