NOT _FOR GENERAL DISTRIBUTION "—— JUDGMENT No. @2.Q./.2-1. IN THE ERAL COURT OF AUSTRAL VICTORIA DISTRICT REGISTRY GENERAL DIVISION V. No. G 431 of 1986 wwe rw PINEX PTY. LTD. Applicant and PINEX PTY. LTD. and OTHERS Respondents COURT: NORTHROP J. DATE : 13 NOVEMBER 1987 PLACE: MELBOURNE MINUTE OF ORDER THE COURT ORDERS THAT the motion for an order that the applicant's solicitors continually inform the Registrar of Trade Marks of the progress of the actions herein, including any details of proposed settlement agreements, be rerused. (Settlement and entry of Orders is dealt with in 0.36 of the Rules of Court.) a <4 FADERAL cou ~ A AUSTAALIAT OF Ay Wet 5 = NCIRAL 2 Flotui 6 oN aN "NGS IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V. No. G 431 of 1986 G DIVISION BETWEEN : PINEX PTY. LTD. Applicant and PINEX PTY. LTD. and OTHERS Respondents COURT: NORTHROP J. DATE : 13 NOVEMBER 1987 PLACE: MELBOURNE REASONS FOR JUDGMENT The 1ssue raised on the motion before the Court 15 whether the Registrar of Trade Marks ("the Registrar") should be made a party to proceedings in the Federal Court in which a party is seeking orders to rectify the Register of Trade Marks ("the Register") under the Trade Marks Act 1955. The proceedings were commenced before 1 September 1987, being the date the amendments made to the Trade Marks Act by the Jurisdiction of Courts (Miscellaneous Amendments) Act 1987 came into operation; see sections 3 and 5 of that Act. Thus, it must be remembered that references to the Trade Marks Act will be to that Act as it was before it was amended by the Act of 15987. Unless care 1s taken, confusion will arise in this matter because the names of some of the parties to this proceeding are identical. In an attempt to avoid that confusion, in these reasons the applicant Pinex Pty. Ltd. shall be called "the person aggrieved" and the respondent Pinex Pty. Ltd. and its related companies shall be called "the registered proprietor." By application dated 24 December 1986, the person aggrieved commenced proceedings in the Federal Court against the registered proprietor seeking orders under the Trade Practices Act 1974. The object of the orders sought was to prevent the registered proprietor from using the word "Pinex" un connection with its business of dealing with timber products. In addition, pursuant to the accrued jurisdiction of this Court, the person aggrieved claimed relief based on the tort of passing off. As a result of interlocutory steps in that proceeding, the registered proprietor sought orders against the person aggrieved including orders based upon breaches of the Trade Marks Act. In this regard, the registered proprietor relied upon the accrued jurisdiction of this Court and also its associated jurisdiction under s.32 of the Federal Court of Australia Act 1976, since, for the purpose of the proceeding, this Court was not a "prescribed court" within the meaning of those words as set out in sub-section 6(1) of the Trade Marks Act. Further, the proceeding, not being in the nature of an appeal, did not constitute the Federal Court a prescribed court by reason of s.6A of the Trade Marks Act. The basis for the orders sought by the registered proprietor was that it was registered as the proprietor of the trade mark "Pinex" being trade mark nos. A78,141, A3986543 and A386544 1n Part A of the Register in Classes 19, 18 and 20 respectively; and that the person aggrieved, 1n using the mark "Pinex", was infringing the rights of the registered Proprietor under the Trade Marks Act. In answer to the claims of the registered proprietor, the person aggrieved alleges that each of the three trade marks constitutes "an entry wrongly made and/or wrongly remaining in the Register" and is seeking an order that each of the three trade marks be removed from the Register in respect of all goods and services in respect of which each 15 registered. The order sought by the person aggrieved 1s based upon s.22 of the Trade Marks Act. The relevant parts of that section are set out:- "22. (1) Subject to this Act, a prescribed court may, on the application of a person aggrieved or of the Registrar, order the rectification of the Register - (a) «es (b) by the expunging or amendment of an entry wrongly made in or remaining in the Register; ... (3) The power to order the rectification of the Register conferred by this section includes power to order the removal of a registration in Part A of the Register to Part B of the Register. (4) The Registrar shall not make application to a prescribed court under this section unless he considers the application desirable in the public interest. (5) Notice of an application to a prescribed court under this section (other than an application by the Registrar) shall be given to the Registrar, who may appear and be heard and shall appear if so directed by the prescribed court. (6) An office copy of an order under this section shall he served om the Registrar, who shall, upon receipt of the order, take such steps as are necessary to give effect to the order." At a directions hearing held on 7 August 1987, the Court, as presently constituted, queried whether notice of the orders sought by the aggrieved person had been given to the Registrar. Apparently no notice had been given. By letter dated 24 August 1987, the solicitors for the aggrieved person gave notice of the proceeding to the Registrar and sought his advice. By letter dated 11 September 1987, the Registrar replied, in substance as follows:- "T am now 1m a position to respond to your request for advice on the Registrar s position in relation to these proceedings. Unless required by the Court to do so, the Registrar would not wish to be involved 1n the rectification proceedings. He would, however, wish to be kept informed of the progress of the matter, including any details of Proposed settlement agreements." By motion, notice of which 1s dated 22 September 1987, the person aggrieved sought a number of orders including the following:- "Le That the Applicant's Solicitors continually inform the Registrar of Trade Marks of the progress of the actions herein including any details of proposed settlement agreements." On 25 September 1987, the Court, as presently constituted, gave a number of directions in the proceeding but declined to make the order numbered 1 as set out without hearing submissions from the Registrar. In particular, the Court desired to hear submissions on whether the Registrar should be made a party to the proceeding. On 23 October, the Registrar made submissions by counsel to the effect that he should not be made a party to the proceedings. This 1S not the case for the Court to give detailed consideration to the practice and procedure to be followed in this Court in proceedings involving what are now described as "intellectual property laws"; see the side-note to s.5 of the Jurisdiction of Courts (Miscellaneous Amendments) Act 1987. Previously, those laws seem to have been described as laws involving "industrial property", see, for example, the High Court Rules and in particular Orders 66, 66A and 66B of those Rules. Prior to 1 February 1977, the jurisdiction to order the rectification of the Register under s.z2 of the Trade Marks Act was vested inthe High Court. Following the creation of the Federal Court, that jurisdiction was vested in prescribed courts; see the Trade Marks Amendment Act 1976. Those amendments gave effect to part of the then new policy adopted by Parliament with respect to the courts exercising jurisdiction in intellectual property matters. The policy has been changed further; see the Jurisdiction of Courts (Miscellaneous Amendments) Act 1987. Some aspects of these policies are discussed by me in R.D. Werner & Co. Inc. v. Bailey Aluminium Products Pty. Ltd., unreported, 4 November 1987. Under the High Court Rules, an application for an order under s.22 of the Trade Marks Act was commenced by motion; see 0.66B and in particular r.4(1). Notice of the application had to be given to the Registrar; r.5. Under r.9(1) the Registrar was empowered to appear and be heard in proceedings before the Court and this included an application under s.22, see definition of "proceeding" in r.l, but he was "not (to) be deemed to be a party to the proceedings except in the case of an appeal from a decision, determination, order or direction of the Registrar of Trade Marks not affecting a person other than the appellant." Under rules 9(2), (3) and (4), the Registrar was empowered to submit to the Court a statement in writing. If he did so, he had to give copies of the statement to the parties. The Court was empowered to make such use of the statement as 1t thought just. In The Shell Company of Australia Ltd. v. Rohm and Haas Co. (1949) 78 C.L.R. 601, comment was made on the question of whether the Registrar should be made a party to an application for rectification of the Register. The judgment appears to have been given before 0.66B was inserted into the High Court Rules. The Act under consideration in that case was the forerunner of the current Trade Marks Act but the relevant provisions were the same. The Registrar had been named as a party to the application. At p.622, Latham C.J. said:- "Section 71(1) (of the Trade Marks Act 1905-1936) provides that the Court, on the application of any person aggrieved or of the registrar, may order the rectification of the register. Section 71(3) provides that 'Notice of every application to the Court pursuant to this section (other than an application by the Registrar) shall be given to the Registrar, who may be heard thereon.' The registrar should not be made a party to an application by a 'person aggrieved' but notice of such an application should be given to him." At p.630, Dixon J. said:- "The Registrar of Trade Marks raised a point of practice for our consideration. He had been made a party both to the motion for rectification and to the appeal. He suggests that s.71(3) does not intend that he shall be a party on the record, but rather that he shall be notified and shall have aright to be heard if he thinks 1t desirable to bring any matter or views to the notice of the court. I think that the better practice 1s in accordance with his suggestion." It 15 apparent that these views were considered when the Justices of the High Court made 0.66B, as well as 0.66 and 66A of the High Court Rules. The practice in the High Court was that normally the Registrar was not a party to an application under s.22 of the Trade Marks Act. The High Court Rules are silent on whether the Registrar had to enter an appearance before exercising the power conferred by 0.66B r.3. Following the amendments made to the Trade _ Marks Act in 1977, the Judges of the Supreme Court of Victoria made the Supreme Court (Industrial Property) Rules 1381; see Chapter VIII of the Supreme Court Rules. Those rules are Similar to the corresponding High Court Rules. Applications to the Supreme Court under s.22 or the Trade Marks Act were to be by motion on notice; (VIII 4.1). Notice of the application had to be given to the Registrar; (VIII 4.2) who was to be served with every affidavit to be used by a party; (VIII 4.4). The provisions of VIII 4.6 are almost identical to the provisions of 0.66B r.9 of the High Court Rules, but the Victorian Supreme Court Rules do not provide that that Court may make such use of the statement as 1t thinks just. The Victorian Rules are silent on whether the Registrar 15 required to enter an appearance before he can appear and be heard on an application. Presumably, under the Victorian Rules, the Registrar was not made a party to the proceedings. At the present time, the Judges of the Federal Court have not made rules with respect to intellectual property. In these circumstances, there 1s much to be said for the view that past practice should be followed and, on the facts of this case, the Registrar should not be made a Party to the proceeding. At the same time, it 15 noted that in F.H. Faulding & Co. Ltd. v. Imperial Chemical Industries of Australia and New Zealand Ltd. (1365) 112 C.L.R. 537, ina case where the defendant to proceedings in the High Court counter-claimed, seeking an order under 5.22 of the Trade Marks Act expunging the plaintiff's trade mark from the Register, the trial Judge, McTiernan J., said at p.539 that a counter-claim was not the appropriate way of applying for that relief. Subsequently, the defendant gave notice of a motion seeking similar relief and the issue was tried on that procedure. This aspect was not argued before me and I make mo comment on the proper procedure to be adopted in this proceeding. In each of the High Court Rules and the Victorian Supreme Court Rules provision 18S made under which notice of the application can be given by post directed to the office of the Registrar. In the light of those provisions, there is much to be said for the view that the Registrar should not he required to enter an appearance before appearing and being heard during the hearing of the application. - 10 - Accordingly, I hold that the Registrar need not he made a party to this proceeding. Nevertheless, the person aggrieved must give notice of his application under 5.22 of the Trade Marks Act to the Registrar. In the circumstances of this case, it 1S not appropriate that the Court should make the order sought in the motion, but this does not mean that as a matter of prudence, the solicitors for the person aggrieved should not keep the Registrar informed of what 15 happening. The solicitors should do that, but 1t 1s not for the Court to direct the solicitors to do that. In the result, I refuse to make the order numbered 1 in the notice of motion dated 22 September 1987. I certify that this and the me (a) Preceding pages are a true copy of the Reasons for Judgment herein of the Honourable Mr. Justice i Norhrey 'Sharon p AnJLsi0/1 Associate Dated: 13 Kouewber 198 - Sore ese. -- * eat