Ostrowski-Meissner v Registrar of Trade Marks [2006] FCA 951

FEDERAL COURT OF AUSTRALIA

Ostrowski-Meissner v Registrar of Trade Marks [2006] FCA 951 HENRY OSTROWSKI-MEISSNER v REGISTRAR OF TRADE MARKS NSD 1013 OF 2005 STONE J 26 JULY 2006 SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 1013 OF 2005

BETWEEN: HENRY OSTROWSKI-MEISSNER

APPLICANT

AND: REGISTRAR OF TRADE MARKS

RESPONDENT

JUDGE: STONE J

DATE OF ORDER: 26 JULY 2006

WHERE MADE: SYDNEY

THE COURT ORDERS THAT:

1. The applicant has leave to appeal out of time and to proceed with the appeal instanter.

2. The appeal from the decision of the Registrar of Trade Marks made on 27 May 2005 be allowed and the decision be set aside.

3. The application by Bio-Life Marketing Sdn Bhd to the Registrar of Trade Marks on 26 February 2004 to remove the applicant's trade mark number 756664 from the Register under the provisions of s 92(4)(b) of the Trade Marks Act 1995 (Cth) be dismissed.

4. The applicant pay the costs of the Registrar of Trade Marks in this proceeding.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 1013 OF 2005

BETWEEN: HENRY OSTROWSKI-MEISSNER

APPLICANT

AND: REGISTRAR OF TRADE MARKS

RESPONDENT

JUDGE: STONE J

DATE: 26 JULY 2006

PLACE: SYDNEY

REASONS FOR JUDGMENT 1 On 26 February 2004 Bio-Life Marketing Sdn Bhd filed an application under s 92(4) of the Trade Marks Act 1995 (Cth) to remove the applicant's trade mark, BIO-LIFE, from the Trade Mark Register. The trade mark, which is number 756664, is registered in respect of a range of goods in classes 5, 29, 30, and 32. Bio-Life Marketing claimed that the trade mark had remained registered for a continuous period of three years, specifically from 26 January 2001 to 25 January 2004, during which time the registered owner had not used the trade mark in Australia or had not used it in good faith in Australia in relation to the goods in respect of which the trade mark was registered. 2 On 27 May 2005 a delegate of the Registrar of Trade Marks found that the applicant had failed to discharge the onus placed on him by s 100 of the Trade Marks Act to show why his trade mark should not be removed from the Register. The delegate dismissed the applicant's opposition and directed that, 'registration number 756664, for the trade mark BIO-LIFE, be removed from the Register unless within one month from the date of this decision the Registrar is served with a copy of a notice of appeal.' 3 The applicant filed a notice of appeal from the decision of the Registrar's delegate on 20 June 2005. Although this document was filed within the time stipulated in the delegate's order for the service of any notice of appeal, it was one day outside the time stipulated in O 58 r4(2) of the Federal Court Rules for the filing of the notice of appeal. On 21 February 2006, by consent, the appeal was discontinued in so far as it related to Bio-Life Marketing, the original challenger to the applicant's trade mark. On 27 April 2006 the applicant was given leave to discontinue the appeal and on 4 May 2006 a notice of discontinuance was filed. Despite the apparent resolution of the appeal, and the fact that, following settlement of the dispute with Bio-Life Marketing, there is presently no one seeking to have the trade mark removed from the Register, the fact that there remains on the record a decision of the Registrar upholding Bio-Life Marketing's challenge to the trade mark continued to cause the Registrar some concern because of the uncertainty that the situation might engender. It is not necessary here to expand on the reason for the Registrar's concern. Accordingly it was decided that the appeal should proceed and to that end, on 12 July 2006, Branson J revoked the order giving the applicant leave to discontinue the appeal and set aside the notice of discontinuance. 4 In the absence of the original challenger, the Registrar is a party to the appeal because 'there is no party in opposition to the party bringing the appeal'; O58 r 3. A solicitor acting for the Registrar appeared at the hearing of the appeal to assist the Court but did not seek to oppose the applicant's contentions. 5 As noted above, the applicant's notice of appeal was filed one day out of time. Technically, therefore, the applicant requires the leave of the court to proceed with the appeal. At the hearing the applicant's counsel attributed the delay to the fact that the applicant, who was not represented until quite late in the piece, did not appreciate that the time limit for filing a notice of appeal might be different from the one month referred to in the delegate's reasons for decision. In the circumstances, including that the delay was insignificant and that there is no opposition to the appeal proceeding out of time, I gave the applicant leave to proceed with the appeal. 6 Before considering the grounds of appeal raised by the applicant I should make some comments as to the nature of the present hearing. Section 197 of the Trade Marks Act provides: 'On hearing an appeal against a decision or direction of the Registrar, the Federal Court may do any one or more of the following: (a) admit further evidence orally, or on affidavit or otherwise; (b) permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar; (c) order an issue of fact to be tried as it directs; (d) affirm, reverse or vary the Registrar's decision or direction; (e) give any judgment, or make any order, that, in all the circumstances, it thinks fit; (f) order a party to pay costs to another party.' 7 In Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 at 58-9, Branson J considered the provisions of section 197 and concluded that it showed 'a clear intention that the established practice of an appeal of this kind being conducted as a rehearing is to be maintained'. Although her Honour made the comment in the context of an appeal from a decision to refuse registration of a trade mark, in my view, it applies equally to the present appeal. 8 Branson J's views are consistent with the later comments of Sackville J in Soncini v Registrar of Trade Marks (2001) 109 FCR 548 at [7] where his Honour said that because an appeal under s 104 is an exercise of the original (rather than appellate) jurisdiction of the Court it is not necessary on appeal to determine if the decision of the Registrar was correct when made. I should therefore consider the applicant's submission in relation to the circumstances that presently exist and the evidence presently before me. 9 In her reasons for decision, the Registrar's delegate accepted that Bio-Life Marketing was a person aggrieved within the meaning of s 92(1) of the Trade Marks Act. However, the first of the applicant's submissions is that there is presently no person "aggrieved" by the fact that the trade mark is registered. Bio-Life Marketing is no longer a party and the Registrar of Trade Marks neither supports nor opposes the appeal. While I accept McLelland J's stricture in The Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 12 IPR 417 at 454 that the expression has no technical meaning and is to be "liberally construed" the applicant is clearly correct that there is no person presently challenging the appearance of the trade mark on the register. I do not quarrel with the finding that, at the time of the original challenge, Bio-Life Marketing had, in McLelland J's words, 'a real interest in having … the trade mark removed' however Bio-Life Marketing is, with its consent, no longer involved in this proceeding. This indicates that it no longer has any real interest in having the trade mark removed. The absence of any person aggrieved by the fact that the trade mark is registered is a sufficient basis on which to uphold the applicant's appeal. 10 Although the applicant provided uncontradicted evidence in support of his claim that he had used the trade mark in the relevant period, the evidence is by no means compelling in respect of at least some of the four categories to which the trade mark applies. In the circumstances, and particularly where there is no real challenge to the trade mark, I am reluctant to decide this issue where the appeal can be resolved on other grounds. It is not necessary to do so to resolve the appeal, which must be allowed. 11 The applicant does not oppose the Registrar of Trade Marks' claim for its costs in the appeal and I will so order. I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stone.