Woolworths Ltd v BP plc

Case [2006] FCAFC 52

FEDERAL COURT OF AUSTRALIA

Woolworths Ltd v BP plc [2006] FCAFC 52

TRADE MARKS – application for leave to appeal to Full Court from judgment of a single judge – opposition proceeding – where single judge ordered applications proceed to registration and marks subsequently registered – where no application for stay of single judge’s orders – whether obligation to register marks after judgment on appeal from Registrar’s decision under s 68(1)(b) – whether Full Court has power to rectify register through cancellation or removal of marks pursuant to Trade Marks Act, Federal Court of Australia Act or to preserve subject matter of appeal – exercise of discretion

TRADE MARKS – colour mark – test under s 41(6) – whether determine full scope of mark when applying s 41(6) – test for leave to appeal in an opposition to registration – failure to consider matters raised – leave to appeal granted

Trade Marks Act 1995 (Cth) ss 41(6), 65(5), 68(1)(b), 81, 84, 85, 195(2), 197
Federal Court of Australia Act 1976 (Cth) s 28

Trade Mark Regulations 1995 (Cth) reg 4.3, 7.1

BP plc v Woolworths Ltd (2004) 62 IPR 545, referred to
Johns v Australian Securities Commission (1993) 178 CLR 408, cited
Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494, applied
Kirin-Amgen Inc v Hoeschst Marion Roussel Ltd [2005] 1 All ER 667, applied
Kowa Company Ltd v NV Organon [2005] FCA 1282, referred to
Lomas v Winton Shire Council (2003) AIPC 91-839, applied
Mareva Compania Naviera SA v International Bulkcarriers SA [1980] 1 All ER 213, referred to
Renaud Cointreau v Cordon Bleu International (2001) 193 ALR 657, referred to
Ryanv Attorney-General for Victoria [1967] VR 514, referred to
Soncini v Registrar of Trade Marks (2001) 109 FCR 548, referred to
Tait v R (1962) 108 CLR 620, referred to
Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (2003) 132 FCR 326, referred to

WOOLWORTHS LTD v BP PLC

VID 1529 OF 2004

BLACK CJ, SUNDBERG AND BENNETT JJ
21 APRIL 2006
MELBOURNE


IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 1529 OF 2004

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

WOOLWORTHS LTD
APPLICANT

AND:

BP PLC
RESPONDENT

JUDGES:

BLACK CJ, SUNDBERG AND BENNETT JJ

DATE OF ORDER:

21 APRIL 2006

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:

1.The application for leave to appeal be granted.

2.The costs of the application for leave to appeal be reserved.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.


IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 1529 OF 2004

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

WOOLWORTHS LTD
APPLICANT

AND:

BP PLC
RESPONDENT

JUDGES:

BLACK CJ, SUNDBERG AND BENNETT JJ

DATE:

21 APRIL 2006

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

BLACK CJ

  1. This is an application by Woolworths Ltd (Woolworths) for…

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AGLC
Woolworths Ltd v BP Plc [2006] FCAFC 52
Case
[2006] FCAFC 52
Decision Date

CaseChat Overview and Summary

Woolworths Ltd brought an action against BP plc concerning the registration of certain trade marks. The dispute arose after the Registrar of Trade Marks decided to register BP's trade marks, which Woolworths had opposed. Woolworths appealed the Registrar's decision to the primary judge, who then dismissed the appeal. BP then applied to the Full Court for leave to appeal the primary judge's decision. The case before the court involved three key legal issues: first, whether the Registrar was obliged to register the trade marks after the primary judge's decision on appeal; second, whether the Full Court had the power to rectify the Register once the marks were registered; and third, if the Court had such power, whether it should exercise it as a matter of discretion.

The court examined section 68(1)(b) of the Trade Marks Act 1995 (Cth), which states that the Registrar must register an accepted trade mark if the decision on appeal is that the trade mark should be registered. BP argued that the term 'an appeal against the Registrar’s decision' referred only to the appeal directly from the Registrar to the primary judge. Woolworths, however, contended that the term should include an appeal from the primary judge. The court concluded that the term must be construed broadly to include any appeal against the Registrar’s decision, including appeals from the primary judge. Consequently, the obligation to register the trade mark does not arise until all possible appeals have been exhausted.

The court then addressed the power of the Full Court to rectify the Register to remove the registered marks. It concluded that once the marks were registered, the Full Court indeed had the power to rectify the Register. However, the court decided not to exercise this power as it did not see it as appropriate to do so in the circumstances of this case.

The final orders of the court were to grant the application for leave to appeal and to reserve the costs of the application for leave to appeal.

Orders

Orders of the court

1. The application for leave to appeal be granted.

2. The costs of the application for leave to appeal be reserved.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

BLACK CJ, SUNDBERG AND BENNETT JJ
The issues that have been raised are:(1)Whether because of s 68(1)(b) of the Trade Marks Act 1995 (Cth) the Registrar was obliged to register the mark after the decision on the appeal from the Registrar’s decision by the primary judge.(2)Whether, once the marks have been registered, the Full Court on appeal from the primary judge has power to rectify the Register. (3) If so, whether the Court should intervene as a matter of discretion.Must a trade mark be registered after the decision by the primary judge on appeal from the Registrar’s decision? Section 68(1)(b) of the Act provides that, if there has been an opposition, the Registrar must register an accepted trade mark ‘if the Registrar’s decision, or (in the case of an appeal against the Registrar’s decision) the decision on appeal, is that the trade mark should be registered’. BP’s submissions turn on the meaning of ‘an appeal against the Registrar’s decision’. Mr Shavin QC, who appears with Ms Schoff for BP, says that the only appeal against the Registrar’s decision is to the primary judge. After that decision, the Registrar was obliged to register the marks. Mr Catterns QC, who appears with Mr Burley for Woolworths, says that these words must include an appeal from the primary judge. “Appeal” is not defined in s 6 of the Act. Section 56 provides that an appeal lies to the Federal Court from a decision of the Registrar in opposition proceedings. Section 191 provides for the jurisdiction of the Federal Court with respect to matters arising under the Act and, specifically, jurisdiction to hear and determine appeals against decisions of the Registrar. The jurisdiction is to be exercised by a single judge (s 193). Except with the leave of the Court, an appeal does not lie to the Full Court against a judgment or order of a single judge exercising the jurisdiction to determine an appeal from decisions of the Registrar (s 195(2)). There is no limit in s 195(2) to the right to apply for leave to appeal. We are urged by Mr Shavin to construe the words ‘appeal against the Registrar’s decision’ narrowly so as to mean simply the appeal directly from the Registrar, in contrast to an appeal from the primary judge on appeal from the Registrar. Such a construction would deny the opportunity for leave to appeal provided in the Act to an unsuccessful opponent but not to an unsuccessful applicant. Indeed, if a narrow construction were applied, an application for a stay, if made, could not have been granted as there would have been a decision on appeal and the obligation to register the mark enlivened. That cannot have been intended. In our view, the reference in s 68(1)(b) to the decision on appeal against the Registrar’s decision must extend to any application for leave to appeal from the decision of the primary judge and the decision on any subsequent appeal, which is also, ultimately, an appeal against the Registrar’s decision. That is, the obligation to register does not arise until the appeal process has been exhausted.Does the Court have power to rectify the register to remove the registered marks?

Ratio Decidendi

Legal Principle Established

Established by: BLACK CJ, SUNDBERG AND BENNETT JJ

It is appropriate first to consider the consequences of registration of the opposed marks and whether the appeal is a nullity.ISSUES ARISING FROM THE REGISTRATION OF THE TRADE MARKS The issues that have been raised are:(1)Whether because of s 68(1)(b) of the Trade Marks Act 1995 (Cth) the Registrar was obliged to register the mark after the decision on the appeal from the Registrar’s decision by the primary judge.(2)Whether, once the marks have been registered, the Full Court on appeal from the primary judge has power to rectify the Register. (3) If so, whether the Court should intervene as a matter of discretion.Must a trade mark be registered after the decision by the primary judge on appeal from the Registrar’s decision? Section 68(1)(b) of the Act provides that, if there has been an opposition, the Registrar must register an accepted trade mark ‘if the Registrar’s decision, or (in the case of an appeal against the Registrar’s decision) the decision on appeal, is that the trade mark should be registered’. BP’s submissions turn on the meaning of ‘an appeal against the Registrar’s decision’. Mr Shavin QC, who appears with Ms Schoff for BP, says that the only appeal against the Registrar’s decision is to the primary judge. After that decision, the Registrar was obliged to register the marks. Mr Catterns QC, who appears with Mr Burley for Woolworths, says that these words must include an appeal from the primary judge. “Appeal” is not defined in s 6 of the Act. Section 56 provides that an appeal lies to the Federal Court from a decision of the Registrar in opposition proceedings. Section 191 provides for the jurisdiction of the Federal Court with respect to matters arising under the Act and, specifically, jurisdiction to hear and determine appeals against decisions of the Registrar. The jurisdiction is to be exercised by a single judge (s 193). Except with the leave of the Court, an appeal does not lie to the Full Court against a judgment or order of a single judge exercising the jurisdiction to determine an appeal from decisions of the Registrar (s 195(2)). There is no limit in s 195(2) to the right to apply for leave to appeal. We are urged by Mr Shavin to construe the words ‘appeal against the Registrar’s decision’ narrowly so as to mean simply the appeal directly from the Registrar, in contrast to an appeal from the primary judge on appeal from the Registrar. Such a construction would deny the opportunity for leave to appeal provided in the Act to an unsuccessful opponent but not to an unsuccessful applicant. Indeed, if a narrow construction were applied, an application for a stay, if made, could not have been granted as there would have been a decision on appeal and the obligation to register the mark enlivened. That cannot have been intended. In our view, the reference in s 68(1)(b) to the decision on appeal against the Registrar’s decision must extend to any application for leave to appeal from the decision of the primary judge and the decision on any subsequent appeal, which is also, ultimately, an appeal against the Registrar’s decision. That is, the obligation to register does not arise until the appeal process has been exhausted.Does the Court have power to rectify the register to remove the registered marks?