Woolworths Ltd v BP plc

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.