FEDERAL COURT OF AUSTRALIA

1-800-Flowers.Com, Inc v Registrar of Trade Marks [2012] FCA 209

THE COURT ORDERS THAT:

1.    The application be dismissed.

2.    The applicant pay the respondent’s costs.

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

REASONS FOR JUDGMENT

1    On 6 October 2011 a delegate of the Registrar of Trade Marks ordered that the acceptance of two applications for registration of trade marks be revoked and re-examined. Rather than abide by the outcome of the re-examination, the applicant applied to this Court for judicial review.

2    In substance, the applicant’s complaint is that the delegate failed to have regard to its registered trade marks and the similarity of one of those marks to the two new marks, and so failed to take into account all the circumstances that existed at the time the application for the two new marks was accepted, contrary to s 38(1) of the Trade Marks Act 1995 (Cth) (“the Act”). It seeks orders under the Administrative Decisions (Judicial Review) Act 1977 (Cth) (“ADJR Act”) quashing the delegate’s decision and directing the Registrar to refrain from taking any steps to implement it.

3    For the reasons that follow the application must fail.

Background

4    The applicant is the owner of the following composite mark, which is registered as trade mark number 762635 in classes 35, 39 and 42 with effect from 20 May 1998 (“the applicant’s first trade mark”):

5    On 6 June 2005 Flowerscorp Pty Ltd (“Flowerscorp”) applied to register the word mark “1300 FLOWERS” in classes 31, 35, 38 and 39. This application was given number 1058591 and remains under examination, although it appears that the examination has been deferred.

6    On 10 November 2005 the applicant applied to register the following two marks in classes 31, 35 and 38:

7    On 2 October 2007, an examiner for the Registrar, Dr Simon Rose, issued second examination reports with respect to these two applications. In his report concerning the word mark, Dr Rose cited the Flowerscorp’s word mark as an objection to acceptance, and the word mark (application 1085074) remains under examination (which also appears to have been deferred).

8    Nevertheless, the composite stylised mark featuring the tulip under application 1085078 was accepted for registration on 11 October 2007, advertised in the Official Journal on 25 October 2007, and registered on 5 February 2008 as trade mark registration number 1085078 (“the applicant’s prior tulip mark”).

9    Between November 2008 and February 2010 Flowerscorp applied to register nine trade marks bearing the name “1300 Flowers” in classes 31, 35 and 39, though not all applications sought registration in all classes (“the additional 1300 Flowers marks”). Some were stylised, some not. None contained an image of a flower.

10    In September 2010 Flowerscorp’s solicitors wrote to IP Australia urging the Registrar to apply to the Court under s 88 of the Act for an order cancelling the registration of the applicant’s prior tulip mark. The Deputy Registrar refused, noting that the mark had been entered onto the register over two and a half years earlier, no-one had raised any concerns in that time, and there was no information or evidence to clearly show that the registration had had any adverse effect on the public.

11    On 10 December 2010 the applicant applied to register two additional trade marks in four classes (31, 35, 38 and 39) (“the Trade Marks”). Both the Trade Marks were composite marks consisting of the numerals and words “1-800-flowers.com” and incorporating a stylised image of a tulip. The first of them was identical in appearance to the applicant’s prior tulip mark, which had been accepted for registration in October 2007 and registered on 5 February 2008 but the description of the goods and services was broader than for the earlier mark. Before the application was made, the applicant made a request under the TM Headstart Service for an assessment of whether the Trade Marks were suitable for registration. On 3 December 2010 a search of the register was conducted and the same examiner as before (Dr Rose) wrote to the applicant’s trade mark attorneys confirming that the marks would meet the requirements for acceptance for registration.

12    In February 2011 the solicitors for Flowerscorp wrote to IP Australia complaining that the examination process for the Trade Marks and the additional 1300 Flowers marks had been inconsistent. The letter explained that the applicant’s prior tulip mark and the 1085074 work mark application had been cited against all of Flowerscorp’s applications for the additional 1300 Flowers marks because they were “identical or closely similar”; yet the Trade Marks Office had accepted the applicant’s Trade Marks without raising any citations in relation to Flowercorps’ applications for the additional 1300 Flowers marks.

13    The letter from Flowerscorp sparked a review of the examination process, at the conclusion of which the applicant was notified that the Registrar intended to revoke acceptance of the Trade Marks. The applicant requested a hearing and a hearing took place before the delegate. Importantly, in the notice to the applicant dated 28 March 2011, a representative of the Registrar advised that there had been an error or omission in the course of the examination. He explained:

Similar Registered Trade Marks were incorrectly identified by the examiner during the search of the register during the examination of your application.

These marks consist principally of a phone number prefix and the word FLOWERS as does mark 1396655 [and 1396656]. These marks are deceptively similar to your trade mark. The examiner gave insufficient weight to this aspect of the marks and too much to the image component of mark 1396655 [and 1396656]. The marks make similar claims which span classes 31, 35, 38 and 39.

The statutory scheme

14    Applications for registration are dealt with in Part 4 of the Act.

15    Section 27 of the Act sets out who may apply for the registration of a trade mark, how the application is to be made and the information it should contain. Section 31 imposes a duty on the Registrar to examine and report on whether the application has been made in accordance with the Act and whether there are grounds for rejecting it. Section 33 provides that after that examination the Registrar is obliged to accept the application (although conditions or limitations may be imposed) unless satisfied of one of two things: either that the application has not been made in accordance with the Act or that there are grounds under the Act for rejecting it. In either of these events, the Registrar must reject the application. The grounds for rejection are set out in Division 2 (ss 39–44). Relevantly, they include (subject to certain qualifications) where the applicant’s trade mark is “substantially identical with, or deceptively similar to … a trade mark whose registration in respect of similar goods or closely related services is being sought by another person” and the priority date for registration of the applicant’s trade mark is not earlier than the priority date for the registration of the other trade mark (s 44(1)).

16    The Registrar may not reject an application, however, without giving the applicant an opportunity to be heard (s 33(4)). And notice of the decision must be given in writing to the applicant and advertised in the Official Journal (s 34). An applicant who is dissatisfied with the Registrar’s decision may appeal to this Court (s 35).

17    If an application is accepted, in certain circumstances the Registrar has the power to revoke it. Section 38(1) of the Act provides:

Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

(a)    the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

(b)    it is reasonable to revoke the acceptance, taking account of all the circumstances.

18    The consequences of a decision to revoke acceptance are set out in subs (2). They are that:

    the application is taken to have never been accepted;

    the Registrar must examine, and report on, the application as necessary under s 31; and

    ss 33 and 34 again apply in relation to the application.

The delegate’s decision

19    The delegate said that in order to assess whether the Trade Marks should not have been accepted it was necessary to consider whether the grounds for rejection under s 44 were “justified” and whether it is reasonable to revoke acceptance, taking into account all of the circumstances.

20    The delegate noted that the additional 1300 Flowers marks all had earlier priority dates than the Trade Marks and were for “similar/closely related” goods and services in the same classes as the classes for which the applicant sought registration of the Trade Marks. He found that on a side-by-side comparison none of the additional 1300 Flowers marks was substantially identical to the Trade Marks but, notwithstanding some points of dissimilarity, they were deceptively similar. He reached that conclusion by assessing the effect or impression created by each mark: Australian Woollen Mills Ltd v F.S. Walton and Company Ltd (1937) 58 CLR 641 at 658.

21    The delegate then turned to consider whether it was reasonable to revoke acceptance of the registration of the Trade Marks. To that end he noted a submission from the applicant’s solicitor that the examiner of the Trade Marks was highly experienced and had demonstrated total consistency in his examination of the applicant’s four 1-800-Flowers trade marks. The delegate said that both these propositions might be true but neither provides any guidance on whether it is reasonable to revoke the acceptance. He cited the following remarks of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (“Ocean Spray”) at [35]:

[A]lthough consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

22    The delegate went on to say this:

An examiner may, for example, be consistent in persisting with errors. While consistency on the trade marks register is a consideration in whether or not to revoke acceptance, I have already decided that there was an error in the examination of the Trade Marks. My role is not to further perpetuate errors but effectively answer the question under section 38 of the Act. I am satisfied that it is reasonable to revoke the acceptance of the Trade Marks. The Applicant’s arguments were confined to whether there was an error and the reasonableness of revoking acceptance. As a result, whether the Trade Marks can be accepted under prior use, honest concurrent use or other circumstances will be a matter for examination.

(Emphasis added).

23    He then directed that one month from the date of the decision the acceptances of the two applications for registration of the Trade Marks be revoked and re-examined as provided by s 38(2)(b) of the Act. He fixed upon the one month lag time to give the applicant an opportunity to appeal (although, it should be noted, the Act in fact confers no right to appeal from such a decision).

The application for review

24    The applicant claims that the delegate’s decision was an improper exercise of the Registrar’s power within the meaning of s 5(1)(e) of the ADJR Act (or the decision was not authorized by s 38 (see ADJR Act, s 5(1)(d)) for two reasons:

(1)    the delegate failed to take into account relevant considerations (ADJR Act, s 5(2)(b)); and

(2)    the decision was so unreasonable that no reasonable person could have exercised the power in this way (see ADJR Act, s 5(2)(g)).

25    The applicant also claims that the delegate identified a wrong issue, which affected the purported exercise of the power under s 38 and amounts to an error of law (see ADJR Act, s 5(1)(f)).

26    The Registrar’s primary argument was that the application should be dismissed in the exercise of the Court’s discretion. In the alternative, the Registrar submitted, there was no merit in any of the grounds the applicant raised.

27    The Registrar’s primary argument should prevail. Before I explain why that is so, I will give my opinions on the grounds the applicant relied upon.

Was there a failure to take into account relevant considerations?

28    Where an Act provides that an administrative decision-maker may take certain action if satisfied of the existence of particular specified matters, relief may be obtained if a person affected by the decision can show that the decision-maker failed to take into account a relevant consideration. But where the matter upon which the decision-maker is required to be satisfied is a matter of opinion it may be very difficult to show that the decision-maker has erred in this way: Buck v Bavone (1976) 135 CLR 110 at 118–9.

29    The applicant accepts that a failure to take into account a relevant consideration will only vitiate an administrative decision if the consideration is one the decision-maker was bound to take into account: Minister for Aboriginal Affairs v Peko-Wallsend Ltd (1986) 162 CLR 24 (“Peko-Wallsend”) at 39. The applicant’s argument rested on the expression “taking account of all the circumstances” that appears in both paragraphs of s 38(1), although the argument was focussed on the use of the expression in paragraph (a). The applicant argued that the Registrar was required to take account of all the circumstances existing at the time the Trade Mark applications were accepted (emphasising the adjective “all”) but did not do so. Specifically, the applicant submitted that in setting out his reasons for finding that the applications should not have been accepted (at [13]–[22]) the delegate did not mention three relevant matters:

    the applicant’s first trade mark (the daisy mark) and its earlier priority date,

    the applicant’s prior tulip mark and its earlier priority date, and

    the fact that the Trade Marks were substantially identical or similar to the applicant’s prior tulip mark, and cover the same, similar or closely related goods or services

30    As he did not mention these matters in those paragraphs – so the argument ran – the delegate did not take into account all the circumstances existing at the time the applications were accepted and the decision was an improper exercise of the power conferred by the Act because of a failure to take into account a relevant consideration. I accept that the matters to which the applicant referred are apparently relevant. But I reject the argument.

31    The mere fact that the three matters were not mentioned in the particular paragraphs does not mean they were not taken into account: Reece v Webber (2011) 192 FCR 254 at [65]. There is a difference between failing to consider something and failing to mention it. There is no principle of law that requires an administrative decision-maker to advert to every piece of relevant evidence. Cf. Applicant WAEE v Minister for Immigration and Multicultural Affairs (2003) 75 ALD 630 at [46]. In any case, at [19] the delegate referred to the applicant’s first trade mark, albeit in the context of a discussion of an earlier decision concerning that mark. At four places in his decision ([4], [10], [23] and [26]) he also referred to the applicant’s prior tulip mark. He did so in the context of addressing the applicant’s argument that the examiner’s decision to accept the Trade Marks was consistent with the acceptance of the earlier ones.

32    For these reasons I am unable to conclude that the delegate did not take the three matters into account.

33    As the applicant’s argument developed, however, it took a different twist. This part of the argument rested on the terms of s 44, which provides (omitting the notes):

(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)    the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)    a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)    a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)    a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

(3)    If the Registrar in either case is satisfied:

(a)    that there has been honest concurrent use of the 2 trade marks; or

(b)    that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4)    If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a)    beginning before the priority date for the registration of the other trade mark in respect of:

(i)    the similar goods or closely related services; or

(ii)    the similar services or closely related goods; and

(b)    ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

34    The applicant submitted that the delegate fell into error because, once he formed the view that the marks were deceptively similar, he should have notified the applicant and asked for evidence or submissions going to the issues under subss 44(3) and (4). The applicant submitted that that was consistent with the requirements of procedural fairness. It argued that the failure to consider those subsections means that the delegate could not have formed the requisite degree of satisfaction under s 38 because the matters raised by those subsections formed part of the circumstances existing when the application was accepted. I interpolate that, although the applicant was given an opportunity to amend its application to plead a denial of procedural fairness, it elected not to do so.

35    The applicant complained that the delegate noted the substance of subss (1) and (2) of s 44 but did not apply his mind to subss (3) and (4), which qualify the operation of the earlier two subsections. (Section 44 has been described as an “interlocking series of subsections”: McCormick & Co Inc v McCormick (2000) 51 IPR 102 at [93]). In particular, the applicant submitted that the delegate did not consider whether the applicant’s trade marks had been used for the period referred to in subsection (4). Yet – so the applicant argued – continuous use during the statutory period gives rise to an obligation not to reject the application for registration.

36    It is common ground that the delegate did not consider the terms of subsections (3) or (4). There are some difficulties, however, with the applicant’s argument.

37    In the first place, the delegate was not considering whether or not the applications for registration should be rejected but where there was error in accepting them. The delegate’s focus was with error in the examination process. The effect of the delegate’s decision is to require the examiner to reconsider whether the Trade Mark applications should be accepted. At that point the matters raised in s 44 will come into play. The parties agreed that the examiner would not be bound by the delegate’s finding of deceptive similarity. The fact of the matter, as subs 38(2) states, is that once the acceptance is revoked, the application is taken to have never been accepted and the process begins anew.

38    Secondly, before the hearing, in the letter sent on behalf of the Registrar dated 28 March 2011, the applicant’s attention was expressly drawn to s 44 of the Act. At the hearing, the applicant’s representative, Mr McInnes, an experienced trade mark attorney, made a forensic choice not to address the delegate on the question of these issues. The delegate referred to this at [12] of his reasons:

Mr McInnes cautioned against revoking acceptance on the basis of a simple difference of opinion between examiners, implying that this was the case here. After being given the opportunity to do so, Mr McInnes declined to address the issue of deceptive similarity between the trade marks in any detail. He believed it would compromise his client’s position should the matter progress to an opposition under section 52 of the Act. However, in order to decide whether it is reasonable to revoke acceptance I find that I must assess the proposed grounds for rejection.

39    Except for the note of caution to which the delegate referred, I was informed by counsel for the applicant that Mr McInnes did not address the issue of deceptive similarity between the trade marks at all. Had he taken up the opportunity afforded him to do so, no doubt he would have drawn the Registrar’s attention to the matters raised by subsections (3) and (4) of s 44.  

40    In any event, the question of whether this ground of review can be made out depends on whether the delegate was obliged to take all these matters into account. Where the relevant factors are not expressly stated, what an administrative decision-maker is bound to take into account depends on what is implied by the subject-matter, scope and purpose of the statute: Peko-Wallsend at 39–40. In this case I do not think that an implication can be gleaned from the subject-matter, scope and purpose of the Act that the delegate was bound to take into account the matters upon which the applicant relied. Plainly, the matters set out in s 44 must be taken into account in the exercise of the power under s 33 to accept or reject the application, but that is not the power the delegate was exercising in this case.

41    In the case of the three matters relating to the registration of the applicant’s earlier marks, I note what Jacob J said in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”) at 305:

It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see eg Re “Madame” Trade Mark [1966] RPC 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.

42    Wilcox J cited this passage with approval in Ocean Spray at [35].

43    Section 38 was amended by the Intellectual Property Laws Amendment Act 2006 (Cth) (“the 2006 Amendment Act”). Before the 2006 Amendment Act commenced on 27 March 2007, the Registrar’s power was limited. In the absence of special circumstances, the Registrar could only revoke acceptance of an application if he or she was satisfied that the application was accepted because of an error or omission in the course of examination. In the absence of any express reference, however, I would not conclude that the Parliament intended by the amendment to require a comparison with earlier registered marks. Nothing in the Explanatory Memorandum on the Bill or the Minister’s Second Reading Speech would suggest so.

44    That brings me to what I see as the fourth problem with the applicant’s argument. It involves, in my view, an approach to the interpretation of s 38 that does not appear to promote the purpose of the section.

45    The purpose of the amendment, according to the Explanatory Memorandum, was to expand the Registrar’s power to revoke acceptance, not to constrain it.

[14]    Subsection 38(1) of the Trade Marks Act as presently enacted allows the Registrar to revoke the acceptance of a trade mark application in certain circumstances. These circumstances relate to whether the application for registration of the trade mark was accepted because of an error or omission in the course of examination, or to ‘special circumstances’ of the case. This provision has been interpreted in a narrower manner than was originally intended, so that certain classes of errors or omissions, and certain types of special circumstances, have been held not to fall within the operation of the provision. One of the aims of the provision is to put beyond doubt that the Registrar may take account of all circumstances when deciding whether to revoke the acceptance of a trade mark, and not just a limited sub-class of circumstances.

[15]    Paragraph 38(1)(a) clarifies that the Registrar is able to take account of any circumstance that existed which should have prevented acceptance. It is not necessary that the Registrar knew or was in a position to know of the existence of the circumstances at the time the application was accepted for this paragraph to apply. This may include an error of judgement or omission on the part of the examiner, or information about the trade mark that was not available to the Registrar at the time of examination, for example:

•    the examiner may have overlooked or discounted information that would lead, if properly considered, to the examiner rejecting the application; or

•    an international application for a conflicting mark having an earlier priority date had not yet been filed in Australia.

    The Registrar is not limited in what he or she may consider.

46    I accept, of course, that the task of the Court is to give effect to the objective intention of the Parliament not the subjective intention of the Minister (Harrison v Melhem (2008) 72 NSWLR 380 (“Harrison”) at [16] per Spigelman CJ, that is, the intention as it is expressed in the legislation (Harrison at [160] per Mason P)). The section does not explicitly confer a discretion on the Registrar to have regard to all the circumstances. On the other hand, neither does it state that the Registrar must take into account all the circumstances. In my view, the Parliament did not intend to require the Registrar to take into account the three matters the applicant relies upon or the matters referred to in subss 44(3) and (4). I note that the authors of Butterworths Annotated Trade Marks Act 1995 (LexisNexis Butterworths, 2010) state that, as the expression “taking account of all the circumstances” also appears in s 84A(1) (which deals with revocation of registration) where some of the circumstances to be taken into account are specified, it is likely that the same circumstances would be relevant to a decision under s 38. That may be so as a matter of commonsense. But that does not mean that the Registrar is bound to take those circumstances into account in considering whether to revoke acceptance of an application for registration under s 38. It could not be said, for example, (and it was not argued) that the delegate erred in this case because he did not consider any relevant obligation of Australia under an international agreement, although that is a circumstance to be taken into account under s 84A. Section 84A was also inserted into the Act by the 2006 Amendment Act. Had Parliament intended to require the Registrar to take into account the matters set out in s 44(3) and (4) when deciding whether to revoke acceptance of an application, it could easily have said so. It seems that Parliament’s intention in not specifying any circumstances in s 38 was not to require the Registrar, in exercising his or her power under that section, to take into account any particular circumstances.

47    I am reinforced in this view by a consideration of the effect of the Registrar’s decision, which is to trigger a whole new examination where all relevant circumstances can be considered.

48    For all these reasons I do not think that the delegate was bound to consider the various matters raised by the applicant. I would therefore reject the first ground of review.

Was the decision so unreasonable that no reasonable person could make it?

49    The applicant faces a formidable obstacle here. The question is not whether the delegate’s decision was unreasonable. As Gummow J observed in Minister for Immigration and Multicultural Affairs v Eshetu (1999) 197 CLR 611 at [137]:

[W]here the criterion of which the authority is required to be satisfied turns upon factual matters upon which reasonable minds could reasonably differ, it will be very difficult to show that no reasonable decision-maker could have arrived at the decision in question. It may be otherwise if the evidence which establishes or denies, or, with other matters, goes to establish or to deny, that the necessary criterion has been met was all one way.

50    The applicant accepts that this is a difficult case to make, describing the bar for this ground of review as a high one. Its argument is that the delegate’s conclusion reaches it nonetheless. It is convenient to set out the argument in full. It was only put in written submissions:

[52]    The delegate’s analysis under s 38 proceeded on the following premises:

•    first, that the “cited trade marks” (being Flowerscorp’s marks) were either pending, the subject of opposition proceedings or a ground for rejection under examination (RD 17 [15]);

•    secondly, that the “cited trade marks containing the expression ‘1300 Flowers’” are “deceptively similar” to the Trade Mark Applications (RD 19 [22]).

[53]    If the second premise be correct, then it would necessarily follow as a matter of logic that:

•    the “cited trade marks containing the expression ‘1300 Flowers’”, other than Flowerscorp’s trade mark application number 1058591, ought not be registered in the face of the Applicant’s Prior Trade Mark;

•    Flowerscorp’s trade mark application number 1058591 ought not be registered in the face of the Applicant’s First Trade Mark.

[54]    Assuming the delegate’s premises, the inexorable conclusion as a matter of logic is that there would be no applications for registration of a trade mark for similar or closely related goods or services with a priority date earlier than the Trade Mark Applications other than the Applicant’s First Trade Mark and, thus, no impediment to their acceptance for registration.

[55]    In these circumstances, the delegate cannot possibly have achieved the necessary degree of satisfaction, as required by s 38. His expressed conclusion to the contrary is demonstrative of irrationality, illogicality or unreasonableness of the kind that constitutes an error of law within the meaning of s 5(1)(e) and s 5(2)(g) of the AD(JR) Act.

[56]    That three of the “cited trade marks containing the expression ‘1300 Flowers’” had in fact been entered on the Register before the delegate had made his decision but after the hearing, does not detract from this conclusion. If anything, it highlights the irrationality of this particular decision of the delegate to revoke the acceptance of the Trade Mark Applications in circumstances where the Flowerscorp marks were entered on the Register in apparent co-existence with both the Applicant’s Prior Trade Mark and the Applicant’s First Trade Mark.

51    There are two essential problems with the argument.

52    First, the conclusion in [53] of the applicant’s submissions does not necessarily follow and the conclusion in [54] is not inexorable. As the applicant, itself, points out, a trade mark may be accepted for registration even if it is substantially identical or deceptively similar to a registered mark. In any case, the delegate’s finding as to deceptive similarity of the Trade Marks with the Flowerscorp trade marks does not lead to the inexorable conclusion that there would be no applications for registration of a trade mark for similar or closely related goods or services with an earlier priority date. The delegate did not make any findings about whether or not the Flowerscorp trade marks should be registered.

53    Secondly, the delegate’s task was to inquire into the decision of the examiner to accept for registration the two trade marks the subject of the applicant’s application. For that purpose it was neither illogical nor unreasonable to compare those trade marks with those of Flowerscorp, particularly when they were drawn to the Registrar’s attention. Indeed, such a comparison must be undertaken in the examination process. It follows that the decision to revoke acceptance of the applications based on a finding of deceptive similarity between the trade marks was not so unreasonable that no reasonable person would have done the same, even if the delegate ought reasonably to have taken into account that one of the applications related to a trade mark that was identical in appearance to a registered trade mark belonging to the applicant.

54    There would arguably be an inconsistency between the delegate’s decision to revoke acceptance of the applicant’s applications and a decision to register trade marks containing the expression “1300 Flowers”, but there is no evidence that such a decision has been made.

55    The proper forum in which to ventilate these matters is before the examiner when all the facts are available. For this reason, as I explain in more detail later, even if I were persuaded that this ground had merit, I would not be disposed to exercise my discretion to grant relief.

Did the delegate identify a wrong issue?

56    This ground was based on the premise that at [27] of his reasons the delegate found that the applicant’s prior tulip mark had been registered in error. The submission was that, in considering that his role was not to perpetuate error, the delegate identified a wrong issue, for it was irrelevant for him to take into account error in the registration of the prior mark. The submission (and therefore the ground) must be rejected for two reasons.

57    First, the premise is wrong. There is nothing to indicate that the delegate came to the view that there was an error in the registration of the applicant’s prior tulip mark. The error to which he was referring in [27] was an error in the examination of the applications for the Trade Marks in 2011, nothing else. To conclude that the delegate took into account error in the registration of the prior mark is at odds with his reference to the passage in the judgment of Wilcox J in Ocean Spray. Admittedly, the marks in those cases do not appear to be owned by the applicants, but the point is the same.

58    Secondly, even assuming that the Registrar implicitly, if not explicitly, considered that the prior tulip mark had been registered in error, that was not irrelevant. The discretion is unconfined in its terms. Accordingly, the exercise of the discretion is also unconfined, except to the extent that some implied limitation appears from the subject matter, scope and purpose of the statute: Peko-Wallsend at 40. Here there is no such limitation. It is scarcely inconsistent with the Act for the Registrar to be concerned about error in the registration of a trade mark. During the course of argument, counsel for the applicant conceded that a really egregious error might well bear upon whether it was reasonable to revoke acceptance of the application. He said the difficulty here was because the applicant’s prior tulip mark was identical in appearance with one of the Trade Marks. This, it seems to me, tends to show that the applicant’s complaint is not that the delegate identified the wrong issue, but that he made the wrong decision. That is no basis for judicial review. The Court has no jurisdiction simply to cure administrative error or injustice: Attorney-General (NSW) v Quin (1991) 170 CLR 1 at 35–6.

Should the discretion be exercised in the applicant’s favour?

59    Having regard to the view I have reached on the grounds of the application it is strictly unnecessary to deal with this question. But in case the view I have reached is wrong, I should indicate why – even if the applicant had made out its case – I would have exercised my discretion to refuse relief.

60    Shortly put, the Registrar’s argument was that the decision was not determinative of the applicant’s rights. The delegate did not reject the applications. The effect of his decision was to require the applications to be examined afresh. At this point all the applicant’s concerns can be put before the examiner. If the application is rejected, the applicant has a right to appeal under s 35 of the Act, and the appeal is in the nature of a hearing de novo (see Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 at [24] per Kenny J). There is a legislative policy or intention that the appeal process for which the Act provides be utilised. Cf. Wyeth Australia Pty Ltd v Minister for Health and Aged Care (2000) 61 ALD 372.

61    In my view, the argument is a powerful one and should be accepted.

62    Section 16(1) of the ADJR Act provides that the Court may, in its discretion, make all or any of a number of orders listed in the subsection. It was common ground that the subsection gives the Court the discretion to make no order at all, even if the grounds of review are made out.

63    The Full Court said in Kamha v Australian Prudential Regulation Authority (2005) 147 FCR 516 (“Kamha”) at [87]:

The grant of relief under the ADJR Act is discretionary. That is consistent with the principles concerning the grant of relief under the prerogative writs. There was a discretion for a court to refuse prerogative relief where an alternative remedy was available. That principle is also the origin of the express discretion conferred by s 10(2)(b). Nevertheless, that express discretion does not derogate from the general discretion arising under s 16.

64    The principles concerning the grant of relief under the prerogative writs were discussed at some length by Kirby P in Boral Gas (NSW) Pty Ltd v Magill (1993) 32 NSWLR 501 at 508–12. Although, as his Honour there explained, the mere existence of an alternative statutory remedy was not fatal to a grant of prerogative relief; commonly, relief will be withheld if there is an “equally effective and convenient remedy”.

65    The applicant submitted that this was not a proper case for relief to be refused on discretionary grounds. It nominated three reasons. First, this would be the first time that the Court considered the interaction between ss 38 and 44 of the Act and this was important for the administration of the Act. Secondly, there was no right to appeal on the merits. Thirdly, relief should not be refused where the Registrar (or her delegate) has misconstrued the power, and where the applicant would be required to bear the additional cost of a new examination.

66    Turning to the first matter, exercising the discretion to refuse relief does not preclude a consideration of the merits of the application and therefore the relationship between the two sections. Nevertheless, in my view, because of the way the proceeding was conducted before the delegate, this is not an appropriate case for a treatise on the subject.

67    It is true that the Act does not provide for a right of appeal from a decision of the Registrar to revoke the acceptance of an application for registration. But doubtless that is because there is a full right to appeal from any subsequent decision to reject the application. The legislative purpose is clear. Parliament intended that any challenges be made to the decision to refuse or limit registration, not to the anterior decision to revoke acceptance. The only prejudice the applicant could identify if relief were refused on discretionary grounds was in costs, although there was no evidence about the amount of additional costs likely to be incurred. That inconvenience should yield to the legislative intention.

68    In Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31 at 34, a case dealing with the discretion conferred by s 10(2)(b) of the ADJR Act, Davies J said that it was “generally desirable that the time of this Court should not be taken up with issues for the determination of which the legislature has established adequate administrative remedies”. His Honour went on to observe that:

It has been said in a number of reported cases that the burden lies upon a respondent to show that the court should not exercise the jurisdiction conferred upon it … Nevertheless, the general practice of the court is not to consider, in the first instance, a dispute for the resolution of which a satisfactory administrative remedy has been provided.

69    Here, there is such a remedy.

70    In Stack v Commissioner of Patents (1999) 55 ALD 654 at [14] Drummond J said of an application under the ADJR Act for the review of a decision of a delegate of the Commissioner of Patents to refuse summary dismissal of an opposition:

Such a decision, while no doubt a decision to which the AD(JR) Act applies, is not determinative of the rights of either of the parties to the proceeding before the delegate … The applicants have full opportunity in the final hearing to (sic) which they are entitled to pursue all the arguments they wish to raise against the sustainability of the notice of opposition, including those they have raised for the first time in this court. Even if the continuing pendency before the commissioner of the applicants’ claim for the extension of time does not enliven the special discretion conferred on the court by s 10(2)(b) the AD(JR) Act, I consider that the policy considerations underlying that provision and which were referred to in Bragg v Secretary, Department of Employment, Education and Training (1995) 59 FCR 31 at 34; 38 ALD 251 are of relevance in the circumstances of this case to the exercise of the more general discretion conferred on this court by s 16(1) the AD(JR) Act.

71    The same can be said of the position in the present case.

Conclusion

72    The application should be dismissed with costs.

Associate:

Dated:    12 March 2012