Intellectual Property – Trade Marks – Appeal and cross-appeal from Registrar’s decision to remove various registrations either wholly or partly – negotiated settlement – importance of maintaining integrity of the Register of Trade Marks in requiring submissions but no hearing on the merits
The respondent, VUR Village Trading No 1 Limited, brought non-use actions before the Registrar of Trade Marks pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (the Act) against three registrations owned by the appellant, Village Roadshow IP Pty Ltd, for the following Trade Mark in classes 9, 35 and 41 (each a VRIP Registration):
The Registrar’s delegate determined that the Trade Mark had not been used in respect of any of the goods in the class 9 VRIP Registration and had not been used in respect of certain services in the class 35 and 41 VRIP Registrations during the non-use period. Having declined to exercise her discretion under s 101(3) of the Act, the Registrar ordered the removal of the class 9 VRIP Registration and the partial removal of the class 35 and class 41 VRIP Registrations. VUR Village appealed and Village Roadshow cross-appealed (seeking full removal).
On the eve of the trial, the Court was notified that the parties were negotiating a settlement and ultimately notified the Court that they consented to the making of orders that Village Roadshow’s appeal be allowed, and that VUR Village’s cross-appeal be dismissed – leaving the VRIP Registrations undisturbed on the Register. Having been asked by the parties, the Registrar indicated she did not see any obstacle in the way to proceeding with the proposed court orders. But the Registrar had taken no active step in the proceeding.
Justice O’Callaghan observed that the factual circumstances of this case were similar to that in Hungry Spirit Pty Limited ATV The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883, where Justice Burley required the appellant to file written submissions in support of orders sought, rather than simply making orders despite the earlier decision of the delegate. Justice O’Callaghan said that the principal reason why it is appropriate to require such submissions is that the court needs to be satisfied that orders which have the effect of reversing a decision of the Registrar without a hearing on the merits do not undermine the integrity of the Register of Trade Marks. Therefore, Village Roadshow volunteered to file written submissions in support of the orders that were sought by consent.
Justice O’Callaghan also noted the comments of French CJ, Gummow, Heydon and Bell JJ in Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; (2010 240 CLR 590 at 597 [22] that it is a public mischief if the Register is not pure. Citing Austin Nichols & Company Inc v Lodestar Anstalt (No 1) [2012] FCAFC 8; (2012) FCR 490 at 498 [38] (Jacobson, Yates and Katzmann JJ), his Honour noted that removal provisions in the Act are designed to protect the integrity of the Register and the interests of consumers.
Following the reasoning in Hungry Spirit, reasoning that was itself adopted by Thawley J in Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 at [23]-[27], Justice O’Callaghan determined that it was appropriate to make the orders sought for the following reasons. First, VUR Village, as the moving and successful party, consented to the making of the orders setting aside the delegate’s decision. Secondly, the Registrar did not oppose the making of the orders. Thirdly, the Registrar’s finding of non-use was not a bar to the Court allowing Village Roadshow’s appeal. Fourthly, the evidence that was proposed to be called by Village Roadshow at the hearing before Justice O’Callaghan was different to that which was put before the delegate, and neither party contended that the discretion to allow the Trade Mark to remain registered should not apply in favour of Village Roadshow. Notably, none of these matters indicated that the Registrar’s earlier decision was wrong, but they were sufficient to justify overturning the decision.
The authors wonder about the outcome if the evidence before the Court was no different to that before the Registrar. There seems a risk in those circumstances that the Court could say that the integrity of the Register must take precedence and without additional evidence, the Registrar’s decision must stand. However, it may be noted that in the Hungry Spirit case, orders setting aside the Registrar’s decision were made before any evidence had been filed. In any event, the case shows that mutual consent alone is not enough to obtain orders from the Court and submissions ought be filed to explain why no hearing on the merits is required.
