FEDERAL COURT OF AUSTRALIA Structureco Inc v Registrar of Trade Marks [2003] FCA 1290 TRADE MARKS – Application for removal for non‑use – Opposition – Applicant requests Registrar to summon declarant in removal proceedings to give evidence and to require registered owner to produce documents – Registrar issues summons and notice – Registered owner seeks review of Registrar's decisions to issue summons and notice. Administrative Decisions (Judicial Review) Act 1977 Trade Marks Act 1995 ss 92(4)(b), 153, 154, 202, 203 Trade Marks Office Manual of Practice and Procedure Part 54 Kidax Ltd's Applications [1959] RPC 167 cited Sixth Ravini Pty Ltd v Commissioner of Taxation (1985) 6 FCR 356 considered May v Commissioner of Taxation (1999) 92 FCR 152 cited Allen, Allen & Hemsley v Deputy Commissioner of Taxation (1988) 88 ATC 4734 considered Minosea Pty Ltd v Australian Securities Commission (1994) 14 ACSR 642 considered Minister for Aboriginal Affairs v Peko‑Wallsend Ltd (1986) 162 CLR 24 applied Deloitte Touche Tohmatsu v Deputy Commissioner of Taxation (1998) ATR 435 considered GS Technology Pty Ltd v Commissioner of Patents (1997) 39 IPR 583 cited Lucas Industries Ltd v Hewitt (1978) 18 ALR 555 applied STRUCTURECO INC v THE REGISTRAR OF TRADE MARKS and STARITE DISTRIBUTORS PTY LTD V 572 OF 2002 SUNDBERG J 12 NOVEMBER 2003 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V 572 OF 2002 BETWEEN: STRUCTURECO INC APPLICANT AND: THE REGISTRAR OF TRADE MARKS FIRST RESPONDENT STARITE DISTRIBUTORS PTY LTD SECOND RESPONDENT JUDGE: SUNDBERG J DATE OF ORDER: 12 NOVEMBER 2003 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. The application be dismissed. 2. The applicant pay the second respondent's costs of the application other than the costs of the adjournment on 25 July 2003 as to which the Court makes no order. Note: 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 V 572 OF 2002 BETWEEN: STRUCTURECO INC APPLICANT AND: THE REGISTRAR OF TRADE MARKS FIRST RESPONDENT STARITE DISTRIBUTORS PTY LTD SECOND RESPONDENT JUDGE: SUNDBERG J DATE: 12 NOVEMBER 2003 PLACE: MELBOURNE REASONS FOR JUDGMENT BACKGROUND 1 The applicant (Structureco) is registered proprietor of Australian trade mark STRUCTURE (No 681020) (the trade mark). On 28 December 2000 the second respondent (Starite) applied to remove the trade mark from the Register of Trade Marks pursuant to s 92(4)(b) of the Trade Marks Act 1995 (the Act). Section 92(4) sets out the grounds upon which application for removal may be made. The ground in par (b) is "that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner: (i) used the trade mark in Australia; or (ii) used the trade mark in good faith in Australia; in relation to the goods and/or services to which the application relates." 2 On 15 March 2001 Structureco filed notice of opposition to the removal application. In support of its opposition it filed a statutory declaration of Jeffrey Ryder, a patent and trade mark attorney, who declared that · Structureco had instructed him that the importer into Australia of Structureco's clothing carrying the trade mark STRUCTURE was Stafford Group Pty Ltd (Stafford). · Joseph Carmody of Stafford had provided him with copies of invoices relating to sales of clothing carrying the STRUCTURE trade mark (the invoices). · he believed the invoices related to a shipment of clothing carrying the STRUCTURE trade mark received by Stafford into its premises late in October 2000 or early in November 2000. Mr Ryder produced the invoices. The "customers" named in them are Corporate Connection at an address in New South Wales, Corporate Connection at an address in Victoria, and Shearers at an address in Western Australia. 3 Structureco also filed a statutory declaration of Mr Carmody in which he declared that · he is Stafford's shipping manager · the invoices were issued by Stafford on 15 November 2000 in connection with sales to the retail outlets shown thereon of clothing carrying the mark STRUCTURE · Stafford received the clothing the subject of the invoices from Structureco on 26 October 2000 (the shipment) · in addition to the above sales, he arranged for clothing from the shipment to be made available in Stafford's factory outlet shop (the shop), which goods were on display and for sale in the shop on or immediately after 16 November 2000. Mr Carmody exhibited an invoice pertaining to the last‑mentioned clothing. Mr Ryder made a further declaration in which he said that on 11 July 2001 he purchased from the shop a shirt carrying the trade mark. He exhibited a photograph of the top of the shirt carrying the mark. 4 On 5 November 2001 Starite filed evidence in answer. A statutory declaration by Brian Swersky declared that · Australian Trade Mark Registration 681020 has been cited against Australian Trade Mark Application 712794 filed by Starite, and Dimmeys Stores Pty Ltd, a retailer selling goods supplied by Starite, has been threatened with infringement of the trade mark · Starite has secured the removal of other registrations owned by Structureco on the ground of non‑use of the trade mark STRUCTURE within the relevant three year periods · the three year period in which to demonstrate use of the STRUCTURE trade mark in question in the instant removal application is 27 November 1997 to 27 November 2000 · the invoices exhibited by Mr Ryder are all dated 15 November 2000 · the date of Mr Ryder's purchase of the shirt is outside the three year period · he believes Structureco is not a wholesaler or distributor of clothing, and any clothing it sells is sold through its retail chain in the United States · on 19 July 2001 he spoke by telephone to a person attending the shop who told him he had one shirt left bearing the trade mark and a small amount of knitwear, and he thought no more stock was coming in · the business names Shearers and Corporate Connection are owned by Stafford · he had telephoned the shop and was informed by a salesman that there were only two STRUCTURE shirts left and he was not aware of whether any further stock was coming in · he had telephoned the Shearers store in Perth and was told by one of the salesmen that he had no STRUCTURE stock and had never heard of the brand · he was informed by the senior menswear buyer of Dimmeys that Stafford's National Sales Manager told him he was not aware of the STRUCTURE brand. Anthony Iudica, the Dimmey's buyer referred to by Mr Swersky, made a statutory declaration confirming the contents of the last dot point. 5 On 24 July 2002 Starite's representatives wrote to the first respondent (the Registrar) requesting that · a summons be issued to Mr Carmody to appear for cross‑examination on his declaration at the hearing of the removal application · Mr Carmody be required to produce documents in the possession, custody or control of Stafford · Structureco be required to produce documents in its possession, custody or control. On 1 August 2002 Structureco wrote to the Registrar asking to be heard in relation to Starite's requests. The Registrar did not reply. In mid‑August the hearing of the removal application was set down for 5 September. 6 On 13 August 2002 the Registrar issued a summons and notice to produce documents to Mr Carmody (the summons) and a notice to produce documents to Structureco (the notice). The summons was in part as follows: "Re: Trade Mark Registration No 681020 in the name of Structureco Inc and in the matter of an application for removal by Starite Distributors Pty Ltd … Take notice that you are hereby summoned and required to be and appear personally before the Hearing Officers, at the Hearing Room at IP Australia … on Thursday 5 September 2002 at 10:00 am and thence from day to day until the hearing of the abovementioned proceeding is concluded, to testify what you shall know concerning the abovementioned proceeding; and to produce the following documents at that same time: All documents in the possession, custody or control of Stafford Group Pty Ltd evidencing or recording the matters asserted in paragraph 4 of your declaration dated 11 July 2001 served as evidence in support to the abovementioned opposition." The summons concluded with the statement that if Mr Carmody, without reasonable excuse, failed to appear, he would be liable to penalties as specified in ss 153 and 154 of the Act. 7 The notice required Structureco, by 11:00 am on Monday 2 September 2002, to deliver to the Registrar the following documents: "(a) all documents in your possession, custody or control evidencing or recording any alleged importation, offering for sale, advertising for sale, or sale of clothing bearing the trade mark STRUCTURE in Australia by or on behalf of Structureco Inc or with its licence or authority ('the trade mark goods'), and referred to in the registered proprietor's evidence in support of this opposition, including but not limited to the following documents: (i) any licence or distribution agreement existing between the registered proprietor and any Australian distributor relevant to the alleged importation, offering for sale, advertising for sale, or sale of the trade mark goods in Australia; (ii) any bill of lading or airway bill or any other freight documents evidencing or recording the importation of the trade mark goods allegedly sold in Australia; (iii) any invoices provided by Structureco to any person or entity in Australia evidencing or recording the alleged sale of the trade mark goods in Australia; (iv) customs clearance documentation evidencing or recording the shipment to Australia of the trade mark goods allegedly sold in Australia; (v) payment documentation evidencing or recording any payments to Structureco relevant to the alleged sale of the trade mark goods in Australia by Structureco, or by any other person or entity on its behalf, or by any person or entity having the licence or authority from Structureco for the sale of the trade mark goods in Australia. (b) The production of the same documents as those referred to in paragraph (a) above in relation to any subsequent sale of clothing bearing the trade mark STRUCTURE with the licence or authority of Structureco in Australia to that alleged in the declarations filed on behalf of Structureco as evidence in support of this opposition." The summons and notice were both signed "Helen R Hardie, Deputy Registrar of Trade Marks". THE PROCEEDING 8 On 4 September 2002 Structureco filed an application for an order of review in relation to the Registrar's decisions to issue the summons and the notice. The grounds upon which it seeks review are as follows: (a) Structureco was not accorded natural justice, in that the Registrar failed to hear or consult with it prior to making the decisions notwithstanding a request that it be heard. (b) The procedures that were required by law to be observed in connection with the making of the decision to issue the summons were not observed, in that the Registrar failed to require Starite to provide reasons for the issuing of the summons. (c) The decision to issue the summons was an improper exercise of the power conferred by s 202 of the Act, in that the Registrar failed to take into account the following relevant considerations: (i) the failure of Starite to provide any reasons or basis for its request that the Registrar issue a summons; (ii) the absence of any contradictory evidence as to facts, as opposed to opinions or conclusions of law, in the material filed in relation to the s 92(4)(b) application; (iii) the guidelines for issuing a summons in Part 54 of the Trade Marks Office Manual of Practice and Procedure (the Manual) contained on IP Australia's web site. (d) The decision to issue the summons was an improper exercise of the power conferred by s 202, in that the Registrar exercised the power at the direction of Starite. (e) The decision to issue the summons involved an error of law in that: (i) the Registrar failed to require Starite to provide any reasons or basis for its request for the Registrar to issue it; (ii) there was an absence of any contradictory evidence as to facts, as opposed to opinions or conclusions of law, in the material filed in relation to the s 92(4)(b) application. (f) The decision to issue the notice was an improper exercise of the power conferred by s 202, in that the notice is similar in scope to an order for discovery rather than a notice for production of documents. Structureco seeks an order setting aside the decisions to issue the summons and the notice, and injunctions restraining the Registrar from requiring Mr Carmody to attend and give evidence and Structureco and Mr Carmody to produce the documents. 9 The Deputy Registrar of Trade Marks, Ms Hardie, swore an affidavit in which she outlined the circumstances in which she came to issue the summons and the notice. She recited the contents of the declarations summarised at [2]‑[4], and said (par 22): "I took all this evidence into account and inferred that Mr Swersky's statutory declaration raised questions as to whether Mr Carmody's evidence was evidence of bona fide sales to the public or merely transfers between related companies. I formed the view that there was a conflict or clash of evidence between Structureco and Starite. It seemed to me that clearly there were questions that could reasonably be asked of Mr Carmody concerning the relationship of Corporate Connection (or Corporate Connect) to Stafford, and questions about Shearers, that could clarify, or resolve, the conflict on the facts." Ms Hardie then referred to those parts of the Manualcontaining the Guidelines issued by IP Australia on the issuing of summonses and notices for production of documents. Before recording further aspects of her evidence it is necessary to refer to the relevant provisions of the Act and the Guidelines. 10 Section 202 provides in part that: "The Registrar may, for the purposes of this Act: (a) summon witnesses; and … (c) require the production of documents or articles …. …" Section 203 provides: "The Registrar may not exercise a power under this Act in any way that adversely affects a person applying for the exercise of that power without first giving that person a reasonable opportunity of being heard." Section 153(1) makes it an offence for a person who has been summonsed to appear as a witness before the Registrar to fail to appear. Sub‑section (2) makes it an offence for a person who has been required by the Registrar to produce a document to fail to do so. Sub‑section (2A) provides that sub‑ss (1) and (2) do not apply if the person has a reasonable excuse. Section 154 contains comparable provisions with respect to a person appearing before the Registrar as a witness who refuses to be sworn, refuses to answer questions or fails to produce a document. 11 Part 54 of the Manual deals with subpoenas, summonses and production of documents. Paragraph 2 of Part 54 contains the following passages: "It is very unlikely that the Registrar will act on his or her volition to issue a summons …. If a summons is issued it is more likely to be at the request of one of the parties concerned. However, the Registrar will not summons a witness unless he or she is convinced that there is a very good purpose to be served. The Regulations specifically provide for evidence to be in documentary form and sub‑reg 21.17(1) requires that all statements put in evidence must be in the form of a declaration as per reg 21.6. The Registrar will accept the contents of such declarations at face value unless there is clear evidence to the contrary." The document goes on to refer to the observations of Lord Evershed in Kidax Ltd's Applications [1959] RPC 167 at 175 in connection with an application to cross‑examine declarants. His Lordship said: "the Registrar will normally deal with these matters on this paper evidence and … a party seeking to supplement such paper evidence ‑ either by cross‑examining a deponent or otherwise – has a substantial onus of proof to discharge." The Guidelines continue: "There may also be a high degree of cost and inconvenience involved in requiring a witness to attend before the Registrar and he or she will therefore be reluctant to issue a summons unless compelling reasons are presented. Most frequently, the evidence filed in the proceedings provides clear facts and there is nothing more than conflict as to the interpretation of those facts, or the application of law to those facts. In those circumstances, the calling of witnesses is inappropriate. It is usually only where there is contradictory evidence, and it appears that the conflict on facts, as opposed to opinions, could be resolved or clarified by taking oral evidence, that the Registrar will issue a summons under section 202 – see American Cyanamid Company v Nalco Chemical Company 24 IPR 131 in which a delegate of the Commissioner of Patents refused to issue a summons under the equivalent section 210 of the Patents Act." After referring to the need for the Registrar to consider whether the summons is being sought "for the purposes of this Act", and to s 203 of the Act, the Guidelines conclude by saying: "However, the person whose presence as a witness is sought does not have a right to a hearing prior to the issue of the summons. Any objections he or she might have to the summons could be argued as a 'reasonable excuse' for non‑compliance with the summons, as per section 153 … and might be dealt with at the hearing to which he or she has been summonsed. Alternatively, in accordance with the provisions of reg 21.14, the Registrar may appoint a hearing to deal specifically with any objections raised by the party summonsed." 12 Ms Hardie said she had regard to the Guidelines in deciding whether to issue the summons. She formed the view that a summons should issue "because there was contradictory evidence and the conflict on the facts could at least be clarified, or resolved, by the questioning of Mr Carmody". She said she anticipated that if Mr Carmody objected to complying with the summons, he would raise his objections as a "reasonable excuse" under s 153 or s 154 of the Act. 13 Ms Hardie then dealt with her decision to issue the notice (pars 28‑30): "I noted that [Starite's] request was specifically for documents bearing the Trade Mark STRUCTURE and that this narrowed the request. The request did not appear onerous as the request was for the type of documents one would expect to be available if goods had been imported from the USA as Mr Carmody had declared. I noted that the documents requested were of the type one would expect to be relied upon in a defence to a removal application and that, if there had been sales, and Mr Carmody's evidence was correct, I would expect Structureco to have these types of documents in its possession, custody or control. I formed the view that if Structureco could not produce the documents sought, this would be a factor in favour of the removal application. I also formed the view that if Structureco could produce the documents sought, this would be a factor against the removal application. It was clear to me that the documents would be, or could be, relevant to the removal application. I formed the view that the request was not of the nature of a fishing expedition as the request was linked to the evidence of Mr Carmody and to the challenge to that evidence." 14 Ms Hardie added that she did not see Structureco's letter of 1 August 2002 requesting that she receive submissions until after she had issued the summons and the notice. She said that if she had seen it before then, it would have made no difference to her decision because of the opportunity provided by the "reasonable excuse" provisions in s 153 and s 154. She also said she would have written to Structureco's legal representatives drawing attention to the relevant parts of the Manual. NATURAL JUSTICE 15 Structureco submits that the Registrar's refusal to receive submissions before issuing the summons and the notice was a breach of the rules of natural justice. It is said that s 203 of the Act is not "exhaustive", and does not evidence any clear legislative intent to deprive other interested parties of rights to procedural fairness. It points out that the Act provides no right of appeal from a decision under s 202. Cf Marine Hull & Liability Insurance v Hurford (1986) 67 ALR 77. It also submits that the provision for "reasonable excuse" is no substitute for a right to be heard in relation to whether the power in s 202 should be exercised. Further, it is said that the excuse is available only to the recipient of the document and not to other persons who may be genuinely aggrieved by the decision to issue it. 16 In my view Structureco was not entitled to be heard before the Registrar made her decision to issue the summons and the notice. I am unable to distinguish s 202 of the Act from s 264(1) of the Income Tax Assessment Act 1936 (Cth). Section 264(1) empowers the Commissioner, by notice in writing, to require any person "(a) to furnish him with such information as he may require; and (b) to attend and give evidence before him … concerning his or any other person's income or assessment, and may require him to produce all books, documents and other papers whatever in his custody or under his control relating thereto." At the relevant time s 224 made it an offence to refuse or neglect to attend and give evidence, or to produce documents, unless just cause or excuse was shown. The exercise of the power in s 264(1) is not conditioned upon affording the person in question a right to be heard as to whether the power should be exercised. In Sixth Ravini Pty Ltd v Commissioner of Taxation (1985) 6 FCR 356 at 363 Northrop J said: "The power conferred by s 264 …is a power to investigate, a power which in many respects is inquisitorial in nature. The Deputy Commissioner is seeking information and the production of documents. The person to whom the notice is given must, in the absence of lawful excuse, comply with the requirements of the notice. If he does not, he commits a criminal offence. In this context it is difficult to see how the law could imply the necessity for the Deputy Commissioner to comply with the requirements of natural justice before issuing and serving the notice. In my opinion, there is no basis for saying that the requirements of natural justice apply to the facts of this case." See also May v Commissioner of Taxation (1999) 92 FCR 152 especially at [13] and [37]. In Allen, Allen & Hemsley v Deputy Commissioner of Taxation (1988) 88 ATC 4734 Pincus J held that the Commissioner was not obliged to observe the requirements of natural justice before issuing an authority to an officer to exercise access and search powers under s 263 of the Income Tax Assessment Act. 17 Section 33 of the Australian Securities Commission Act 1989 (Cth) empowered the Commission to give a person a written notice requiring the production of specified books in that person's possession relating to the affairs of a body corporate. It was an offence, without reasonable excuse, to fail to comply with the notice: s 63(1). In Minosea Pty Ltd v Australian Securities Commission (1994) 14 ACSR 642 Lindgren J held that the person in question was not entitled to a hearing before the power in s 33 was exercised. His Honour said at 650 that the existence of s 63(1) "suggests at least that parliament intended that the operation, vis-ŕ-vis the recipient, of a notice under s 33 should not be 'suspended' by reason of non‑compliance with requirements of procedural fairness prior to the issue of the notice." 18 In my view s 203 of the Act supports the application to s 202 of the approach adopted in Sixth Ravine, May and Minosea. FAILURE TO REQUIRE REASONS FOR ISSUE OF SUMMONS 19 Structureco contends that the failure of the Registrar to require Starite to provide reasons for its request, as required by the Manual, was a failure to observe required procedures and an error of law. A related claim is that Starite's failure to provide reasons was a relevant consideration the Registrar had failed to take into account. The view that an applicant for the issue of a summons must furnish reasons to the Registrar is presumably derived from the sentence in the Guidelines that the Registrar "will therefore be reluctant to issue a summons unless compelling reasons are presented". This does not amount to a requirement that a party provide reasons for a request for the issue of a summons. First, the sentence does not lay down a rule to that effect. It merely says the Registrar will "be reluctant" to issue a summons unless compelling reasons are presented. Secondly, to read the words "are presented" as meaning that no summons will issue unless the party requesting it presents compelling reasons, is too literal a reading of the relevant passage. On a fair reading it means that the Registrar will be reluctant to issue a summons or notice unless compelling reasons exist. In this connection it is to be remembered that the Registrar has power to act of her own volition. In the present case she had no difficulty in locating the materials from which she satisfied herself that sufficient reasons existed to issue the documents, even though Starite's request did not specifically give reasons therefor. The Guidelines do not lay down a procedure requiring the Registrar to insist upon an applicant for the issue of a summons providing reasons why the summons should issue. Accordingly grounds of review (b) (required procedures) and (e)(i) (error of law) are not made out. Nor is ground (c)(i). In order that something be a relevant consideration, the Registrar must be bound to take it into account in making the decision to issue a summons or notice. See Minister for Aboriginal Affairs v Peko‑Wallsend Ltd (1986) 162 CLR 24 at 39. As I have said, the Guidelines do not require the Registrar, before issuing the summons, to take into account the fact that an applicant for the issue of a summons has not expressly provided reasons for its request. Even if the Guidelines did so require, the evidence does not establish that the Registrar did not take into account the fact that Starite had not produced reasons. She was familiar with the Guidelines, having been involved in preparing Part 54. In the twelve months preceding the swearing of her affidavit (12 November 2002) she managed a broad review of those parts of the Manual that deal with matters relating to hearings. I have set out the procedure the Registrar adopted in deciding whether to issue the summons and notice. Her evidence was that as she considered the declarations of Mr Carmody and Mr Swersky she was aware of the tests in the Guidelines. Obviously, as she went about the task of comparing the two relevant declarations the Registrar was aware that she was doing her own research unaided by any submissions by Starite. ISSUE OF SUMMONS AT DIRECTION OF STARITE 20 No submissions were made in support of this ground. Ms Hardie's affidavit is a complete answer to this claim. FAILURE TO TAKE GUIDELINES INTO ACCOUNT 21 The Guidelines have no statutory or regulatory basis. However their structure, their language and the manner of their promulgation makes it clear that they are a relevant consideration the Registrar is required to take into account. Cf Deloitte Touche Tohmatsu v Deputy Commissioner of Taxation (1998) ATR 435 at 450 which treated guidelines published by the Commissioner in relation to the exercise of powers under, inter alia, s 264 of the Income Tax Assessment Act in that manner. 22 I refer to what I have said in [19] about the Registrar's familiarity with the Guidelines. While she was considering the declarations of Mr Carmody and Mr Swersky she had the tests in the Guidelines in mind, and formed the view that they suggested that a summons should issue because there was "contradictory evidence and the conflict on the facts could at least be clarified or resolved, by the questioning of Mr Carmody". Ground (c)(iii) is not made out. FAILURE TO TAKE ABSENCE OF CONTRADICTORY EVIDENCE INTO ACCOUNT 23 The complaint Structureco makes here is that the Registrar failed to take into account "the absence of any contradictory evidence as to facts as opposed to opinions or conclusions of law in the evidence filed in relation to the section 92(4)(b) application". While the Registrar is bound to take the Guidelines into account, including the guideline that it is "usually only when there is contradictory evidence" that the Registrar will issue a summons, she is not required to take into account a particular fact situation such as that propounded by Structureco. This ground appears to claim that the Registrar was bound to come to a particular conclusion of fact, namely that there was no contradictory evidence as to facts. The obligation is only to take the Guidelines into account. There is no obligation to apply them correctly, as Structureco sees the facts, so as to find that there was no contradictory evidence with the result that the summons should not issue. Whether there was such evidence was the task committed to the Registrar for decision. It is not for Structureco to make its own conclusion on that matter the starting point for a "relevant considerations" ground of review. As Goldberg J said in Deloitte at 451: "The applicability of the guidelines is not in issue. What is in issue is whether the respondent had proper regard to the relevant guidelines in deciding to issue the 31 July notices." Ground (c)(ii) is not an available ground of review. ISSUE OF SUMMONS IN ABSENCE OF CONTRADICTORY EVIDENCE AN ERROR OF LAW 24 The error of law asserted is the Registrar's decision to issue the summons when there was no contradictory evidence as to the facts in the material filed in the s 92(4)(b) application. Whether a summons should issue is a matter committed to the Registrar. She is required to have regard to the Guidelines, one of which is that usually a summons will not issue unless there is contradictory evidence. Again, whether there is such evidence is a matter for decision by the Registrar. She explained how she arrived at her decision. Mr Carmody's declaration deposed to receipt by Stafford of the shipment of clothing from Structureco in the United States and the sale by Stafford to the retail outlets in Australia the subject of the Corporate Connection and Shearers invoices produced by Mr Ryder. Standing alone, that material would have suggested arm's length sales, because no facts were disclosed that pointed in the other direction. Mr Swersky's declaration claimed, without any supporting material, that the business name Shearers was owned by Stafford, and that he had been told by an unnamed person that Corporate Connection was owned by Stafford. The Registrar purported to apply the Guidelines. She described the conflict as whether the sales the subject of Mr Carmody's declaration were bona fide sales to the public or merely transfers between related companies. She thought it appropriate that Mr Carmody be questioned in order to clarify or resolve the conflict. It is not surprising that she held this view because, as I have said, Mr Swersky did not support his assertion that Stafford owned the Shearers name by any evidence, and he did not disclose the identity of his source of information about the ownership of Corporate Connection. The Registrar considered it proper to provide Starite with the opportunity to ascertain whether the facts accorded with Mr Swersky's unverified assertions, and that she regarded it as an evidentiary issue that could probably be resolved by questioning Mr Carmody. I do not think it inappropriate to describe the apparent difference between the two accounts of the sales as a conflict on the facts or as contradictory evidence. It is not appropriate to read the Guidelines as if they were a statute. They are only guidelines and, as I have said, do not purport to lay down a rule of general application. 25 The Registrar is a person of considerable experience in her field. She joined the Trade Marks Office in 1971. She has conducted trade mark hearings since 1988. From 1991 to 1994 she was Deputy Registrar of Trade Marks in charge of examinations. Since 1994 she has been Deputy Registrar in charge of Trade Mark hearings. With the expertise developed over that period, the Registrar is well placed to determine whether an unsupported factual assertion by one party to a non‑use dispute is appropriate to be sorted out by oral evidence pursuant to a summons. Even if, contrary to my view, a Court would not describe the state of the evidence as "contradictory", for the Registrar so to describe it does not amount to an error of law. The Court does not find an error of law as a result of unhappy phrasing or looseness of language. This is, I think, especially so when what is in question is not a statute but a set of Guidelines, and when the particular guideline does no more than state an approach to be adopted in the usual case ("usually only where there is contradictory evidence"). PRODUCTION OF DOCUMENTS BY STRUCTURECO 26 Structureco contended that the notice for production was really a notice for discovery and thus not a notice requiring "the production of documents" within s 202(c). In my view the notice is sufficiently particular to qualify as a notice to produce documents. Paragraph (a) of the notice is limited in two respects. First, it is limited to documents evidencing or recording the importation, offering for sale, advertising for sale, or sale of "clothing bearing the trade mark 'STRUCTURE' in Australia by or on behalf of Structureco or with its licence or authority". The second limitation is that the clothing is referred to in Structureco's evidence in support of the opposition. Paragraph (b) is limited in the same manner, but instead relates to any subsequent sale of the clothing identified in par (a). What was said by Smithers J, with whom Bowen CJ and Nimmo J agreed, in Lucas Industries Ltd v Hewitt (1978) 18 ALR 555 at 569 in relation to a subpoena duces tecum that was alleged to be so wide that it imposed upon its recipient the burdens of an order for discovery, is applicable to the notice. His Honour said: "It is, however, of the essence of an obligation to make discovery that a duty rests upon the party subject thereto to decide for himself with respect to documents in his possession whether, in the relevant sense, they relate to the issues in the action. The subpoena does not in terms seek to impose this task on the respondents. It seeks production of documents the contents of which relate to specified subjects. The respondents do not have to direct their minds to the issues …. … No doubt, if the terms of the subpoena are such that although purporting to be a subpoena it is in substance a notice for discovery, it should be set aside. But I am not satisfied that the subpoena before the court is of this kind. The task it imposes on the respondents is to identify documents as relating to particular subjects. This is quite a different task from that of ascertaining issues and identifying the relationship of documents thereto. And it is to the point in this case that the comprehensive nature of the specified subjects is a reflection of the evidence introduced into the litigation in the affidavit of the respondent Howlett. Except in minor respects, the subpoena is limited to documents relating to those particular subjects." 27 Although Structureco asserted that the notice was "oppressive", it adduced no evidence in support of this claim, which appears to do no more than to characterise the consequence of the contention that the notice is in effect a notice for discovery. See par 38 of Structureco's written submissions. In Lucas Industries at 572 Smithers J said, in the context of a claim that the subpoena was oppressive: "It is relevant also that the respondents do not put any evidence before the court that they do not know what documents are required by the subpoena or that the search for them would be unduly onerous." Paragraph 39 of Structureco's written submissions appears to make a complaint of "fishing", though that word is not used. The matter was not mentioned in oral submissions. The complaint has no substance. 28 While Structureco's written submissions related only to the notice to produce directed to Structureco, in oral submissions it was sought to attack the summons to Mr Carmody, though counsel conceded that "the point would appear to have more power in relation to the Structureco notice". I do not concern myself with the production aspect of the summons because the application attacks only the notice to Structureco on "discovery" grounds. 29 The Registrar was of the view that the documents sought "would be, or could be, relevant to the removal application". This was the correct test to apply. See GS Technology Pty Ltd v Commissioner of Patents (1997) 39 IPR 583 at 588. The fact that a subsequent sale might occur outside the relevant three year period does not deprive documents relating to such a sale of relevance to the issues arising in the removal application. OBJECTION TO COMPETENCY 30 Starite submitted that the decisions sought to be reviewed were not "final, operative or determinative" and had no impact on the relevant "rights" of Structureco. In view of the fact that relief is sought under s 39B of the Judiciary Act 1903, it was common ground that I need not decide whether the decisions in question were "decisions" for the purposes of the Administrative Decisions (Judicial Review) Act 1977. CONCLUSION 31 The application must be dismissed. The Registrar does not seek costs against Structureco or Starite. Putting to one side the question of costs occasioned by the adjournment on 25 July 2003, Starite's costs should follow the event and be paid by the applicant. I have considered the written submissions on behalf of Structureco and Starite in relation to the costs occasioned by the adjournment, and have concluded, for the reasons advanced by Starite, that there should be no order in relation to those costs. I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sundberg. Associate: Dated: 12 November 2003 Counsel for the Applicant: B Fitzpatrick Solicitors for the Applicant: Callinan Lawrie Counsel for the First Respondent: J Davies Solicitor for the First Respondent: Australian Government Solicitor Counsel for the Second Respondent: B J Hess Solicitors for the Second Respondent: Griffith Hack Date of Hearing: 12 September 2003 Date of Judgment: 12 November 2003