Wilkshire v Bombala Council

[2013] FMCA 181

FEDERAL MAGISTRATES COURT OF AUSTRALIA

WILKSHIRE v BOMBALA COUNCIL [2013] FMCA 181

BANKRUPTCY – Review of registrar’s order to issue a sequestration order – principles in relation to whether a court should ‘go behind’ earlier judgments – necessary link between evidence relied upon for review and the original judgment claimed to be defective.

Bankruptcy Act 1966 (Cth), s.40(1)(g)
Federal Court of Australia Act (1976) (Cth), s.31A
Federal Magistrates Act1999 (Cth), s.104(2) & (3)
Trade Marks Act1995 (Cth), s.88, 88(1)(a)
Federal Magistrates Court Rules 2001, r. 16.05
Federal Magistrates Court (Bankruptcy) Rules 2006, r.7.06

Bombala Council v Wilkshire (2006) 69 IPR 315
Corney v Brien (1951) 84 CLR 343
Kyriackou v Shield Mercantile Pty Limited (2004) 138 FCR 324
O’Meara v Hitwise Pty Ltd (2007) 160 FCR 518
Pattinson v Hadjimouratis (2006) 155 FCR 226
Totev v Sfar (2008) 167 FCR 193
Wilkshire v Bombala Council (2009) ATMO 33
Wilkshire v Registrar of Trade Marks (2009) FCA 1222
Wilkshire v Registrar of Trade Marks (No. 2) (2009) FCA 1505
Wilkshire v Registrar of Trade Marks (2010) FCA 49
Wren v Mahony (1972) 126 CLR 212

Applicant: PETER JOHN WILKSHIRE

Respondent: BOMBALA COUNCIL

File Number: CAG 21 of 2012

Judgment of: Neville FM

Hearing date: 2 October 2012

Date of Last Submission: 14 October 2012

Delivered at: Canberra

Delivered on: 15 March 2013

REPRESENTATION

Counsel for the Applicant: Self-Represented

Solicitors for the Applicant: Not applicable

Counsel for the Respondent: Mr G Blank

Solicitors for the Respondent: King & Wood Mallesons

ORDERS

1. The Application to Review, filed 30 April 2012, be dismissed.

2. The Applicant pay the Respondent’s costs, as agreed or taxed.

FEDERAL MAGISTRATES
COURT OF AUSTRALIA
AT CANBERRA

CAG 21 of 2012

PETER JOHN WILKSHIRE

Applicant

And

BOMBALA COUNCIL

Respondent

REASONS FOR JUDGMENT

1. On 12 April 2012, a Registrar of this Court ordered that a sequestration order be made against the estate of Mr Wilkshire and that costs be payable from that estate in the sum of $3553.00.  In the order of that date, the Court noted that the date of the act of bankruptcy was 26 September 2011.

2. On 30 April 2012, Mr Wilkshire filed an Application for Review of the Registrar’s order.  In that Application, Mr Wilkshire stated that he sought a decree or order in the following terms:

   An order is sought to strike out all the orders of Registrar Wall in that Registrar Wall found that Finn J, of the Federal Court, in the matter ACD 6 of 2009, acted on the merits of evidence appropriately.  Registrar Wall made a finding of fact or facts on an important issue which could not be supported by the evidence that was filed on the Court before him on 12 April 2012.

3. In response, the Council confirmed its intention to oppose the Application for Review on the following grounds:

   (1)    The Application for Review does not identify any basis as to why the sequestration order made by Registrar Wall, on 12 April 2012, should not be upheld.

   (2)    The Application for Review discloses no grounds that would justify or, with respect, provide this honourable Court with power to interfere with the decision of Finn J in Wilkshire v Registrar of Trade Mark (2009) FCA 1222, being proceedings before the Federal Court of Australia number ACD 6 of 2009 referred to in the Application for Review.

   (3)    Insofar as the Application for Review seeks to reargue a matter that is res judicata, this ground can be ignored, in particular, on the following grounds:

   (a)     The decision of Finn J in Wilkshire v Registrar of Trade Marks (2009) FCA 1222 was made after the full hearing of the matter on its merits and was litigated to judgment;

   (b)     The claim that Finn J in Wilkshire v Registrar of Trade Marks (2009) FCA 1222 made an incorrect finding of fact was dismissed by the Federal Court comprising Stone J in Wilkshire v Registrar of Trade Marks (2010) FCA 49.

   (4)    Even if the Applicant is successful in convincing this honourable Court to go behind the judgment of Finn J in Wilkshire v Registrar of Trade Marks (2009) FCA 1222, the Application for Review does not demonstrate that this course of action would result in the debt being extinguished or reduced below $2000.

   (5)    The Respondent says, in answer to the whole of the application for a review, that there are no grounds argued or made out that would result in the decision of Registrar Wall being overturned or amended in any way. 

4. In support of both the Application for Review and the opposition to that application, the Court has before it two affidavits from Mr Cottee, the general manager of Bombala Council; those affidavits were filed on 10 May and 16 August respectively.  The Court also has written submissions from Mr Wilkshire filed, respectively, 6 June 2012, 30 August, and 14 September 2012.  Although earlier written submissions were provided by the Respondent, amended written submissions were filed on 14 September 2012.  For the sake of completeness, I note that Mr Wilkshire has sent to the Court email correspondence dated 15 November 2012 which attaches to it a letter from IP Australia, dated 23 October 2012.

5. In short, I accept the grounds of opposition of the Respondent to Mr Wilkshire’s Application for Review to which I have just referred.  The reasons for that result I set out in detail below, which lead ultimately to the Court dismissing the Application for Review together with an order for costs either as agreed or taxed.

6. There are four aspects of the current Application which are addressed in the reasons that follow under the following headings:

   ·Background to Proceedings and Costs Orders against Mr Wilkshire

   ·Principles that Govern Going Behind a Judgment

   ·The Bankruptcy Proceedings

   ·Legal Principles with Respect to Review

Background to Proceedings and Costs Orders against Mr Wilkshire

1. I note that much of what follows draws, to a significant degree, from the detailed written submissions on behalf of the Respondent.  Because of their thoroughness both factually and otherwise, I accept by and large what those submissions say.

2. There are three decisions of the Federal Court which, in substance, Mr Wilkshire seeks to have this Court review or, more correctly, to go behind.

3. Those three decisions are of Finn J in Wilkshire v Registrar of Trade Marks (2009) FCA 1222 (“the Finn trade mark decision”); and in Wilkshire v Registrar of Trade Marks (No. 2) (2009) FCA 1505 (“the Finn costs decision”); and by Stone J in Wilkshire v Registrar of Trade Marks (2010) FCA 49 (“the Stone appeal decision”).

4. Initially, proceedings were commenced by Mr Wilkshire in which he sought to have rectified the trade marks register by cancelling the Council’s trade mark, no. 942740. Finn J dismissed those proceedings pursuant to section 31A of the Federal Court of Australia Act 1976 (Cth) on the basis that the application had no reasonable prospects of success. In that decision, his Honour identified the following grounds for dismissing Mr Wilkshire’s Application to cancel the Council’s trade mark:

   i)Mr Wilkshire was not a person aggrieved and therefore he did not satisfy the standing requirements under s.88 of the Trade Marks Act 1995 (Cth);

   ii)The application did no invoke a ground upon which the Court could order rectification by cancelling under s.88(1)(a) of the Trade Marks Act 1995 (Cth);

   iii)The undertakings that form part of the consent orders of 13 March 2007, agreed by the Applicant and the Respondent, could be relied upon as a complete defence to the prosecution of the Application.

5. In the Finn costs decision of December 2009, Finn J ordered that Mr Wilkshire pay the Council’s costs of the proceeding on an indemnity basis.  I might add here that all of the decisions to which reference has been made, namely, the two decisions of Finn J, and the further decision of Stone J sitting as the Full Court of the Federal Court, are annexed to the affidavit of Mr Cottee, filed on 10 May 2012.

6. Mr Wilkshire sought leave to appeal the Finn trademark decision on the basis that his Honour failed to take relevant matters into account or, alternatively, that his Honour took into account matters which were not relevant.  Mr Wilkshire submitted, among other things, that Finn J erred in taking into account evidence relating to the provenance of the Council’s trademark, and in particular, evidence that Australian Geographic redesigned and assigned the new logo shown in the mark 942740 to the Council on 28 April 1997.

7. On 4 February 2012, Stone J dismissed Mr Wilkshire’s application for leave to appeal the Finn trademark decision and ordered Mr Wilkshire to pay the Council’s costs on an indemnity basis.

8. On 21 December 2010 the Federal Court ordered Mr Wilkshire to pay the Council the sum of $107,400, being the Council’s costs of proceedings ACD 6 of 2009, and also the sum of $29,050.60, being the Council’s assessed costs of proceeding ACD 48 of 2009.  No appeal was taken by Mr Wilkshire against either of the costs orders.

Principles that govern ‘going behind a judgment’

1. It is clear, and I agree with the submission, that the Finn trademark decision was not a default judgment. 

2. Mr Wilkshire has consistently alleged that there has been impropriety on the part of either the Council and/or IP Australia in relation to matters that were the subject of the Finn trademark decision.  He further contends, for example, that Finn J made a decision based on evidence that was not before his Honour.  Mr Wilkshire submits that because (in his view) there was a fundamental flaw in the evidence (and in the conduct of the proceeding before Finn J), that tainted the original hearing before his Honour, and it has tainted all subsequent proceedings. 

3. However, as Counsel for the Respondent properly submitted, the matter of evidence (or lack thereof) was agitated before Stone J where her Honour was sitting as the Full Federal Court.  In that decision her Honour dismissed the Applicant’s Application for leave to appeal and ordered indemnity costs against the Applicant.

4. In light of the procedural and decisional circumstances and history I have outlined, and in accordance with relevant authority, Mr Wilkshire has to establish that the case relevantly and clearly involves fraud, collusion or some particular miscarriage of justice that would warrant this Court not only going behind the original judgment or judgments of Finn J but also the appeal judgment of Stone J.

5. Case law of long-standing makes plain that, particularly in circumstances where, as here, there has been a trial on the merits, and where both parties have appeared, “the court will not reopen the matter unless a prima-facie case of fraud or collusion or miscarriage of justice is made out.”[1]  In my view, Mr Wilkshire has not discharged that onus.  Moreover, not only has there been a trial, the trial Judge’s decision has been the subject of appeal, and that appeal dismissed.  Further, as noted below, the formal nexus between Finn J’s decision and the ground now agitated by Mr Wilkshire in this Court is not established.  Put another way, whether Mr Wilkshire’s assertion regarding evidence, and or an alleged flaw in the factual matrix of matters before Finn J be true or false, the alleged flaw was not part of, or legally relevant to, the ultimate decision of his Honour.  Unfortunately, there is an even greater problem for Mr Wilkshire to overcome in order for his application to succeed.

   [1] Corney v Brien (1951) 84 CLR 343 at pp. 347-348 (Dixon, Williams, Webb & Kitto JJ), pp.356-357 (Fullager J) (emphasis added). See also Wren v Mahony (1972) 126 CLR 212 at pp.221-225 (Barwick CJ).

6. In the hearing before me in October 2012, he confirmed that (a) the “issue” of alleged collusion between officers from IP Australia had been raised with Finn J, and (b) the same issue of ‘fraud/collusion’, together with his ‘freedom of information’ application to confirm what IP Australia relevantly had in relation to certain trade marks had been answered, were all put before Stone J.  With these matters having been raised before the Federal Court – at first instance, and on appeal – in my view, it is not now permissible for this Court to inquire into those same matters.  Whether they were the subject of formal determination by the Federal Court (which in fact they were not) is, essentially, of little moment (at one level) precisely because Mr Wilkshire had raised the issues in that Court, which he now seeks to have this Court review.  This course is not permissible.  Nor do the facts, procedural or decisional history bring the matter within any of the judicially sanctioned categories of “fraud, collusion or miscarriage of justice” so as to warrant this Court to go behind any of the decisions of the Federal Court of Australia.

7. Accordingly, in my view, because Mr Wilkshire has not established any prima facie case that there has been fraud, collusion or miscarriage of justice, it is proper that the Court order that his Application for Review be dismissed.  However, because of the range of matters that were canvassed both in oral argument and also in his written submissions, and also because Mr Wilkshire is a self-represented litigant, I propose to deal with the other matters raised in those submissions.  I seek to do so as briefly as possible.

8. Firstly, (as already noted) I agree with the submission on behalf of the Respondent that Mr Wilkshire’s contention that Finn J relied upon some erroneous, incomplete or otherwise allegedly ‘not present or available’ piece of evidence for his trademark decision, is itself erroneous.  A clear reading of his Honour’s reasons confirms that that was not the basis of his decision.

9. It is also clear that the evidence of who designed the Council’s trademark was raised in earlier proceedings before hearing officers at IP Australia.  And in the Finn J trademark decision, his Honour recounts evidence relating to the origin of the Council’s mark at paragraph 8.   As I say, I accept the Respondent's submission that Mr Wilkshire incorrectly contends that Finn J made a finding of fact on the evidence produced (or non-production of part of the evidence) in making the order for dismissal of Mr Wilkshire’s application.  There was no such “finding.”

10. The evidence considered and reported in Bombala Council v Wilkshire (2006) 69 IPR 315 and Wilkshire v Bombala Council (2009) ATMO 33 was recounted by way of background only by Finn J and was not a consideration relied upon by his Honour in dismissing the substantive proceedings. In the trademark decision, his Honour also noted, at [33], that by consenting to the dismissal of the application in proceedings number ACD 7/2006, Mr Wilkshire forfeited the opportunity to revisit the provenance of the trademark question. It was not open in those circumstances to Mr Wilkshire to re-litigate the origin of the mark in the Finn trademark decision. Indeed, (and also as previously noted) in that decision his Honour identified the following grounds for dismissal:

    a)Mr Wilkshire was not a person aggrieved and, as such, did not satisfy the standing requirement under s.88 of the Trade Marks Act 1995 (Cth);

    b)the Applicant did not invoke a ground upon which the Court could order rectification by cancelling under s.88 of the Trade Marks Act (Cth); and

    c)the undertakings that formed part of the consent orders of March 2007 could be relied upon as a complete defence to the prosecution of the Application.

11. His Honour also noted the following additional arguments for dismissal raised by the Applicant, but ultimately did not express any finding on the basis that the proceedings were dismissed on other grounds.  The additional matters noted by his Honour were:

    a)even if Mr Wilkshire’s allegation of dishonesty in the evidence were true (which was denied), it is apparent from the delegate’s decision that the subject evidence had no bearing on the decision to allow the mark to proceed to registration;  and

    b)the proceedings can be characterised as an abuse of process.

12. The evidence set out in Mr Wilkshire’s affidavit of 5 April 2012 and its attachments, the Application for Review, the outline of submissions and the additional material, all focus on disputing Finn J’s “finding” in relation to the provenance of the mark.  However, it is clear that the provenance of the Council’s mark is not relevant to any of the grounds for dismissal.  Accordingly, Mr Wilkshire has not identified any proper basis for overturning, otherwise altering, or establishing grounds that would entitle this Court to go behind the underlying decision.

The bankruptcy proceedings

1. On 6 June 2011, the Official Receiver issued a bankruptcy notice to Mr Wilkshire for $136,45.60 (being the total amount of the two costs orders).  The bankruptcy notice attached the two final costs orders made on 21 December 2010. 

2. On 5 September 2011, Mr Cottee personally served the bankruptcy notice on Mr Wilkshire.  Mr Wilkshire failed to comply with the bankruptcy notice, to satisfy the Court he had a counterclaim, set-off or cross-demand equal to or more than the sum claimed, or otherwise bring proceedings to set aside the bankruptcy notice within 21 days.  As such, the date of the act of bankruptcy, as recorded in the orders of Registrar Wall on 12 April 2012, was 26 September 2011.[2]

   [2] See s.40(1)(g) Bankruptcy Act 1966 (Cth).

3. An affidavit of search has been conducted of the records of the Federal Court of Australia and of this Court, and that affidavit, of Ms Pattison, sworn 2 March 2012, has been filed with the Court confirming that no applications have been filed in either of the Courts mentioned.

4. On 5 March 2012 the Council filed in the Federal Magistrates Court a creditor’s petition and affidavit in support sworn by Mr Cottee on 1 March 2012.  The hearing of the petition was set down for 12 April 2012.  On 21 March 2012 Mr Cottee personally served Mr Wilkshire with the creditor’s petition and affidavit in support, the affidavit of search of Court’s records, and affidavit of service of the bankruptcy notice. 

5. On 5 April 2012 Mr Wilkshire filed a notice of appearance, a notice stating grounds of opposition, and an affidavit sworn by him on 5 April 2012 in response to the creditor’s petition.  Mr Wilkshire opposed the Council’s petition on the grounds that:

   A significant error was made in that the judge who heard the original case made a finding of fact or facts on an important issue which could not be supported by the evidence. 

6. The Council submitted, and I accept, that from paragraph 6 to paragraph 19 of Mr Wilkshire’s affidavit, dated 5 April 2012, it appears that his opposition is based on the fact that his freedom of information requests to IP Australia, requesting evidence of the assignment of a platypus logo from Australian Geographic to Bombala Council, had produced no documents despite the reference to this assignment in [8] of the Finn trademark decision.

7. On 11 April 2012 Ms Pattison caused a search to be conducted of the National Personal Insolvency Index and found that there were no references to Mr Wilkshire in that index.  Ms Pattison swore an affidavit to this effect on 11 April 2012. 

8. On 12 April 2012, the day of the hearing of the creditor’s petition, the debt owed by Mr Wilkshire to the Council remained outstanding.  On 12 April 2012, as already mentioned, the Registrar ordered that a sequestration order be made against the estate of Mr Wilkshire.  The Registrar also made an order for costs to be paid out of Mr Wilkshire’s estate.

9. On 30 April 2012, Mr Wilkshire filed an Application for Review with this Court seeking an order to “strike out all the orders of Registrar Wall” on the basis that (as previously noted) “Registrar Wall found that Finn J of the Federal Court in the matter ACD 6 of 2009 acted on the merits of evidence appropriately.  Registrar Wall made a finding of fact or facts on an important issue, which could not be supported by the evidence that was filed in the Court before him on 12 April 2012.”

Legal Principles of Review of a Registrar’s Decision

1. Review of a Registrar’s decision is pursuant to s.104(2) of the Federal Magistrates Act 1999 (Cth) (“the FMC Act”), and Division 20.2 of the Federal Magistrates Court Rules 2001. Section 104(3) of that Act invests the Court with wide power to make such orders as the Court deems fit. Rule 20.03 provides, among other things, for such a review to be a hearing de novo, and that the Court may, with leave being granted, receive further evidence.

2. Further, the nature and conduct of a hearing de novo, as well as consideration of the amplitude of the Court’s power under s.104(3) of the FMC Act, are detailed in Totev v Sfar (2008) 167 FCR 193 at [9] – [15] (Emmett J); O’Meara v Hitwise Pty Ltd (2007) 160 FCR 518 (Kiefel, Sundberg & Gyles JJ); and Pattinson v Hadjimouratis (2006) 155 FCR 226 at [3] – [20] (Nicholson J) and at [39] ff (Jacobson J).  In Pattinson, at [43], Jacobson J said: “… the Federal Magistrates Court commences afresh without in any way being fettered by the decision of the Registrar. The review is a complete re-hearing in the exercise of the original jurisdiction of the Federal Magistrates Court. It is for the party seeking the sequestration order to satisfy the Federal Magistrate that all of the necessary conditions have been satisfied to warrant the making of a sequestration order ….”

3. The Council submitted, and again I accept the submission put, that Mr Wilkshire does not claim that the Council has erred in the procedural steps that it has taken in relation to the bankruptcy process.  No such issues are raised in any of Mr Wilkshire’s submissions - written or oral.  Rather, he seeks solely to challenge the underlying [trade mark] decision which underpins the relevant costs orders and, as such, the Council understands (and again I accept) that Mr Wilkshire is seeking an order that the sequestration order be set aside.  There is no suggestion that Mr Wilkshire is seeking to have the bankruptcy annulled.  Even though Mr Wilkshire has not raised any issues relating to procedural defects, I accept the submission that the Council has properly complied with all of the statutory requirements for the hearing of the creditor’s petition before the Registrar on 12 April 2012. 

4. The Respondent also acknowledges that for the hearing of the Application for Review, fresh affidavits of search and debt will need to be filed unless an order is made waiving compliance.[3]  The Council also submits that, apart from the issue of filing updated affidavits of search and debt, it has otherwise complied with all of the statutory requirements for the making of a sequestration order under the Bankruptcy Act 1966 and the Federal Magistrates Court Rules 2001 (and the Federal Magistrates Court (Bankruptcy) Rules 2006).[4]  I accept those submissions.  Given that Mr Wilkshire has not sought any orders to annul his bankruptcy, it is unnecessary for the Court to consider briefly those sections of the Bankruptcy Act that deal with procedural requirements in this regard.

   [3] I note that such affidavits were, in fact, filed on 5 October 2012.

   [4] In particular, see r.7.06 of the Federal Magistrates Court (Bankruptcy) Rules 2006 in relation to a review of a Registrar’s decision to make a sequestration order.  In relation to the current matter, the Court has on file a letter from the trustee of Mr Wilkshire’s estate, dated 27 September 2012, which confirms that the trustee did not propose to participate in the Application for Review.

5. In any event, I also accept that the relevant principles governing whether the Court should make an order annulling the bankruptcy or setting aside the sequestration order are relevantly set out in Kyriackou v Shield Mercantile Pty Limited (2004) 138 FCR 324 and the cases discussed therein by Weinberg J. In my view, no grounds have been established by Mr Wilkshire to annul or to set aside the sequestration order.

6. There is one final matter to observe.  It relates to a contention raised by Mr Wilkshire that in the course of proceedings between himself and the Council regarding trademarks he says that at one stage in 2007 there was an offer made by him to settle proceedings with the Council.  Mr Wilkshire further contends that in fact his then solicitors did not have actual authority to resolve the proceedings that ultimately were the subject of orders made by Bennett J.  However, as the Council submits, his solicitors at the time had ostensible authority and, therefore, there was nothing to put anyone on notice that they did not have relevant authority to act on Mr Wilkshire’s behalf.  Therefore the orders made by consent by Bennett J on 13 March 2007 were properly concluded and any relevance of that matter, vis-à-vis his former solicitors, properly are matters between him and them.  They have no relevance to the matters currently before this Court.

Conclusion

1. I accept the submission by the Council that it has taken all steps required and otherwise complied with all statutory requirements for the Court to make a sequestration order against the estate of Mr Wilkshire, apart from the filing of fresh affidavits of search and debt.  I accept the further submission that Mr Wilkshire has not demonstrated that there is a sufficient basis for the Court to go behind the Finn trademark decision.  Such a course is even more problematic, as already indicated, by virtue of the Finn trademark decision being the subject of an appeal before Stone J and that appeal being dismissed.  Even if the Court was minded to go behind any of the judgments to which reference has been made, I accept the submission, to which I have earlier referred, namely, that the matter complained of by Mr Wilkshire does not disclose any proper basis for overturning or altering the Finn trademark decision precisely because the issue complained of by Mr Wilkshire was not a matter directly relevant to his Honour’s decision. 

2. In all the circumstances, therefore, the Application for Review must be dismissed with an order for costs either as agreed or taxed.  The Court so orders.

I certify that the preceding forty-three (43) paragraphs are a true copy of the reasons for judgment of Neville FM

Date:  15 March 2013