JUDGMENT No. eee! wnt CATCHWORDS REGISTERED TRADE MARKS - Rectification of register - application under Trade Marks Act, 1955 (Cth) s.23 for removal from register for non-use - whether error at time of filing applications under 5.23 was "a mere misnomer" - whether applications under s.23 were made by a non-entity and should be treated as a nullity. PRACTICE AND PROCEDURE - application to amend the name of a party to proceedings under Federal Court Rules, 0.13 r.2(4) - Court has power to amend the name of a party to proceedings where there has been a mistake in the name or identity of a party. PRACTICE AND PROCEDURE - referral by Registrar of Trade Marks pursuant to s.23(6) of applications under s.23 to the Federal Court - whether Registrar of Trade Marks can amend applications under Trade Marks Act, 1955 (Cth) 8.127 after those applications have been referred to the Federal Court pursuant to s.23(6). ade th) ss. 23 a 1 RECEIVED Melbourne 17 OCT 1994 1 October 1994 FEDERAL COURT OF AUSTRALIA PRINCIPAL REGISTAY JUDGMENT NO. sosecnded eee! St... IN THE FEDERAL COURT OF AUSTRALIA ) VICTORIA DISTRICT REGISTRY ) GENERAL DIVISION ) No. VG 232 of 1994 BETWEEN: VULCAN HART CORPORATION Applicant - and - VULCAN AUSTRALIA LIMITED (ACH 004 235 605) Respondent Coram: Olney J Place: Melbourne Date: 7 October 1994 FEDERAL COURT OF MINUTE OF ORDER AUSTRALIA PRINCIPAL REGISTRY THE COURT ORDERS THAT: 1. The name of the applicant in the proceedings be amended to Hobart Corporation. 2. The applicant pay the respondent costs of the notice of motion of 28th September 1994; and reserved costs of 19 August 1994 and lst September 1994. 3. The applicant provide security for the respondent's costs in the sum of $20,000.00 representing the respondent's costs up to and including discovery and inspection, on or before 21 October 1994 in a form to be agreed between the —-2- parties and in default of agreement in a form approved by the Registrar of this Court. The respondent have liberty to apply for further security for its costs upon reasonable notice in writing as it may be advised. Should the applicant fail to comply with order 3 above the proceeding be thereafter stayed. The applicant pay the respondent's costs of and associated with the respondent's notice of motion dated 10 August 1994 insofar as such motion and costs relate to the respondent's application for security for costs. The respondent's notice of motion dated 10 August 1994 insofar as it applies for security for costs be otherwise adjourned to a date to be fixed. Subject to compliance with order 3 above: (a) the applicant file and serve an Amended Statement of Claim on or before 21 October 1994; (b) the respondent file and serve its Defence and any Cross-claim on or before 11 November 1994; (c) the applicant file and serve any Defence and Reply on or before 21 November 1994; (d) the parties exchange verified lists of discoverable documents on or before 9 December 1994 and provide -3- inspection thereof on or before 15 December 1994; the Directions Hearing fixed for 28 October 1994 be vacated and adjourned to 16 December 1994. 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 ) GENERAL DIVISION ) No. VG 232 of 1994 BETWEEN: VULCAN HART CORPORATION Applicant - and - VULCAN AUSTRALIA LIMITED (ACN 004 235 605) Respondent Coram: Olney J Place: Melbourne Date: 7 October 1994 REASONS FOR JUDGMENT Vulcan Australia Limited is the registered proprietor of trade marks A133243 and A1188368 (the trade marks). On 5 October 1992 applications (the s 23 applications) were made in the name of Vulcan-Hart Corporation for orders under s 23 of the Trade Marks Act that the trade marks be removed from the Register of Trade Marks in respect of all or any of the goods in respect of which they are registered. In each case the grounds of the application were: That up to one month before the date of this application a continuous period of not less than three years had elapsed during which the trade mark was registered as a trade mark and during which there was no use in good faith of the trade mark in relation to the goods for which it is registered by the registered proprietor or a registered user of the trade mark for the time being. Instructions for making the applications were received by an -2- Australian patent attorney from Premark International Inc of 1717 Deerfield Road, Deerfield, Illinois by letter dated 1 October 1992. Each application identified the applicant as ""Vulcan-Hart Corporation, of 3600 North Point Boulevard, Baltimore, Maryland, 21224, United States of America". On the same day as the s 23 applications were filed, a trade mark application (the trade mark application) was also filed in the name of Vulcan-Hart Corporation. Subsequently, on 26 October 1992 the patent attorney acting for the trade mark applicant made a statutory declaration, which was submitted to the Registrar of Trade Marks, declaring that he had been instructed by Premark International to file the trade mark application in the name of Vulcan-Hart Corporation, but had since been informed that the original instructions were incorrect, and that prior to the instructions being given to hin, Vulcan-Hart Corporation had merged into Hobart Corporation and the surviving corporation was known as Hobart Corporation of World Headquarters, Troy, Ohio, United States of America. He further declared that all of the trade marks formerly in the name of Vulcan-Hart Corporation had been assigned to Hobart Corporation and the organisation known as Vulcan-Hart Corporation was a division of Hobart Corporation, a wholly owned subsidiary of Premark Corporation Inc. An application to the Registrar of Trade Marks to amend the name of the applicant in the trade mark application to Hobart -3- Corporation, of World Headquarters, Troy, Ohio, 45374, United States of America, was allowed on 27 October 1992. No similar application was made in relation to the s 23 applications. On 16 June, 1994 the Assistant Registrar of Trade Marks, pursuant to a delegation by the Registrar of Trade Marks under 8 11 of the Trade Marks Act referred the s 23 applications to the Federal Court of Australia pursuant to s 23(6) of the Act. At a directions hearing in this Court on 15 July 1994 Jenkinson J ordered, by consent, that the title to the proceeding be Vulcan-Hart Corporation applicant, and Vulcan Australia Limited respondent. His Honour ordered that the applicant file and serve a statement of claim on or before 29 July 1994, On 10 August 1994 the respondent's solicitor filed a notice of motion seeking an order that the proceeding be struck out by reason of the applicant's failure to file a statement of claim as ordered by Jenkinson J on 15 July 1994, or in the alternative, an order for security for costs. A formal application seeking the removal of the trade marks from the Register of Trade Marks was filed in the Court on 19 August 1994, At the same time a statement of claim was filed. The heading in both documents shows Hobart Corporation -4- as the applicant. Paragraph 3 of the statement of claim pleads that "on and from 1 July 1990 the business and assets of Vulcan-Hart Corporation were merged with the business and assets of the applicant". On or about 9 September 1994 the applicant's solicitors made application to the Registrar of Trade Marks for the amendment of the applicant's name in respect of the s 23 applications. However, the Registrar was of the opinion that in the circumstances of the case, the appropriate venue for making those applications was the Federal Court. The matter presently before the Court is an application by way of notice of motion whereby the applicant seeks to substitute the name Hobart Corporation as the name of the applicant in the proceedings, or alternatively, for the Court to refer the application to the Registrar of Trade Marks. The Court has before it affidavit evidence, which is not challenged, establishing the following facts: 1. Hobart Corporation is a corporation organised and existing under and by virtue of the General Corporation Law of the State of Delaware. 2. Vulcan-Hart Corporation was formerly a _ corporation incorporated under the law of the State of Delaware. 3. With effect from 1 July 1990, pursuant to an agreement of -5-+ merger between Hobart Corporation and Vulcan-Hart Corporation the two corporations merged. The effect of a merger under s 259 of the General Corporation Law of Delaware is that: (a) all of the rights, privileges, powers and franchises as well as all property real and personal of the two participating corporations are vested in the participating corporation designated as the surviving corporation; and (b) after merger the separate corporate existence of the participating corporation not designated as _ the surviving corporation (the "non-surviving corporation") ceases and it no longer exists as a legal entity. Because it no longer exists as a legal entity, after a merger the non-surviving corporation can no longer take any corporate action or exercise any of the powers conferred on Delaware corporations by Section 121 and 122 of the Delaware General Corporation Law, which include "the power --. to sue and be sued in all courts ... in its corporate name". The surviving corporation of the merger was Hobart Corporation. The non-surviving corporation was Vulcan- Hart Corporation. Vulcan-Hart Corporation ceased to exist on 1 July 1990. -6- 7. Hobart Corporation is a wholly owned subsidiary of Premark International Inc. The original instructions given to the Australian patent attorneys whereby they were requested to file the s 23 applications and the trade mark application suggest that the applications should appropriately be made in the name of Vulcan-Hart Corporation, and this was duly done. When the error was detected by Premark International's legal advisers shortly after, the necessary information was conveyed to the Australian patent attorneys and an application to amend the trade mark application was made. The failure to make a similar application in respect of the s 23 applications is explained by the patent attorney then concerned with the matter as arising from the fact that each matter was dealt with as a separate file and that when the error in relation to the trade mark application was drawn to his attention it did not occur to him that steps should also be taken to amend the 8 23 applications. None of this evidence has been challenged and as it is not patently incredible, I accept it to be probative for the purposes of the present application. The Court's powers with respect to amendment are contained in Order 13 of the Federal Court Rules. Rule 2(4) provides that where there has been a mistake in the name or identity of a party, an amendment to correct the name of the party may be made notwithstanding that the effect of the amendment is to substitute another person as a party. -7- The Court has had the benefit of full submissions from counsel appearing for the parties. Numerous authorities have been canvassed. Without in any way intending to do an injustice to the arguments presented, it seems to me that in the facts of this case the question for decision is whether the error made at the time the s 23 applications were filed was a misnomer in the sense that the wrong name was used for the applicant party, or whether the applications were made by a non-entity, and thus should be treated as a nullity. This is not a case in which the applications have been made erroneously in the name of the wrong entity, nor is it a case in which there has been a mistake as to the standing or interest of the applicant to make the applications. No authority to which I have been referred is factually similar to the present case. However, the rule is well established that where there has been "a mere misnomer" (a term used by Walsh J in J. Robertson & Co Ltd (In Lig) v Ferguson Transformers Pty Ltd (1970) 44 ALJR 441) an amendment will be allowed. In Bridge Shipping Pty Ltd v Grand Shipping SA (1991) 173 CLR 231 Dawson J (in referring to rules of the Victorian Supreme Court which are relevantly similar to 0 13 r 2 of the Federal Court Rules) said at pp 238-9: What ia important is the distinction between the correction of a misnomer or misdescription, which was something dealt with by x 2 (now reflected in r 36.01), and the addition or substitution of parties for the parties originally joined, which was something dealt with by r.11 (now reflected in rr 9.05, 9.06 and 9.07). The correction of a misnomer or misdescription does not involve the substitution of a new party except in a technical or formal sense, since the party after the correction 1s the same person as was misnamed or misdescribed. In such a case, at least a matter of theory, no question of defeating a statute of limitations arises. -8- In Rainbow Spray Irrigation Pty Ltd v Hoette (21), Walsh J gave leave to amend the name of the plaintiff from "Rainbow Spray Irrigation Pty Limited" to "Rainbow Spray Sales Pty Limited", exercising the inherent power of the Court to do so. He remarked (22) that that power of amendment "may not be used go as to change the constitution of the action, to make it an action between different parties from those that were the parties to it before the amendment". He continued: "If this case ought to be regarded truly ase the substituting for one plaintiff of another plaintiff, then I think on the authorities, I would be bound to refuse it, but it is not clear that it ought to be so regarded I think I am entitled, in the circumstances of this case, to treat this as a case of correcting an error in naming the true plaintiff, and not as being at attempt to substitute one party for a different party. To put it another way, I think it can be said that one ought to consider the action, from the time of writ onwards, to have been and to have been intended to be an action by Rainbow Spray Sales Pty Ltd, but because of someone's error the wrong name was typed on the documents". His Honour continued at p 241: But the amendment of the parties for which r 36 provides is restricted to an amendment to correct a mistake in the name of a party. True it is that the correction of the mistake may result in the substitution of another person as a party, but this is permissible only if it is the result of the correction of an error in the naming of the true party. Although the question of limitation in the ordinary sense does not arise in this case, a similar issue is involved in that the basis of the s 23 applications is the assertion that there had been no use in good faith of the trade marks in relation to the goods for which they are registered in the period of 3 years preceding one month before the date of the applications. The case sought to be mounted is in respect of the claimed non use of the marks in the period of 3 years preceding 5 September 1992. True it is that fresh s 23 applications could be made in the name of Hobart Corporation, but they would have to relate to an entirely different period of time. -9- The first question requiring resolution is the identification of the "true party" to the application. I am satisfied that the true party, that is the party intended to be named as applicant, is the relevant subsidiary company of the parent corporation Premark International Inc. The evidence establishes that the relevant subsidiary was Hobart Corporation and that by mistake the name Vulcan-Hart Corporation was used in the original instructions conveyed to the company's Australian patent attorneys. I am satisfied that this is indeed a case of mere misnomer. Even in a case of a mere misnomer, the Court has a discretion. It must be satisfied that the other party will not be prejudiced by the amendment. Despite the vigorous assertions of counsel for the respondent to the contrary, the proposed amendment will not prejudice the respondent other than to permit the proceedings to continue as if the applicant had originally been correctly named. The respondent has not been misled as to the nature of the claim made by the applicant. Until it became aware of the misnomer it was conducting its affairs as if the s 23 applications were perfectly in order, and it is not prejudiced by being required to continue to do 80. The respondent has made a number of submissions suggesting matters adverse to the applicant which it is said should be taken into consideration by the Court in the exercise of its discretion. -10- First it is said that the applicant lacks bona fides. The respondent complains that the applicant "went behind the back" of the Court in seeking to have the Registrar amend the applications after they had been referred to the Court. In my opinion there is no substance in this complaint. Section 127 of the Trade Marks Act gives the Registrar a power of amendment and Uniglobe Holdings Pty Ltd v Uniglobe Travel (international) Inc 11 IPR 658 is a precedent for that power having been exercised by the Registrar in a case in which a s 23 application was at the same time referred to the Court pursuant to s 23(6). The facts in Uniglobe are not the same as in the present case but nevertheless I do not think that there was anything inappropriate about the applicant's approach to the Registrar. Second, the respondent complains that the applicant is in default in filing an amended statement of claim as ordered by Heerey J on 19 August 1994. Clearly, the default is excusable until the matter presently under consideration is resolved. It would be idle to insist that the applicant file an amended pleading. Third, there is the question of delay. The applicant's patent attorneys had known of the misnomer for nearly two years but did not until recently take steps to remedy the position. Be that as it may, the delay in bringing this application has not been shown to have caused the respondent any prejudice. -11- In my opinion there is nothing in the foregoing complaints that militates against the exercise of the Court's discretion to grant the application for the amendment of the applicant's name. Nor is there any substance in the submission that Hobart Corporation has not consented in writing to the application as required by O 6 r 8(2). The simple answer is that this is not an application made pursuant to 0 6 r 8 to add a party. It is an application to amend the name of a party under O 13. The respondent's final submission is equally lacking in merit. It is argued that the present application is in effect an appeal from the decision of Jenkinson J directing that Vulcan- Hart Corporation be named as applicant. The Court has clear authority to correct mistakes, including mistakes in the names of parties, and to seek to have the Court exercise that authority does not involve any challenge to the validity of the original direction given by Jenkinson J which was affected by the very mistake sought to be corrected. In the circumstances there will be order that the name of the applicant in these proceedings be amended to Hobart Corporation. I certify that this and the preceding 10 pages are a true copy of the Reasons for Judgment of the Honourable Mr Justice Olney Associate (Guobus Tres costo Dated: (* Ocbrtare_ 9 -12- Heard: 5 October 1994 Place: Melbourne Judgment: 7 October 1994 Appearances: Mr B. Caine (instructed by Mahony Galvin Rylah) appeared for the applicant. Mr G. McGowan (instructed by Davies Ryan De Boos) appeared for the respondent.