FEDERAL COURT OF AUSTRALIA

TRADE MARKS                              )          

PRACTICE & PROCEDURE          )           -application for leave to appeal – tests to be applied – how question whether, supposing the decision to be wrong, the applicant would suffer substantial injustice should be understood in the case of an application by a statutory officer such as the Registrar of Trade Marks.

Trade Marks Act 1995, s 44(2)(a)

de Cordova v Vick Chemical Co (1951) 68 RPC 103 referred to

Polo Textile Industries Pty Limited v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 referred to

Sharp v Deputy Federal Commissioner of Taxation (1988) 88 ATC 4184 followed

Decor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 followed

The Sports Cafe v Registrar of Trade Marks (1998) AIPC ¶91-409 followed

THE REGISTRAR OF TRADE MARKS v WOOLWORTHS LIMITED

NG 1146 of 1998

Burchett J

Sydney

9 December 1998

THE COURT ORDERS THAT:

            Leave to appeal be granted

AND THAT the costs of the application for leave be costs in the appeal.

Note:                Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

EX TEMPORE REASONS FOR JUDGMENT

This is an application, brought by the Registrar of Trade Marks, for leave to appeal against a decision of a judge allowing an “appeal”, so called, from a decision of a delegate to reject an application by Woolworths Limited to register the mark (represented in a particular way) “WOOLWORTHS metro”.  The delegate had thought the mark was “deceptively similar”, within the meaning of s 44(2)(a) of the Trade Marks Act 1995, to a number of other marks consisting of or involving the word “metro”.  In asserting this view, the Registrar relies on the prevalence, in supermarkets such as those conducted by Woolworths Limited, of the practice of the sale of goods bearing house brands.  There are also, of course, some authoritative pronouncements, such as the dictum of Viscount Radcliffe in de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 105-106 which is quoted in Polo Textile Industries Pty Limited v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227 at 231, to support the proposition that the mere addition of a word to an existing word mark will not generally avoid a risk of deception.  The question is complicated by questions of the relationship between goods marks and service marks.  In my opinion, the validity of the Registrar’s case is reasonably arguable.

It is plainly not appropriate for one judge to attempt to assess the prospect that an appeal against a decision of another judge would succeed, if leave were granted.  The question is rather whether the appeal would be reasonably arguable or, to put what is really the same point another way, whether there is sufficient doubt to warrant reconsideration of the matter by a Full Court:  Sharp v Deputy Federal Commissioner of Taxation (1988) 88 ATC 4184 at 4186; Decor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 at 398-399; The Sports Cafe v Registrar of Trade Marks (1998) AIPC ¶91-409.  The other primary question for the application of what was called in Decor the litmus test for a case suitable for a grant of leave is whether the denial to the applicant of an opportunity to appeal would involve a substantial injustice, supposing the decision of the judge to have been wrong.  In the case of an application for leave by the Registrar, this test must be understood in a somewhat different sense from that which would be appropriate in a proceeding between private litigants.  The Registrar has a statutory responsibility in relation to the implementation of the Act with respect to the register.  In the present case, the affidavit in support of the application evidences the Registrar’s concern that the judgment challenged by him would have a significant impact on his performance of his statutory duties.  In my opinion, supposing the decision to be wrong, the fact that it would require such duties to be performed inappropriately and so as to affect adversely the rights of registered proprietors of marks, rights which the Registrar should protect, is a sufficient basis to allow a reasonably arguable appeal to proceed.

Accordingly, I grant leave to appeal.  I order that the costs of the application for leave be costs in the appeal.

Associate:

Dated:              9 December 1998