Spirits Product Int BV v FKP Sojuzpodoimport

This decision concerned an application by Spirits Product Int BV (the applicant) to register certain International Registration Designations of Australia (IRDAs) as trade marks. The Registrar of Trade Marks (the Registrar) had refused to register the IRDAs on the grounds that their use would be contrary to law, specifically citing potential breaches of the Copyright Act 1968 (Cth). The applicant sought judicial review of the Registrar's decision.

The central legal issue before the court was the proper scope of the Registrar's power when considering whether the use of a trade mark would be "contrary to law" under the relevant provisions of the *Trade Marks Act 1995* (Cth). Specifically, the court had to determine whether the Registrar was empowered to consider complex legislation, such as the Copyright Act, in making this assessment, or if the "contrary to law" ground was limited to more straightforward or easily determinable breaches.

The court, referencing *Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd* [2001] FCA 683 and *R v Quinn; Ex parte Consolidated Foods Corporation* (1977) 138 CLR 1, reasoned that the Registrar's role in assessing whether a trade mark's use would be contrary to law is administrative but requires a genuine consideration of the facts presented. The court held that the Registrar is not precluded from considering legislation beyond that which is simple or clear-cut, including the Copyright Act. While acknowledging the potential difficulty and onerous responsibility this might place on the Registrar, the court noted that the criterion is whether use "would" be contrary to law, not "could," and that the Registrar could seek legal advice. Furthermore, any opinion formed by the Registrar is limited to the refusal of registration and is subject to appeal de novo to the court.