FEDERAL COURT OF AUSTRALIA

College of Law Limited v Australian National University [2013] FCA 492

THE COURT ORDERS THAT:

1.    In order to prevent prejudice to the proper administration of justice, the folder of documents entitled “Privileged documents of which the Applicant seeks production” are to remain confidential and are not to be published (see s 37AF of the Federal Court of Australia Act 1976 (Cth)).

2.    Within 7 days hereof, the parties are to seek to agree proposed orders giving effect to these reasons for judgment, including orders as to costs. If the parties are unable to reach agreement, they should each file and serve an outline of submissions not exceeding 3 pages setting out their respective positions and proposed orders within 7 days hereof.

3.    Unless one of the parties requests a further oral hearing on final orders, final orders will be made on the papers.

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

REASONS FOR JUDGMENT

Introduction

1    The College of Law Limited (College) has commenced proceedings against the Australian National University (ANU) for trade mark infringement, passing off and misleading and deceptive conduct arising from the ANU’s use of the name “ANU College of Law”. The ANU defends the proceedings and also brings an amended cross-claim seeking cancellation of two trade mark registrations obtained by the College (including on the basis of alleged false suggestions made to the Registrar in conjunction with the application to register the second trade mark) or, alternatively, variation of those registrations such that they apply only to practical legal training, continuing professional education and legal practice management training.

2    Two separate issues have arisen in the course of discovery in preparing for the trial. The first relates to challenges by the College to various claims of legal professional privilege (privilege) raised by the ANU in resisting inspection by the College of certain documents. The second issue relates to ANU’s enforcement of two contentious categories of discovery in respect of its amended cross-claim. The College objects to providing discovery in respect of the disputed categories on the grounds that the documents are not relevant to any matter in dispute.

3    The two issues are the subject of interlocutory applications filed on behalf of the College and the ANU respectively.

4    Before dealing with those applications, it is convenient to set out some relevant background material.

Summary of relevant background material

5    The issues arise in the context of a major restructuring of the ANU which commenced in 2005. On 10 June 2005, the ANU’s governing authority, the Council, met and considered a report dated June 2005 by the Vice-Chancellor which proposed significant changes to the ANU’s structure. The essence of the proposal was to establish seven Colleges with a view to developing strategic directions based on the disciplinary strengths of the ANU. Under the proposed restructure related departments of the various Research Schools would combine with related departments and faculties responsible for undergraduate education. One of the proposed Colleges was the College of Law, the components of which were to be the Faculty of Law (the Law School), the Legal Workshop and the National Institute for Social Sciences and Law. The other Colleges were:

    the ANU College of Arts and Social Sciences;

    the ANU College of Asia and Pacific Studies (now known as the ANU College of Asia and the Pacific);

    the ANU College of Business and Economics;

    the ANU College of Engineering and Information Technology;

    the ANU College of Medicine and Health Sciences; and

    the ANU College of Science.

6    According to the Vice-Chancellor’s report, the establishment of the Colleges was intended to create new vehicles “to bring coherence and planning in order to position ANU so that the University can respond to an unpredictable future”. The key objectives of the restructure were described in that report as follows:

•    research at the highest standards of excellence;

•    educational programs informed by current research and active researchers – as a source of knowledge and a way of learning which will give students a memorably good experience of ANU;

•    graduates with capabilities for global participation;

•    scholarly outcomes that advance Australia;

•    service of value to national and international communities.

7    The report emphasised the need for the ANU to position itself in a “changing world”. Reference was made to changing “domestic policy settings, alongside increasing competition in domestic and international arenas” as adding weight to the need for ANU to change in order to prosper. The Vice-Chancellor identified the following relevant issues:

•    the spread and atomisation of our organisation stops us from building strategically the capacity we need to sustain coherent educational programs at the cutting edge of knowledge and offer our students uniquely challenging experiences;

•    there are gaps in our educational offerings relevant to our disciplinary strengths, and some of the courses we do offer are supported by a small number of academic staff;

•    often our researchers who participate in curriculum development and teaching receive little recognition of their efforts;

•    the facilities of ANU in one academic area are sometimes inaccessible to ANU staff and students from other areas, or the conditions of access are inequitable. Such local access rules can prevent collegial interaction and cross-disciplinary activity, and reduce the efficient use of resources;

•    external funding agencies receive competing bids from ANU rather than a single coordinated proposal drawing on the distributed strengths of ANU. We can fail to be competitive when we fail to harness all our capabilities.

8    On 10 June 2005, the Council approved the Vice-Chancellor’s proposed restructure, with the exception of the use of the name “ANU College of Law”. The minutes of the Council meeting held on that day record that an exception was made in respect of the naming of the ANU College of Law because that nomenclature was similar to the “NSW College of Law” and there was a concern that a trade mark issue might be involved. Accordingly, the Council resolved that the Vice-Chancellor should seek further legal advice on the use of the name “ANU College of Law”.

9    On 14 June 2005, the Vice-Chancellor contacted the College’s managing director, Mr Neville Carter, and advised him as a matter of courtesy of ANU’s plans to introduce a college system at ANU, including the proposed ANU College of Law. On 20 June 2005, the Vice-Chancellor sent Mr Carter a follow-up letter dealing with those matters and with the express hope that it would allay any concerns which the College might have.

10    By letter dated 8 July 2005, Mr Carter replied to the Vice-Chancellor and conveyed the College’s “considerable” concerns regarding ANU’s proposal. He said that the proposal was likely to create confusion and might also infringe the College’s trade mark rights. Mr Carter urged ANU to reconsider its plans and adopt an alternative name.

11    On 9 December 2005, the ANU Council met and approved the use of the name “ANU College of Law”.

12    The disputed documents for which ANU claims privilege broadly relate to seeking and/or obtaining legal advice on the use of that name. All but a few of the disputed documents were created during the period June 2005 to December 2005.

ANU’s claims of privilege

13    Two groups of documents in the ANU’s List of Documents are in issue. The first group broadly concerns documents from the University’s Legal Office providing advice to the Vice-Chancellor and the ANU Faculty of Law during the period April 2005 to late 2005. The contested documents in this group are numbered 1-12, 17-25, 44, 47-49 and 52 in Part 2 of the List of Documents.

14    The College argues that the ANU has failed to establish that privilege attaches to the relevant documents and says further that, even if privilege subsists, such privilege has been waived. The basis of the waiver argument is that the substance of the legal advice given to the Vice-Chancellor and the ANU Faculty of Law was disclosed respectively in:

(a)    the agenda papers for the Council meeting held on 9 December 2005; and

(b)    a document entitled “Australian National University, ANU College of Law, College Administration” dated December 2005, which was apparently prepared by the ANU Faculty of Law.

15    The second group of documents in dispute as to the privilege claims involves chains of email correspondence involving the Dean of Law at the ANU Faculty of Law and other ANU staff. At the hearing, the ANU did not press its claim for three of the five disputed documents in the second group, leaving only documents numbered 45 and 62 in contention. The College argues that the ANU failed to establish that privilege ever attached to those email communications.

16    I should add at this point that copies of all documents in dispute were provided to the Court. It is common ground that the Court is entitled to inspect the documents. I will make a non-publication order under s 37AF of the Federal Court of Australia Act 1976 (Cth) in respect of that folder of documents.

17    Before turning to consider the privilege claims, it is convenient to say a little more about the College’s case based on alleged waiver.

18    As noted above, the basis of the College’s waiver case is that the substance of the legal advice given by the Legal Office was disclosed in two documents. The first of those documents is the agenda papers for the Council Meeting on 9 December 2005. It was at this meeting that the Council decided to implement the name “ANU College of Law”. That decision was made against the background of the Council’s decision on 10 June 2005 to defer any final determination on that matter while the Vice-Chancellor sought further legal advice.

19    The agenda papers for the Council Meeting scheduled for 9 December 2005 included a section dealing with the topic “College nomenclature”. A recommendation was made that the name “ANU College of Law” be approved. The agenda papers then set out the following material:

Background

ANU College of Law

ON 10 June 2005, Council approved the proposed operational improvements to the ANU as outlined in paper 206/2005 with the exception of the use of the name “ANU College of Law” and asked the Vice-Chancellor to seek further legal advice in light of the existence of the NSW College of Law.

The Legal Office has provided detailed advice to the Vice-Chancellor that the existence of the NSW College Law does not prevent the ANU from using the name “College of Law”. As a result of discussions with the NSW College of Law, the Legal Office and the Dean of Law are putting in place procedures to ensure that the ANU Legal Workshop does not operate under the new College in a way that would confuse it with the operations of the NSW College of Law (emphasis added).

The emphasised sentence in that extract is at the heart of the College’s argument that privilege has been waived in respect of the relevant advice.

20    It is undisputed that the ANU has a practice of publishing the non-confidential parts of agendas and minutes of Council meetings on the University website. There is no contest that the agenda papers as described above were available on the University website.

21    The second document which is relevant to the College’s waiver argument is a paper entitled “Australian National University, ANU College Law, College Administration”. Although it is common ground that the final version of this document was created around 15 December 2005, it is also evident that the document evolved through various drafts, the earliest of which appears to date back to 18 November 2005. The paper seems to have emanated from the Faculty of Law. It outlines various issues concerning the establishment of the ANU College of Law and its administration. The College led evidence, which was not contested, that the document in its final form was available on the ANU website to ANU staff and ANU students using a student username and password. The document included the following statement:

Advice was received at the end of October from the University Legal Office that the Faculty could proceed to market using the brand name ANU College of Law.

Consideration

22    It is convenient to first outline the relevant legal principles before applying those principles to the contested claims for privilege.

Summary of relevant legal principles

23    The parties were generally agreed on the relevant principles to apply in determining both the subsistence of a claim for privilege and implied waiver. Reference was made to various authorities, including Mann v Carnell (1999) 201 CLR 1 (Carnell); Bennett v Chief Executive Officer, Australian Customs Service (2004) 140 FCR 101; AWB Limited v Cole (No 5) (2006) 155 FCR 30 (Cole); Osland v Secretary, Department of Justice (2008) 234 CLR 275 (Osland); British American Tobacco Australia Ltd v Secretary, Department of Health and Ageing (2011) 195 FCR 123 (BATA) and Cooper v Hobbs [2013] NSWCA 70. Drawing on those authorities, the relevant principles concerning the subsistence of privilege may be summarised as follows:

(a)    privilege attaches to communications between legal adviser and client for the dominant purpose of giving or obtaining legal advice, where the communications are confidential and the legal advisor is acting in his or her professional capacity;

(b)    the party claiming privilege bears the onus of establishing the facts necessary to establish the claim. The onus might be discharged by evidence as to the circumstances and context in which the communications occurred or the documents were brought into existence, or by evidence as to the purposes of the person who made the communication, or authored the document, or procured its creation, but might also be discharged by reference to the nature of the documents supported by argument or submissions;

(c)    the existence of privilege is not established merely by using verbal formula, or by asserting that privilege applies to particular communications, or that communications are undertaken for the purpose of obtaining or giving “legal advice”;

(d)    for privilege to attach to communications between a salaried legal adviser and his or her employer, the adviser must be consulted in a professional capacity in relation to a professional matter and the communications must be made in confidence and arise from the relationship of lawyer and client (it appears that the possession of a current practising certificate is not an essential precondition to the availability of privilege but that issue need not be determined here);

(e)    although the concept of legal advice is reasonably broad, it does not extend to advice that is purely commercial or of a public relations character;

(f)    subject to meeting the dominant purpose test, privilege extends to notes, memoranda or other documents made by officers or employees of the client that relate to information sought by the client’s legal adviser to enable him or her to advise; and

(g)    the Court has power to examine a document over which privilege is claimed and, where there is a disputed claim, the High Court has said that the Court should not be hesitant to exercise such a power (see Grant v Downs (1976) 135 CLR 674 at 689). The essential purpose of such an inspection is to determine whether, on its face, the nature and contents of the document support the claim for privilege.

24    These authorities also establish the following relevant principles concerning implied waiver of privilege (noting that it is common ground here that the common law principles apply at this stage of the proceedings and not Part 3.10 of the Evidence Act 1995 (Cth)):

(a)    privilege will be waived where the conduct of the person claiming it is inconsistent with the maintenance of the confidentiality in the relevant communication which the privilege is intended to protect;

(b)    the test for implied waiver is objective, thus where such inconsistency is found, privilege will be waived regardless of the subjective intention of the party claiming the privilege;

(c)    whether there is inconsistency is to be determined in the context and circumstances of the case and in the light of any considerations of fairness arising from that context and those circumstances;

(d)    the question of implied waivers raise matters of fact and degree;

(e)    disclosure of the gist, conclusion, substance or effect of a privileged communication does not necessarily effect a waiver of legal professional privilege in respect of the advice as a whole. Whether it does or not in a particular case depends on whether, in the circumstances of that case, the requisite inconsistency exists between the disclosure on the one hand and the maintenance of confidentiality on the other;

(f)    the context includes such matters as the nature of the matter in respect of which the advice was received, the evident purpose of the person making the disclosure, and the legal and practical consequences of limited, rather than complete, disclosure; and

(g)    where the party claiming privilege has disclosed or deployed the relevant information in order to achieve some forensic or other advantage for itself, or to disadvantage another person in a similar way, this may amount to conduct which is inconsistent with the maintenance of the confidentiality which the privilege is intended to protect. Accordingly, the purpose for which the partial disclosure was made is important.

25    With those general principles in mind, I will now address in turn the issues of:

(a)    subsistence of the privilege; and

(b)    whether the privilege has been waived.

(a)    Subsistence of the privilege

26    As noted above, there is within the ANU an office called “Legal Office”. The Legal Office is headed by the University Counsel and is staffed by six other solicitors, plus two administrative support staff. The Legal Office has overall responsibility for the provision and coordination of legal advice to the ANU. For what it is worth, it might also be noted that evidence was adduced that the University Counsel and the relevant employed solicitors within the Legal Office each held a practising certificate at the relevant times.

27    As noted above, all but a few of the documents in group 1 bear dates between June 2005 to 9 December 2005. The evidence strongly establishes that, during that period, ANU was planning to undertake a major restructure and move towards a new model based around seven central Colleges. The decision to adopt that structure was made by the Council at its meeting on 10 June 2005, but the Council deferred the adoption of the name “ANU College of Law” because of an awareness at that time that there could be an issue using that nomenclature. The Vice-Chancellor was instructed to seek further legal advice on that issue with specific reference to the applicant here. It is clear that the Legal Office was providing legal advice on that issue during the period from before June 2005 up until the Council’s meeting on 9 December 2005, when the final decision was made to adopt the nomenclature.

28    I accept the ANU’s submission that the above matters are sufficient to establish the privilege in relation to each of the documents in group 1. In particular, it can be inferred from the description of those documents in the List of Documents (i.e. as being communications between the University Counsel or Legal Officers within the Legal Office to other members of the University) that they were communications for the necessary dominant purpose. The evidence established that the Legal Office exists only to provide legal advice to the University (including coordinating the provision of such advice by external lawyers).

29    As noted above, the documents in group 1 were also made available for the Court’s inspection. Having inspected the documents, I am satisfied that the claims for privilege are properly made out.

30    Different considerations arise in respect of documents 45 and 62, which comprise the second group of documents. These sets of documents are described in the List of Documents as “email correspondence between Michael Coper, Dean of Law at ANU, and various members of staff of the respondent” (noting that there appears to be a typographical error in the description of document 45). Both sets of documents involve email chains in the periods February-March 2006 and May 2006 respectively which are built around an email which contains a privileged communication. Both sets of documents are said to be privileged on the ground that they record confidential communications between a lawyer and their client that was made for the dominant purpose of the lawyer providing legal advice to the client and also in respect of anticipated Australian proceedings.

31    The College points out that the Dean of Law is an academic and not a practising lawyer. Having inspected the documents, however, I am satisfied that the email chains do record legal advice which is privileged. I accept the College’s submission that, if only parts of the email chains record privileged legal advice, it is only those parts over which privilege exists and the balance should be produced for inspection. The difficulty, however, is that the confidential legal advice permeates the email chains to such an extent that it is not practicable to separate the privileged and non-privileged material.

32    In my view, with one exception, both chains of email are privileged. The exception relates to certain documents which are included in the set of documents comprising document 45. Those documents are separately stapled from the email chains and comprise copies of extracts from both the agenda for the Council Meeting for 9 December 2005 and the Minutes of the Council’s Meeting on 10 June 2005. There is nothing in either the evidence generally or the documents themselves to suggest that copies of those extracts (which themselves are not privileged) were brought into existence for the dominant purpose of seeking or obtaining legal advice. Accordingly, I find that the claim for privilege does not extend to those extracts and they should be made available for inspection.

(b)    Has ANU waived privilege?

33    The primary factors relied upon by the College in support of its submission that privilege has been waived are as follows:

    the nature of the matter in respect of which the legal advice was received was a commercial issue regarding the branding of ANU’s legal education services, as opposed to any issue of general public importance;

    the gist of the legal advices was disclosed to the public to a greater or lesser extent because the agenda papers for the 9 December 2005 Council meeting were made available on the internet as a public document in advance of the meeting and the College Administration paper created around 15 December 2005 was available to ANU staff and students online;

    the evident purpose of the disclosures was to secure a commercial advantage for the ANU, namely the approval of its Council and securing the support of staff and students for the proposal respectively;

    it follows that a further purpose of the disclosure was to disadvantage the College commercially by causing the ANU to adopt the nomenclature despite the unresolved concerns of the College;

    the practical consequence of the disclosures was to obtain Council approval and the support of other persons to the proposal; and

    if privilege has been waived by the relevant conduct, documents which were reasonably necessary to understand the legal advices should be produced to avoid any misunderstanding of that advice (citing Attorney-General for the Northern Territory v Maurice (1986) 161 CLR 475).

34    In my view, the College’s submissions should not be accepted. For the following reasons, and bearing in mind that the question of implied waiver invariably raises issues of fact and degree, I consider that the disclosures made in the two relevant documents did not entail implied waiver of privilege in the relevant legal advices.

35    First, the disclosures reveal very little about the actual content of the legal advices apart from stating that:

(a)    the Legal Office had provided detailed advice to the Vice-Chancellor that the existence of the NSW College of Law did not prevent the ANU from using the name “ANU College of Law”; and

(b)    advice had been received at the end of October 2005 from the Legal Office that the Faculty could proceed to market using the brand name ANU College of Law.

No detail was provided as to the subject matter or content of either advice other than to describe their overall effect. The disclosures did not reveal any of the reasoning underpinning the subject legal advice.

36    Secondly, the purpose of the two disclosures was not to secure some advantage to the ANU which had an adverse impact upon the College. Rather, I consider that the purpose of the disclosure made in the Council agenda papers was driven by the ANU’s recognition as a publicly funded institution of the desirability of keeping interested persons informed of matters which were to be the subject of the Council’s deliberations, whilst preserving ANU’s entitlement to receive advice from its Legal Office to which privilege attached. Under s 9 of the Australian National University Act 1991 (Cth), the Council has the entire control and management of the University.

37    I consider that the purpose of making available to staff and ANU students the College Administration paper dated 15 December 2005 was to inform such persons of the administrative implementation of the proposed restructure, including the name change, so as to maximise the prospects of that aspect of the restructure being successfully implemented. The document itself was created around 15 December 2005, which postdates the Council’s meeting of 5 December 2005 when the final decision was taken to adopt the nomenclature. Although the evidence demonstrated that the Council’s composition included members representing ANU staff (both academic and non-academic) as well as students, the evidence indicated that the paper was only made accessible to staff and students online after the Council approved the use of the nomenclature on 9 December 2005. In those circumstances, I cannot accept the College’s submission that the document was deployed to secure the support of staff and ANU students for a “commercial purpose”.

38    Thirdly, although it is evident from the Vice-Chancellor’s report that commercial or financial considerations were taken into account among many other non-commercial considerations in determining to proceed with the restructure (including the restructure involving the ANU College of Law), the critical issue to my mind is not so much ANU’s purpose in implementing the restructure, but rather is the purpose of publishing the Council agenda papers for the 9 December 2005 meeting and making available online to staff and ANU students the December College Administration paper. Of course, the subject matter of the relevant advice is a relevant consideration, but it will not necessarily determine what was the purpose of the disclosures. In the circumstances here, and recognising the importance of the public nature of the University (as is reflected, for example, in the fact that the University is established by Commonwealth legislation, receives public funding and is subject to the Freedom of Information Act 1982 (Cth)), the relevant disclosures here were made for the primary purpose of providing public accountability and transparency in respect of the University’s activities and in providing interested persons, including staff and students, with historical context and logistical information so as to maximise the prospects of the restructure being successfully implemented.

39    Fourthly, I consider that little or no weight should attach to an option raised by the College, namely that if ANU wished to preserve its privilege in the relevant documents it should have included the relevant material in the confidential section of the Council agenda papers (which section was not made publicly available). While it was obviously open to the University to adopt that course, there are good reasons why the University should not be encouraged to do so. On the contrary, having regard to the University’s public nature and character as outlined above, the University should be encouraged to provide maximum accountability and transparency while also preserving the confidentiality of appropriate information, including privileged advice.

ANU’s interlocutory application concerning discovery

40    There are two categories of documents which are in dispute. They arise in the context of ANU’s amended cross-claim which, as noted above, seeks to have the College’s trade marks cancelled or, alternatively, varied. One of the pleaded bases for seeking to have the second trade mark (Trade Mark 1,061,893) cancelled is the allegation made in paragraph 22A of the amended cross-claim which asserts that the registration is liable to be cancelled for false suggestion pursuant to s 88 of the Trade Marks Act 1995 (Cth) (the Act). ANU alleges that the College supplied a statutory declaration to the Registrar of Trade Marks in relation to the issue whether the College’s use of the words “College of Law” overshadowed the purely descriptive nature of those words and that the statutory declaration omitted certain matters which are said to have misled the Registrar.

41    Paragraphs 19A and 20A of the amended cross-claim put the College’s knowledge in issue in respect of the contents of the statutory declaration. Paragraph 20A of the amended cross-claim pleads that, as at 28 February 2007, the College had filed its application for registration of the second trade mark as a consequence of the ANU informing it on 14 June 2005 that it was going to use the name “ANU College of Law” and that, as at 28 February 2007, the College knew that ANU had in fact adopted that nomenclature.

42    These matters are substantively denied by the College, with the consequence that ANU says that there is a dispute between the parties concerning:

(a)    whether the College filed its application for the second trade mark as a consequence of the ANU informing it of its proposal to adopt the name “ANU College of Law”; and

(b)    the College’s knowledge of the ANU’s use of that name.

43    Following certain amendments made by ANU during the course of the hearing, the ANU’s category 3 for discovery states:

3.    All documents recording, evidencing or referring to the applicant’s awareness of the respondent’s legal education services and/or any possibility for confusion between the respondent’s legal education services and those of the applicant in the period of three years preceding the date the applicant applied for Trade Mark 1,061,893, including but not limited to:

a.    Internal minutes of the applicant (including but not limited to board minutes);

b.    Internal correspondence of the applicant.

44    Thus category 3 requires the College to produce documents that disclose its awareness of the ANU’s legal services and also requires production of documents that disclose the possibility of confusion, in the context of the ANU adopting the nomenclature.

45    During the course of the hearing, the College indicated that it was prepared to amend its defence to the amended cross-claim to admit that it knew that ANU had in fact adopted the name “ANU College of Law”. Mr Darke (who appeared on behalf of the College), submitted that, in those circumstances, category 3 was irrelevant.

46    In response, Mr Webb SC (who appeared together with Mr Anforth on behalf of ANU) emphasised that the College’s proposed admission did not address that part of category 3 which relates to the “possibility of confusion”. Thus that aspect of the category was still pressed. Mr Darke further submits that, in those circumstances, since category 3 is in its terms limited to the period of three years preceding the date the second trade mark was sought (i.e. 24 June 2005), the period covered by category 3 should be confined to the period between 14 June 2005 (i.e. when the Vice-Chancellor first advised the College of ANU’s proposal) and 24 June 2005 (being the date of application to register the second trade mark). I accept that submission. Category 3 should be amended accordingly to reflect both those matters.

Category 7

47    ANU’s category 7 for discovery is as follows (incorporating certain amendments made during the course of the hearing):

7.    All documents and other records of the applicant recording or evidencing the applicant’s decision to apply for trade mark number 1061893 and/or to prosecute any such application, including but not limited to:

a.    internal deliberations to apply for each trade mark including without being limited to the purpose of the trade marks and the timing of the applications for each of the trade marks;

b.    internal deliberations about the timing or delays in prosecuting either application;

c.    correspondence between the applicant and lawyer or trade mark attorney in relation to the application for any trade marks; and

d.    correspondence between the applicant and the Registrar of Trade Marks and/or Australian Industrial Property Organisation and/or IP Australia in relation to the application for any trade marks.

48    ANU argues that category 7 requires production of documents recording the College’s decision to apply for the second trade mark, which goes to the dispute as to whether the College filed its application as a consequence of the ANU informing the College of its decision to adopt the name “ANU College of Law”.

49    The College argues that paragraph 20A(a) is liable to be struck out as it is not relevant to the claim for s 88 relief on the basis that it goes only to the issue of purpose and not the alleged misleading of the Registrar. ANU submits that the issue of purpose may be relevant to the relief claimed in respect of the alleged false suggestion.

50    There appears to be some tension in the cases as to whether the power to order rectification under s 88 of the Act involves a true discretion. Notwithstanding the presence in that provision of the term “may”, the view was expressed in EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 at 287 per Branson J that the Court did not have a “true” discretion in the matter. Later decisions, such as Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 at [129] per Moore, Sackville and Emmett JJ and Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd (2008) 75 IPR 102 at [75] per Greenwood J, have taken a broader view. I consider that it is reasonably arguable that the issue of the College’s purpose in seeking the registration of the second trade mark may be relevant to any issue of discretion to order rectification under s 88 of the Act. Consequently category 7 is relevant and should remain as amended.

51    The parties are to seek to agree proposed orders giving effect to these reasons for judgment within 7 days hereof, including orders as to costs. On the issue of costs, although the ANU has been substantially successful in resisting the College’s interlocutory application on privilege and in prosecuting its own interlocutory application on discovery, some concessions were made by ANU both before and during the hearing which had the effect of narrowing the issues in dispute in respect of both the privilege claims and discovery. I have also ordered production of a sub-set of the documents in document 45 and narrowed category 3 of ANU’s discovery category. If the parties are unable to reach agreement, they should each file and serve an outline of written submissions setting out their respective positions and proposed orders within 7 days hereof. Unless the parties indicate otherwise, the interlocutory applications will then be finalised without a further oral hearing.

Associate:

Dated:    23 May 2013