FEDERAL COURT OF AUSTRALIA

Vokes Ltd v Laminar Air Flow Pty Ltd [2018] FCAFC 109

ORDERS

THE COURT ORDERS THAT:

1.    The appeal be dismissed.

2.    The appellant pay the first respondent’s costs of the appeal, such costs to be taxed in default of agreement.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

introduction

1    This appeal concerns s 81 of the Trade Marks Act 1995 (Cth) (“the Act”) which states:

The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.

2    Prior to 17 August 2001, the appellant (“Vokes”) was recorded in the Register as the owner of a number of trade marks. On 17 August 2001, the Registrar amended the Register to record AES Environmental Pty Ltd (“AES”) as the registered owner pursuant to a Change of Name Form submitted to the Registrar by an agent of AES on 15 August 2001. In fact, Vokes had not changed its name and the Change of Name Form was filed in error. It was not in dispute that AES was wrongly entered on the Register as the registered owner. Vokes did nothing about the change of name for over 13 years. In the intervening period, other particulars in respect of the trade marks were entered on the Register including, on 25 October 2005, an assignment of the trade marks from AES to the first respondent (“Laminar”). In December 2014, Vokes applied to the Registrar for the “correction” of the Register under s 81 of the Act to show Vokes as the registered owner. Laminar opposed the application, and in a decision made on 29 May 2017, a delegate of the Registrar determined that there was power under s 81 to make the “correction” sought by Vokes and it was appropriate that the Register be corrected to show Vokes as the registered owner. That decision was set aside by the Court below on a judicial review application made by Laminar: Laminar Air Flow Pty Ltd v Registrar of Trade Marks [2017] FCA 1447 (Robertson J). Vokes has appealed the decision of the Court below.

The decision below

3    Robertson J held that the kind of error to which s 81 of the Act applies is an error made by the Registrar in entering particulars into the Register. As the error was not in the entering of the change of name details but in the change of name form wrongly submitted to the Registrar, the Court concluded that it was not open to the Registrar to correct the error pursuant to s 81. The Court’s reasons appear at [59]-[62] as follows:

The primary question is whether the change of the owner’s name and address on the Register in August 2001 was an error of the kind within s 81.

There was no finding by the delegate that in August 2001, and by reference to what the Registrar then knew, there had been an error made by the Registrar. The error was on the part of the person submitting the form in circumstances where there had not, in truth, been a change of name and address: as found by the delegate, Vokes had not changed its name. This was not brought to the Registrar’s attention, so far as the delegate found, before December 2014 when Vokes made its application under s 81.

I therefore find that the delegate was in error in concluding that there was an error made in entering in the Register in 2001 the change of name. In so concluding, I take no limited view of what may constitute error. I note that in Kimberly-Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421; (1988) 84 ALR 685 Jenkinson J considered that the delegate had taken a too restricted meaning of the phrase “error or omission” in s 160(1) of the Patents Act 1952 (Cth) in stating that an error or omission should be an accidental event or one of inadvertence. His Honour said, at 694:

A deliberate choice of the same collocation of words was thus made to designate the aberrations of the person holding office or employment in the Patent Office and “of the person concerned or of his agent or attorney”, by reason whereof a consequence of the same description ensued. It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1). Further, the word “error” is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips. Although the latter kinds of error may be those which the draftsman had principally in mind, I do not think the phrase “error or omission” should be given by construction the restricted meaning which the delegate assigned, and accordingly I conclude that this ground of the application has been established.

In the present case, as was later shown, there was an error, but in my opinion not one made in 2001 in entering in the Register the change of name.

4    Robertson J also rejected Vokes’ argument that the amendment of the Register in August 2001 had no legal effect because an actual change of name is a jurisdictional fact for the exercise of the Registrar’s power under s 216 of the Act to amend the Register on a change of name of name of the registered owner. Vokes relied on the decision of Emmett J in Mediaquest Communications LLC v Registrar of Trade Marks [2012] FCA 768; 205 FCR 205 in support of that argument. One of the issues in that case concerned the power of the Registrar to cancel the record of an assignment of a registered mark under s 81 of the Act. The Court held that the existence of an effective assignment or transmission was a necessary precondition to the making of a valid application under s 109 of the Act for an assignment to be registered and the subsequent exercise of power by the Registrar under s 110 of the Act to record the assignment. The Court further held that the absence of a valid assignment or transmission meant that any purported exercise by the Registrar of the power conferred by s 110 would be affected by jurisdictional error. At [53]-[54] Emmett J reasoned:

The absence of a valid assignment or transmission means that any purported exercise by the Registrar of the power conferred by s 110 would be affected by jurisdictional error. There is no reason in principle why the general law should treat administrative decisions involving jurisdictional error as binding or having legal effect unless and until set aside. A decision that involves jurisdictional error lacks legal foundation and is properly regarded, in law, as no decision at all (see Plaintiff S157/2002 v Commonwealth (2003) 211 CLR 476 at [76]).

There was no actual assignment of the Registered Mark to Mediaquest, either from Mr Brailsford or from his executors. Accordingly, the Registrar’s decision of 8 October 2010 to record the assignment in the Register was tainted by jurisdictional error and was no decision at all. It was therefore open to the Registrar to reconsider whether the duty imposed by s 110 had been enlivened, by revisiting the question of whether there was an actual assignment or transmission of the Registered Mark to Mediaquest. Having determined that there was no actual assignment or transmission, it was open to the Registrar to take steps to cancel the earlier action. There is nothing in the Act to indicate that a decision of the Registrar under Part 10 that was affected by jurisdictional error should continue to have legal effect. Indeed the considerations outlined above suggest the contrary.

5    It was held that since the name of the registered owner was erroneously changed by the Registrar, purportedly acting under s 110, it was within the Registrar’s power under s 81 to correct the error. Robertson J distinguished Mediaquest on the basis that an actual change of name was not a jurisdictional fact underlying the exercise of power under s 216 and so there was no jurisdictional error as a consequence of recording the change of name, although there had not been a change of name.

6    Robertson J also held that s 81 could not be used to correct the Register in view of the intervening dealing with respect to the assignment of the trade marks from AES to Laminar which was entered into the Register. His Honour reasoned at [70]:

In my opinion it would not be conducive to the “integrity” of the Register and that it be “pure”, as referred to by the High Court in Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590 at, for example, [22] that the Register may be amended by the Registrar on her own initiative under s 81 in circumstances where many years have passed and intervening dealings have occurred with the result that those subsequent dealings would fall as a consequence. This construction is supported, in my opinion, by the availability to an aggrieved person of other remedies in respect of the Register.

7    In this context, Robertson J also distinguished Mediaquest on the basis that in that case there were no such intervening dealings.

8    The grounds of appeal challenge each of these conclusions.

9    By its notice of contention, Laminar contends that the primary judge’s decision should be affirmed on the following other grounds:

(a)    the primary judge should have concluded that Mediaquest was wrongly decided;

(b)    the primary judge should have found that there was no power to correct the Register under s 81 by reason of s 22(3) of the Act; and

(c)    the delegate misapplied s 81 because he misunderstood the nature of the discretion it confers in that he erroneously considered it to be fettered by ss 109 and 110 of the Act.

powers of amendment

10    Section 81 is found in Part 8 Division 1 Subdivision A of the Act which contains the powers of the Registrar to amend the Register.

11    Division 2 of Part 8 of the Act contains the powers of the Court to order the amendment of the Register. The provisions relevantly include s 85 and s 88.

12    Section 85 of the Act provides:

Amendment to correct error or omission

A prescribed court may, on the application of an aggrieved person, order that the Register be rectified by:

(a)    entering in the Register particulars that were wrongly omitted from it; or

(b)    correcting any error in an entry in the Register.

13    Section 88 of the Act provides:

Amendment or cancellation--other specified grounds

(1)    Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

(a)    cancelling the registration of a trade mark; or

(b)    removing or amending an entry wrongly made or remaining on the Register; or

(c)    entering any condition or limitation affecting the registration of a trade mark that ought to be entered.

(2)    An application may be made on any of the following grounds, and on no other grounds:

(a)    any of the grounds on which the registration of the trade mark could have been opposed under this Act;

(b)    an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation;

(c)    because of the circumstances applying at the time when the application for rectification is filed, the use of the trade mark is likely to deceive or cause confusion;

(e)    if the application is in respect of an entry in the Register—the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation.

decision

14    The appellant’s argument, in short compass, was that the Registrar’s power under s 81 of the Act was enlivened because the “error” was the entry by the Registrar of the change of name in the particulars of the trade mark registrations in the Register when, in actuality, there had been no change in the name of the registered owner which meant that s 216 of the Act, which allowed for changes of name, had no application.

15    Section 216 provides as follows:

(1)    If there is a change in the name of a person who has filed an application, notice or request, the person must notify the Registrar in writing of the change.

(2)    If there is a change in the name of:

(a)    the registered owner of a registered trade mark; or

(b)    a person whose claim to an interest in, or to a right in respect of, a trade mark is recorded in the Register;

the registered owner or the person must notify the Registrar in writing of the change and the Registrar must amend the Register accordingly.

16    It was submitted that s 216, by its language, confers power on the Registrar to enter a change of name in the Register only if two conditions are met and not otherwise: first, a change of name notification from the registered owner, and, secondly, a change of name. It was argued that neither condition was met on the facts of this case. Thus, the argument went, as the Registrar is required by s 207(2)(b) of the Act to “enter [particulars of trade marks] in the Register in accordance with the Act” the Registrar made the error because the Act did not provide for that action.

17    The appellant’s argument cannot be accepted.

18    The starting point is the language of s 81 and, in construing the language, the section is to be read as a whole in the context of Part 8 of the Act. The first point to make as a matter of language is that the word “error” in s 81 forms part of the composite phrase “correct any error…made in entering in the Register any particular”. Where a word forms part of a composite phrase, the words in the composite phrase must be considered together, not as individual words in isolation from the other words in the phrase: Sea Shepherd Australia Limited v Commissioner of Taxation [2013] FCAFC 68 at [34] per Gordon J (with whom Besanko J agreed). Furthermore, it is a well-established canon of statutory construction that all words should be given meaning and effect: Project Blue Sky v Australian Broadcasting Authority [1998] HCA 28 at [71]. Vokes’ submissions, however, give the words “made in entering” no meaning or work to do. That is to say, the section does not simply prescribe that an error in the particulars entered in the Register may be corrected by the Registrar. Rather, the relevant error must be one that is “made in entering” those particulars. In ordinary grammatical meaning the phrase “made in entering in … any particular” connotes an error made in the act of “entering in” (that is, an error in the act of recording) a particular in the Register. Secondly, the prescription in s 81 that the Registrar can exercise the power of correction “of his or her initiative” assists in fixing that meaning in the context where the legislation itself differentiates between errors made in entering particulars in the Register, which are amenable to correction by the Registrar “of his or her initiative” (s 81) and errors “in an entry in the Register” which are amenable to correction by order of the Court, on the application of an aggrieved person (s 85 of the Act). The latter draws attention to “any error” regardless of how it was brought about. In the present case, the error was in the particular recorded, not in the act of recording of that particular.

19    This construction accords with the scheme of the Act and the evident policy considerations underlying it. Division 2 of Part 8 provides for action to be taken by a court in relation to alterations to the Register. In each of ss 85 – 88, the court may act to alter the Register on application of an aggrieved person. Only in respect of applications under ss 86 – 88 may the Registrar apply to the court, and then only if she considers that the application is desirable in the public interest: s 88A. The role of the Registrar in s 81 may be contrasted with that of the court in Division 2 of Part 8. In the former, the Registrar exercises administrative power that may be reviewed only on judicial review pursuant to the terms of the Administrative Decisions (Judicial Review) Act 1977 (Cth). The Registrar may act on her own initiative, and there is no entitlement of a third party to commence an action. Indeed there is no provision or procedure in the Act for interested parties to present evidence, file submissions or to be heard. By contrast, for applications made under Division 2 of Part 8, the action is conducted before the court exercising judicial power with a right of appeal to the Full Court. Those proceedings may, as in the present proceeding, involve the consideration of complex and competing issues between parties whose rights may be affected by giving effect to any correction in an entry on the Register. These differences indicate that the scope of s 81 is intended to be relatively narrow, as evinced by the words “of his or her initiative” and “made in entering” that we have emphasised. Such an approach reflects a parliamentary intention that the courts remain the primary forum for the determination of disputes as to the correctness of entries in the Register.

20    Vokes’ argument based on s 216(2)(b) of the Act does not advance the proposition that the error was made by the Registrar. In the present case the form filed pursuant to s 216 notified the Registrar in writing of a change in name. Nothing on its face suggested that the form was not properly completed or submitted by the appropriate person. In those circumstances, as the primary judge found at [60], there was no error made in entering in the Register any particular. The Registrar entered the change of name in the Register as required by s 216 upon receipt of a change of name form. There is nothing in s 216 which required the Registrar first to verify that a change of name had in fact been made or to verify the authority of the person submitting the form.

21    We are unable to accept the submission of Vokes that the primary judge was incorrect to distinguish Mediaquest. We doubt that a valid assignment under s 106 is a jurisdictional fact, the existence of which is a precondition to the valid entry of an assignment under s 110 (Mediaquest at [53]). The “application” that must comply with the Act under s 110(1) is identified in s 109(2), which refers to the approved form that must be filed, together with any prescribed documents, in accordance with the regulations. Upon receipt of that application, the Registrar is then obliged to record the assignment or transmission in the Register: s 110(1). This process ensures the maintenance of the Register, but it is to be recalled that the Register is only prima facie evidence of a particular or matter entered in it: s 210(1). An entry in the Register does not necessarily reflect the true position which, in the context of trade mark ownership, is determined having regard to the general law of personal property (s 22 of the Act) and the particular rights identified in s 23 of the Act.

22    These factors suggest that there is considerable force in the submission advanced by Laminar that Mediaquest was incorrect insofar as it found that the Registrar had power under s 81 to amend the Register because a jurisdictional fact that formed the basis of the entry on the Register was absent. However, it is not necessary for us to decide this point. As we have noted, the language of s 216(2) provides no basis upon which it may be concluded that the fact of a valid change of name is a jurisdictional fact. The learned primary judge was correct in the circumstances to distinguish Mediaquest.

23    There is another reason for rejecting Vokes’ argument that s 81 permits the Registrar to amend the Register to record Vokes as the registered owner. In the present case s 81 was invoked not merely to correct what was said to be an error made in entering a relevant particular, but to remove from the Register the name of Laminar as registered owner. The power conferred on the Registrar by s 81 is a relatively narrow one. Although it permits the Registrar to correct an error made in entering a particular, it does not permit the making of what might be considered consequential amendments to the Register by, as occurred here, removing from the Register the name of a subsequent registered owner who attained registration following an assignment of the registered mark by a person whose name was previously entered in the Register as registered owner. The fact that the latter’s name may have been entered by the Registrar in error does not mean that the particulars of ownership entered following the assignment are also susceptible to correction by the Registrar under s 81.

24    Section 22 of the Act confers on the registered owner of the trade mark the right to deal with the trade mark as its absolute owner and give good faith discharges for any consideration for that dealing, subject to some important exceptions. However, the right to be recorded in the Register as owner of a registered mark implicitly conferred by s 22 on a purchaser in good faith for value and without notice of any fraud on the part of the registered owner, cannot be defeated by an application under s 81 to substitute the name of the original owner in place of the name of such a purchaser. It is apparent from the language of s 81 and the broader statutory scheme that the Registrar’s power under the section does not extend this far. In such a case, the rights of the parties, including the question whether the purchaser is entitled to the protection available under s 22, are to be determined by the Court in an application under s 85 or s 88 of the Act.

25    In view of our conclusion the appeal must be dismissed. Accordingly it unnecessary to consider the Laminar’s Notice of Contention.

Associate:

Dated:    16 July 2018