FEDERAL COURT OF AUSTRALIA

Société BIC SA v MC Distributor Pty Ltd [2006] FCA 1261

PRACTICE AND PROCEDURE – application for leave to file and serve revised cross-claim – whether revised cross-claim properly pleaded – whether claims obviously futile or untenable – consideration of irregularities as to form – cross claimant alleged jurisdictional errors by Registrar – where claims brought under Administrative Decisions (Judicial Review) Act 1977 (Cth) and relief is available under Trade Marks Act 1995 (Cth) – whether Court should exercise discretion to refuse application under Administrative Decisions (Judicial Review) Act 1977 (Cth) in light of relief available under Trade Marks Act 1995 (Cth)

TRADE MARKS – pleadings – requirements of ss 41(6) and 65 of Trade Marks Act 1995 (Cth)

Trade Marks Act 1995 (Cth) ss 41(6), 62(a), 65, 68, 88

Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 104 FCR 61 cited

Woolworths Limited v BP plc [2006] FCAFC 132 cited

SOCIÉTÉ BIC SA AND BIC AUSTRALIA PTY LTD v M C DISTRIBUTOR PTY LTD AND YUAN MING ZHAO

VID 926 OF 2004

YOUNG J

8 SEPTEMBER 2006

MELBOURNE

THE COURT ORDERS THAT:

1.            The application for leave by Amended Notice of Motion filed 26 July 2006 (as further amended by Orders made by consent on 17 August 2006) be refused.

2.            The Cross-Claimant pay the Applicants’ costs of the application for leave including costs reserved on 28 July 2006 and on 17 August 2006 and any costs thrown away by reason of the substitution of the revised Second Cross Claim for the Second Cross Claim dated 26 July 2006 which was Annexure “A” to the affidavit of William Hu affirmed 26 July 2006.

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

REASONS FOR JUDGMENT

1                     I have before me an application for leave to file and serve a second revised cross-claim (‘proposed cross-claim’) by the first respondent against the applicants. In my opinion, the application for leave must be refused. The Court will normally entertain an application for amendment of a pleading if the amendment is in proper terms. However the Court will not entertain such an application if the amendment is obviously futile or untenable or would cause substantial injustice which cannot be otherwise compensated, such as by an order for costs.

2                     The proposed cross-claim is not in proper form and is confusingly drafted. It seeks to raise claims which are, in a number of respects, untenable or doomed to fail. For instance, it contains a claim under s 88 of the Trade Marks Act 1995 (Cth) for cancellation of the registration of a trade mark; however, the claim does not reflect the statutory conditions for an application under s 88 nor does it make clear what precise statutory grounds are relied upon to support the s 88 claim. The proposed cross-claim also alleges what are said to be various jurisdictional errors by the Registrar. In my opinion, those allegations are not clearly tied to any statutory provisions concerning the power or jurisdiction of the Registrar to accept the trade mark application. Many of these matters go to questions of mere process by the Registrar that would not, in my view, amount to any kind of jurisdictional error.

3                     I do not propose to examine the proposed cross-claim in any greater detail in these reasons for decision, save that I will make some comments about the parts of the proposed cross-claim that rely on the Administrative Decisions (Judicial Review) Act 1977 (Cth) (‘ADJR Act’) and the Trade Marks Act.

proposed claim under The ADJR Act

4                     Paragraph 36 of the proposed cross‑claim makes an allegation that seeks to invoke the ADJR Act. It is alleged that the Registrar, in accepting the trade mark application, made errors of law, acted beyond jurisdiction, made decisions that were not authorised and exercised the power improperly or in a way that resulted in an uncertain exercise of power.

5                     These claims seem to be an alternative way of putting the basic grievances concerning the Registrar’s decision to register the trade mark. I doubt very much whether an application under the ADJR Act can be used to seek the cancellation of a trade mark when there is a direct avenue for that remedy under s 88 of the Trade Marks Act: see Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 104 FCR 61 at 78-79 [63]-[66].

6                     There are other reasons for thinking that the ADJR Act application is untenable in its present state. The pleading is irregular as to form and the statutory basis for the allegation of error of law is not made clear. There are substantial discretionary obstacles to the grant of relief under the ADJR Act, aside from the availability of more direct remedies under the Trade Marks Act: the trade marks were registered in 2001; the proceeding was issued in 2004; the application for leave to file and serve the proposed cross-claim was mounted in July 2006; and, following orders for further directions, it is being heard only now in September 2006.

7                     I do not propose to express any final view about the question whether an ADJR Act application could conceivably be filed, if properly framed. The form of the proposed cross-claim is not one I am prepared to allow to proceed.

Claims under the trade marks act

8                     For the sake of completeness, I will add some observations concerning the basic grievances raised by the respondent. As I followed counsel’s argument and as I interpret the form of the proposed cross-claim, there are two substantive grievances that may provide a foundation for relief under the Trade Marks Act.

9                     The first relates to an amendment to the trade mark application made prior to its acceptance by the Registrar which is alleged to have been made contrary to s 65 of Trade Mark Act. Mr Archibald, counsel for the respondents, put that complaint in two ways: first, he said that the endorsement had, by confining the mark to the shape of the barrel, substantially affected the identity of the trade mark. The basis for this allegation was that before the endorsement was made, the trade mark comprised the shape of the entire lighter, including the lighting mechanism. That mark was said to be a substantially different mark than a mark consisting of the barrel only.

10                  The other argument, which I find less persuasive, is that the amendment that described the three dimensional shape of the barrel of a lighter as being a ‘right cylinder of elliptical cross section’ fell foul of s 65 because there could be any number of right cylinders of elliptical cross section. The difficulty with this argument is that it seeks to read the endorsement without regard to the pictorial depiction of the elliptical shape in the representation of the mark. The two must be read together: see Woolworths Limited v BP plc [2006] FCAFC 132 at [31]-[47].

11                  In my view, there is the possibility of such arguments being raised under s 65 to found an opposition to registration under s 68, having regard to the provisions of s 62(a).

12                  The second substantive grievance raised concerned the Registrar’s decision to accept registration of the mark under the provisions of s 41(6).

13                  Section 41(6)(a) provides that before a shape mark can be registered, the Registrar must be satisfied, by evidence, that because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it distinguishes the designated goods and services as being those of the applicant. If the evidence establishes those matters, the trade mark is taken to be capable of distinguishing the designated goods or services for the purposes of s 41(2).

14                  The proposed cross-claim complains that the Registrar relied on an informal survey in determining that the trade mark the subject of the application was distinctive under s 41(6). This complaint is, in my view, essentially a complaint that there was no evidence before the Registrar that satisfied s 41(6). If the claim were framed in this way, there would at least be a tenable ground for cancellation under the provisions of s 57 and s 88. However, the claim has not been put in terms of s 41(6); indeed Mr Archibald said that the proposed cross-claim, as presently framed, does not rely upon s 41(6). It is hard to see what other relevance the informal survey has to the claim for cancellation.

15                  In making those observations, I am not expressing any view as to whether a properly framed claim might be brought under s 88. I make these observations simply to illustrate the fact that, if such a claim is to be made, it ought to be put in a way that conforms to the provisions of the Trade Marks Act. The present claim does not do that. In my view, the proposed cross-claim does not disclose tenable causes of action and is certainly not expressed in a proper form.

Conclusion

16                  For the foregoing reasons, I refuse the application for leave to file and serve the revised second cross-claim.

17                  The applicant has sought an order for the costs of this application. I will order costs in the terms sought by the applicant, save that I will not order the costs to be taxed and payable forthwith.

Associate:

Dated: 21 September 2006