Tallevine Pty Ltd and Registrar of Trade Marks

[2020] AATA 389

Tallevine Pty Ltd and Registrar of Trade Marks [2020] AATA 389 (5 February 2020)

Division:GENERAL DIVISION

File Number:          2019/4027

Re:Tallevine Pty Ltd

APPLICANT

AndRegistrar of Trade Marks

RESPONDENT

  Ford Motor CompanyAnd

FIRST JOINED PARTY

  Ford Motor Company of Australia LimitedAnd

SECOND JOINED PARTY

DECISION

Tribunal:Deputy President J W Constance

Date:5 February 2020

Date of written reasons:        4 March 2020

Place:Sydney

The Tribunal decides that:

1)Ford Motor Company be made a party to the proceedings; and

2)Ford Motor Company of Australia Limited be made a party to the proceedings.

..............................[sgd]..........................................

Deputy President J W Constance

CATCHWORDS

PRACTICE AND PROCEDURE - applications for joinder - whether interests of joinder applicants are affected - whether discretion should be exercised in favour of the joinder applicants - applications for joinder granted

LEGISLATION

Administrative Appeals Tribunal Act 1975 (Cth)

Trade Marks Act 1995 (Cth)

CASES

Nguyen and Australian Community Pharmacy Authority (2015) 67 AAR 111

United States Tobacco Company v Minister for Consumer Affairs and Ors (1988) 20 FCR 520

WRITTEN REASONS FOR INTERLOCUTORY DECISION GIVEN ORALLY ON 5 FEBRUARY 2020

DEPUTY PRESIDENT J W CONSTANCE

4 MARCH 2020

INTRODUCTION

1. In September 2015, Tallevine Pty Ltd (Tallevine) filed with the Registrar of Trade Marks an application for registration of a trade mark (the Raptor trade mark). The Raptor trade mark includes the words “RAPTOR 4X4.COM.AU”.

2. On 15 December 2015, the Registrar notified Tallevine that its application did not meet the requirements of the Trade Marks Act 1995 (Cth) for reasons set out in an attached report. In the same correspondence, the Registrar advised Tallevine that it had until 15 March 2017 to make further representations to attempt to overcome the issues raised in the report otherwise its application for registration would lapse.

3. For reasons not relevant to the application presently before me, Tallevine did not make any further representations to the Registrar and its application for registration lapsed on 15 March 2017.

4. On 27 April 2018, Tallevine applied to the Registrar under section 224 to extend the final acceptance date by a period of 17 months. This application was refused by a delegate of the Registrar on 15 May 2019.

5. On 5 July 2019, Tallevine applied to the Tribunal to review the delegate’s decision.

6. Both Ford Motor Company (Ford) and Ford Motor Company of Australia Limited (Ford Australia) applied to be made a party to the proceedings. Their applications were opposed by Tallevine.

7. On 5 February 2020, I ordered that Ford and Ford Australia each be made a party to the proceedings. I now provide written reasons for my decision.

   LEGISLATION

8. Subsection 30(1A) of the Administrative Appeals Tribunal Act 1975 (Cth) provides:

   Where an application has been made by a person to the Tribunal for a review of a decision, any other person whose interests are affected by the decision may apply, in writing, to the Tribunal to be made a party to the proceeding, and the Tribunal may, in its discretion, by order, make that person a party to the proceeding.

   FORD’S ARGUMENT

9. Ford is the owner of five Australian trade marks which include the word “RAPTOR”, all of which are registered for motor vehicles in class 12. It has held registrations incorporating the word “RAPTOR” since 2008 and has made extensive use of trade marks incorporating the word in Australia and other countries.

10. If the delegate’s decision is reversed, Tallevine’s application for registration of the Raptor trade mark will be reactivated and, to protect its intellectual property, Ford will need to invest resources in opposing the application. Ford argues that it will be necessary for it to take such action for several reasons:

    ·use of the Raptor trade mark by Tallevine would cause deception and confusion in the Australian marketplace;

    ·this would damage Ford’s interests and be contrary to the public interest;

    ·its use would be contrary to the provisions of the Australian Consumer Law and in breach of orders of the Supreme Court of New South Wales in proceedings brought by Ford Australia (Ford’s subsidiary) against Tallevine;

    ·registration of the Raptor trade mark in Tallevine’s name would give that company a full defence against any action by Ford in respect of alleged breaches of its raptor trade marks;

    ·opposing a revived application for registration will cause Ford to incur significant legal costs which will not be recoverable even if Ford is successful.

    FORD AUSTRALIA’S ARGUMENT

11. Ford Australia’s reasons for seeking to be joined as a party are similar to those put forward by Ford.

12. Prior to 19 February 2014, Tallevine had been an Authorised Ford Dealer under an agreement with Ford Australia. Following the termination of the agreement, Tallevine continued to hold itself out as an Authorised Ford Dealer.

13. The conduct of Tallevine caused Ford Australia to commence the proceedings in the Supreme Court of New South Wales referred to earlier in these reasons. Proceedings are currently before the same Court in respect of alleged breaches of restraining orders made by it in relation to Tallevine’s use of the Raptor trade mark

14. Ford Australia also claims that its joinder as a party will enable it to assist the Tribunal in reaching the correct decision in Tallevine’s application, as it will be able to provide evidence which was relied on in the Court proceedings and which is relevant to the application before the Tribunal.

    TALLEVINE’S ARGUMENT

15. Tallevine argues that the interests of neither Ford nor Ford Australia are affected by the decision being reviewed by the Tribunal in these proceedings. It is put that a decision to set aside the decision under review will do no more than revive the application to register the Raptor trade mark. The making of a decision to set aside the reviewable decision is a condition precedent to the conferring of any rights on Tallevine.

    REASONING

16. The Full Court of the Federal Court of Australia considered the meaning of “interest” in the sense under consideration in this application in United States Tobacco Company v Minister for Consumer Affairs and Ors:

    The term “interest” has long been an expression used in the law with respect to parties so as to require an involvement with a case greater than the concern of a person who is a mere intermeddler or busybody. Nevertheless, the criterion for standing prescribed by the [ADJR] Act is not a restrictive one. The broadest of technical terms has been selected. The necessary interest need not be a legal, proprietary, financial or other tangible interest. Neither need it be peculiar to the particular person.[1]

    [1] (1988) 20 FCR 520 at 527.

17. Turning to consider the application of subsection 30(1A), I repeat what I said in Nguyen and Australian Community Pharmacy Authority:

    The first step is to look to the words used in subs 30(1A). It provides that any person (other than the applicant) “whose interests are affected” may apply to be made a party. It is important to note that the word “interests” is not qualified. This suggests that it is not necessarily a requirement of the subsection that an applicant to be joined as a party show that his or her interests were adversely affected by the decision under review. It is clear however that the applicant must show that it is the decision under review, rather than any decision that this Tribunal may make, which affects his or her interests.[2]

    [2] (2015) 67 AAR 111 at 114 [11].

18. For an applicant for joinder to be successful under subsection 30(1A), the Tribunal must be satisfied that:

    1)the applicant for joinder is a person whose interests are affected by the reviewable decision;

    2)the application is in writing; and

    3)the discretion to order joinder should be exercised in favour of the applicant.

19. Based on the principles set out above, I am satisfied that each of the joinder applicants has an interest in preserving the status quo and thus relieving it of the possibility of needing to allocate resources to oppose an application for registration by Tallevine. To that extent the interests of each joinder applicant is affected by the decision under review.

20. I am also satisfied that each of the joinder applicants applied to the Tribunal in writing to be joined as a party to the proceedings commenced by Tallevine.

21. Taking into account that each joinder applicant has the benefit of existing trade marks which include the word “RAPTOR” and that there are proceedings before the Supreme Court of New South Wales in respect of the trade marks already registered, I am satisfied that each of them would allocate resources to oppose the registration of the Raptor trade mark. I am satisfied also that there would be genuine issues to be determined between the parties. In these circumstances, the discretion granted to the Tribunal in subsection 30(1A) should be exercised in favour of the joinder applicants.

    CONCLUSION

22. For the reasons stated, the following orders were made on 5 February 2020:

    1)Ford Motor Company be made a party to the proceedings; and

    2)Ford Motor Company of Australia Limited be made a party to the proceedings.

I certify that the preceding 22 (twenty-two) paragraphs are a true copy of the reasons for the decision herein of Deputy President J W Constance

...............................[sgd].........................................

Associate

Dated: 4 March 2020

Date of hearing:	21 November 2019
Solicitors for the Applicant:	Agility Legal
Solicitors for the Respondent:	Australian Government Solicitor
Counsel for First Joined Party:	Mr E Heerey QC
Solicitors for First Joined Party:	Allens
Solicitors for Second Joined Party:	Lander & Rogers