JUDGMENT No. 104 /23_. CATCHWORODS TRADE MARKS ~ Federal Court of Australia - Jurisdiction - "appeal" from decision of Registrar of Trade Marks - decision made prior to commencement of Jurisdiction of Courts (Miscellaneous Amendments) Act 1987 - transitional provisions - whether "appeal" is commencement of an "action of proceeding" - Jurisdiction of Courts (Miscellaneous Amendments) Act 1987, 5.5 - Trade Marks Act 1955, sub-s.23(7). Jurisdiction of Courts (Miscellaneous Amendments) Act 1987, 5.5 Trade Marks Act 1955, sub-s.23(7) The Queen v Quinn; Ex parte Consolidated Foods Corporation (1977) 138 CLR 1 Farbenfabriken Bayer Aktiengesellischaft v Bayer Pharma Pty Ltd (1959) 101 CLR 652 Gardner v Lucas £18781 3 App. Cas. 582 Quilter v Mapleson (1882) 9 QBD 672 Attorney-General v Vernazza £19601] AC 965 Maxwell v Murphy (1956-7) 96 CLR 261 Republic of Costa Rica v Erlanger (1876) 3 Ch.D. 62 i . v Irving (1905) AC 369 Worrall] v C rcial king Co. of Sydney Limited (1917-18) 24 CLR 28 T Aust i L v Registrar of Companies €19691 VR 821 Hutchinson v Jauncey £1950] 1 KB 574 FOODLAND ASSOCIATED LTD v JO WEEKS PTY LTD NO. WAG 1 of 1988 LEE J. PERTH 15 APRIL 1988 IN 'THE FEDERAL COURT OF AUSTRALIA WESTERN AUSTRALIA DISTRICT REGISTRY GENERAL DIVISION we we NO. WAG 1 of 1988 BU TWEEN: FOODLASD ASSOCIALED LTD Applicant and JOHN WEEKS PTY LTD Respondent CORAM: LEE J. 15 April 1988 REASONS FOR JUDGMENT The applicant seeks to have a decision of the Registrar of Trade Marks reviewed by this Court. A preliminary question has arisen as to whether the Court has received jurisdiction pursuant to the Jurisdiction of Courts (Miscellaneous Amendments) Act 1987 to review a decision made upon an application to the Registrar commenced in October 1985. Both the applicant and respondent contend that the Court has such jurisdiction. On 25 October 1985 the applicant applied to the Registrar of Trade Marks for the removal of the respondent's registered trade mark from the Register of Trade Marks in respect of all the services in respect of which it was registered in 50 far as the State of Western Australia was concerned. The application was heard by the Chief Assistant Registrar of Trade Marks oni1l September 1987. Her decision, ee er oy ed which stands as the decision of the Reqistrar., was published on 16 December 1987. Although the hearing and decision may have exhibited some of the indicia of the exercise of a judicial function - ancluding the use of a power to award costs - such a proceeding has been held to be only the exercise of an administrative power - see The Queen v Quinn; Ex parte Consolidated Foods Corporation (1977) 138 CLR l. In addition to administrative powers granted to the Registrar, the Commonwealth conferred judicial power upon the Supreme Courts of the States to determine issues of right between parties with respect to the registration of trade marks. Such judicial power was exercised pursuant to a grant of original jurisdiction, notwithstanding that 1n some cases the proceedings in that jurisdiction were called an "appeal". - see Farbenfabriken Bayer Aktiengesellschaft v Bayer Pharma Pty Ltd (1959) 101 CLR 652 at 657 per Dixon CJ. On 1 September 1987 the manner of exercise of an "appeal" from a decision of the Registrar, and the grant of original jurisdiction to determine such an issue, were altered by the provisions of the Jurisdiction of Courts Miscellaneous Amendments) Act 1987. On that day amendments to the Trade Marks Act 1955 contained in the former Act became operative. Those amendments removed part of the grant of jurisdiction to the Supreme Courts af the States and conferred exclusive qurisdictian - subject to the jurisdiction of 'he High Court under 5.75 of the Constitution - on the Federal Court of Australia ain respect of appeals from decisions, directions or orders of the Registrar. Where an enactment introduces new procedural provisions, such provisions will apply to pending actions unless a contrary intention is clearly expressed or implied - see Gardner v Lucas £18781 3 App. Cas. 582, 603 (HL); Quilter v Mapleson (1882) 9 QBD 672; Attorney-General v Vernazza [1960] AC 965; Maxwell v Murphy (1956-7) 96 CLR 261. A party cannot acquire a vested right in a course of procedure - see Republic of Costa Rica v Erlanger (1876) 3 Ch. OD. 62 per Mellish Ld at p.69. However if aright of appeal, or aright to have an issue determined, has been abrogated, there is a presumption that such legislation does not apply to pending actions or matters unless clear words, or a necessary implication to that effect, are contained in the amending provisions - see Colonial Sugar Refining Co. Ltd. v Irving (1905) AC 369; Attorney-General v Vernazza (supra) per Lord Denning at p.977. Perhaps 1t may be thought that the amendments to the Trade Marks Act 1955 did not extinguish or modify any accrued right of "appeal" but merely changed the forum for the exercise of 4. such a right, and, therefore, the amendments affected procedure only and did not affert an existing right to seek judicial review of a decision of the Registrar. However,an observation to the contrary was made by Lord Macnaghten in Colonial Sugar Refining Co. Ltd. v Irving (1905) AC 369 at p.372-3. His Lordship reached his conclusion in the absence of the Legislature's "express enactment or necessary intendment" that the Act should operate retrospectively or otherwise (at p.372). In any event, although opposite presumptions will be applied according to whether the amendments relate to substantive law or matters of procedure, either presumption will give way to a clear intention of Parliament found in the words used in the amending provisions. As was noted in Worrall v Commercial Banking Co. of Sydney Limited (1917-18) 24 CLR 28 at 31, per Barton, Isaacs and Rich J.J., "The distinction between 'rights' and ''procedure' is only an aid to interpretation and not the test. The test is: What did the Legislature mean when its words are read, after giving due weight to every relevant consideration?" Section 5 of the Jurisdiction of Courts (Miscellaneous Amendments) Act 1987 expressly stated that the amendments to the Trade Marks Act 1955 apply only in relation to "actions or proceedings" commenced after the commencement of the amendment - 1 September 1987. The question to be answered is what meaning has the legislature attributed to the words "actions and proceedings". Each of the amendments referred ro dealt solely and specifically with the removal of the jurisdiction of Supreme Courts of the States and the grant of equivalent jurisdiction to the Federal Court. They did not affect the conduct of applications to the Registrar in any way. Therefore, 1t may be seen that the words "actions or proceedings" are intended to apply only to the actual litigious steps capable of invoking the jurisdiction of a Supreme Court prior to the operation of the amendments. There was a clear legislative intention that if the jurisdiction of a Supreme Court had been activated already by the commencement of a proceeding it would be preserved as far aS was necessary to allow that Court to complete that pending matter or matters. If the potential jurisdiction of a Supreme Court had not been utilized before 1 September 1987 by the commencement of proceedings in that Court, that potential jurisdiction would be replaced by the jurisdiction of the Federal Court - see Total (Australia) Ltd v Reqistrar of Companies [1969] VR 821. A broader interpretation of the words "actions or proceedings" to include applications made to a Registrar under the Trade Marks Act 1955 seeking administrative decisions would have the effect of retaining a repealed procedure for future judicial "appeals" from those decisions and would not be consonant with the purpose of the Jurisdiction of Courts (Miscellaneous Amendments) Act 1987 - see Hutchinson v Jauncey £1950] 1 KB 574 at p.582 per Evershed MR. It 1s not necessary to apply such a_ broad interpretation to obtain a sensible construction of the Act. In the case before me, although the application to the Reqistrar was commenced in October 1985, the hearing of the application before the Chief Assistant Registrar and the decision of the Chief Assistant Registrar, were both events that occurred after 1 September 1987. For the purposes of the Jurisdiction of Courts (Miscellaneous endments) Act 1987 the institution of an "appeal" against that decision would be the commencement of an "action or proceeding" and, therefore, the procedure for such an appeal must be that provided by the amendments to the Trade Marks Act 1955, operating from 1 September 1987, which vest jurisdiction in such matters in the Federal Court. Having been requested by the parties to determine this matter as a preliminary question, I hold that this Court has jurisdiction to hear this "appeal" and has exclusive jurisdiction in that regard. 7. T certify that the preceding 51x (6) pages are a true copy of rhe Reasons for Judqment of nis Honaur Justice Lee. Associate: fara Catull pate: (St Apré , 198% Counsel for the Applicant: Mr C. Carr Solicitor for the Applicant: Mr C. Carr Counsel for the Respondent: Mr R. Hayes with Mr M. Corboy Solicitors for the Respondent: Mallesons Stephen Jaques Miss Evans appeared for the Registrar of Trade Marks Date of Hearing: 8 March 1988 Date of Judgment: 8 March 1988