FEDERAL COURT OF AUSTRALIA

Beling v Sixty International S.A. [2015] FCA 250

THE COURT ORDERS THAT:

1.    Appeal allowed.

2.    The decision of the delegate of the Registrar of Trade Marks as to Trade Mark Application Number 1441489 made on 16 October 2014 is set aside only insofar as the delegate declined, in paragraph [37] of the decision, to make an award of costs to the applicant.

3.    The Registrar is directed, whether through a delegate of the Registrar or otherwise, to reconsider the applicant’s application for costs in accordance with the reasons of the Court on this appeal.

4.    The respondent is to pay the applicant’s professional costs of and incidental to the appeal on and from 12 January 2015 and disbursements incurred in the appeal, such costs and disbursements to be fixed by the Court in accordance with directions given.

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

REASONS FOR JUDGMENT

Summary

1    The applicant, Mr Beling, has appealed from a decision of a delegate of the Registrar of Trade Marks made on 16 October 2014. The applicant acted for himself in the proceeding before the Registrar and was successful before the delegate of the Registrar in resisting a notice of opposition filed by the respondent, Sixty International SA, a company which appears to be incorporated in Luxembourg, to the registration of a trade mark, but no costs were awarded. The applicant appeals from the part of the decision relating to the refusal of costs on the basis that he is a solicitor and is entitled to be given professional costs, even though he acted for himself. An officer of the Registrar informed the Court that the Registrar had elected not to appear on the appeal and did not seek to be heard pursuant to r 34.23 of the Federal Court Rules 2011 (Cth) (the Rules).

2    For the reasons given below, the appeal should be allowed on the basis that the Registrar’s delegate failed to apply the correct legal principles to his decision to refuse to order costs to Mr Beling. Whether or not the applicant will secure an order for costs, and if so, in what amount, are matters for the exercise of discretion by the Registrar, or her delegate.

Background

3    On 12 August 2011, the applicant applied to the Registrar to register a trade mark for an apparel business logo under, it appears, s 27 of the Trade Marks Act 1995 (Cth) (the Act). The trade mark was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 December 2011. On 1 March 2012, the respondent filed a notice of opposition to the registration of the trade mark pursuant to s 52 of the Act.

4    In the proceeding before the Registrar, the respondent was granted a number of extensions of time to file supporting evidence, which was ultimately filed on 18 January 2013. That material consisted of a statutory declaration by a Mr Norman Bruce Morcom, the respondent’s patent and trade marks attorney. Mr Beling then put on responding material, including what he described in his affidavit on this appeal as “only … preliminary submissions on the question of costs”. Despite the respondent applying for an extension of time to file evidence in reply, no such evidence was forthcoming. The time taken by the respondent in filing its evidence was one of the matters the applicant highlighted on the appeal to this Court as justifying an order for costs above scale. Mr Beling filed further submissions in the proceeding before the Registrar on 18 March 2014.

The Registrar’s decision

5    On 16 October 2014, more than three years after the application for registration, a delegate of the Registrar determined that the respondent had not established any ground of opposition under the Act and directed that the applicant’s trade mark application could proceed to registration. It is apparent from the delegate’s reasons that the respondent provided little material to substantiate its opposition to the registration of the trade mark. This was another factor relied on by Mr Beling on the appeal as justifying a larger order for costs: in substance he submitted the respondent had delayed the entire process without submitting any meaningful material in opposition.

6    The delegate considered the trade mark application and the costs issues on the papers. As I set out below, the applicant deposed on the appeal that after the written submissions were filed he was given no further opportunity to make submissions about costs prior to the issuing of the written decision and reasons. I accept that evidence.

7    The delegate found the respondent had not established a ground of opposition under the Act, and directed that the trade mark application proceed to registration one month from the date of his decision.

8    The delegate’s finding and reasons on costs were brief. He said (at [35]-[37] of his reasons):

35.    In the event that he was successful, the Applicant claimed “costs for all legal work undertaken calculated on a solicitor-client basis (even though the Applicant is representing himself), since the Applicant is an Australian legal practitioner…”

36.    Section 105 of the Act envisages a situation where full costs may be awarded outside the scale provided under Schedule 8 of the Trade Marks Regulations 1995. However, that section is not relevant to the current opposition. The applicable scale is that under Schedule 8 to the Regulations.

37.    As the Applicant is representing himself he cannot claim costs incurred (See Cachia v Hanes [1994] HCA 14; (1994) 179 CLR 403 and Bartlem Pty Ltd v Fisher 44 IPR 670). There does not appear to be any out of pocket expenses (such as hearing fees paid) that may be awarded to the Applicant. I decline to make an award of costs.

9    Although there is a reference to s 105, the delegate did not refer to the principal empowering provision, which is s 221 of the Act.

10    References were made by both parties in submissions to the Trade Marks Office Manual of Practice and Procedure, and what was said in that manual about the award of costs. There does not appear to be any statutory power in the Act to issue such a manual and it is clearly no more than a set of administrative guidelines. I note that in the relevant part of the manual dealing with costs, it also fails to mention the exception for solicitor litigants. Whether the manual was, in fact, responsible for the delegate falling into error is immaterial to the outcome of the appeal.

The applicant’s notice of appeal

11    On 23 October 2014, within the time allowed under r 34.24(1) of the Rules, the applicant filed a notice of appeal from the decision of the Registrar’s delegate.

12    The notice of appeal initially named two respondents, being the respondent Sixty International SA as First Respondent and Mr Morcom as Second Respondent. As noted above, Mr Morcom had previously acted as the respondent’s patent and trade marks attorney in opposing the applicant’s trade mark registration in the proceeding before the Registrar. As I describe below, Mr Morcom was subsequently removed as a party to the proceeding.

13    The appeal is expressed to be “from part of the decision relating to the refusal of Registrar’s delegate to make an award costs in favour of the Appellant”. The relief sought in the notice of appeal is relevantly as follows:

1.    An order for an award of full professional costs against the First Respondent.

2.    In the alternative to Order 1, an order for an award of costs outside the scale on the basis of exceptional reasons against the First Respondent.

3.    …

4.    If any of the above Orders are granted, an order adjourning proceedings for three months in order for the Appellant to file an account of costs for the proceeding below and the present appeal.

14    The grounds of appeal set out in the notice of appeal were relevantly as follows:

Grounds relied on in support of sought Order 1

1.    The Registrar’s delegate’s discretion with respect to costs has miscarried in that he applied the wrong principles of the law of costs in making his decision, namely the law relating to the costs of successful self-represented lay litigants instead of applying the law relating to the costs of successful self-represented solicitor litigants.

…

Grounds relied on in support of sought Order 2

2.    Exceptional circumstances exist that would justify an award of costs against the First Respondent pursuant to Part 55 of the Trade Marks Office Manual of Practice and Procedure …

…

Grounds relied on in support of sought Order 4

4.1    The Registrar’s Delegate’s discretion with respect to costs has miscarried in that it was premature, and failed to allow the Appellant the opportunity to file more detailed particulars on the issue.

…

4.2    The Registrar’s Delegate’s discretion with respect to costs has miscarried in that it failed to comply with the rules of natural justice.

15    In respect of Order 2 as sought, the exceptional circumstances relied upon by the applicant were said to be, in summary, that the respondent had acted unreasonably in commencing the opposition proceeding and without reasonable prospects of success, and that the respondent had acted unreasonably or in bad faith in prosecuting the opposition proceeding.

16    In respect of Order 4 as sought, the applicant alleged that the delegate of the Registrar had erred by failing to invite the applicant to provide an account of costs for work undertaken in the proceeding, to provide further submissions on costs or to provide evidence that he was during the course of the proceeding a solicitor, and that the delegate had unfairly and improperly conflated the decision on the merits with the decision on costs.

17    In support of his application, the applicant relied on an affidavit sworn on 7 January 2015 and filed pursuant to orders made by this Court on 21 November 2014. In that affidavit he states that he is “a self-represented solicitor litigant”. He states that before the delegate he “only made preliminary submissions on the question of costs”. He states that he was given

no notice that I would be successful on all the grounds of opposition raised by the Opponent and no opportunity to make substantive submissions on the question of costs, including submitting an Account of Costs for the Registrar of Trade Marks’ consideration and making submissions on exceptional circumstances which would justify an award of costs, including costs outside the scale, in my favour.

Procedural history in this Court

18    The applicant did not attempt service on the respondent in accordance with Pt 10 of the Rules, other than by sending the application to Mr Morcom, apparently both in his capacity as a respondent and because he had represented the respondent before the Registrar of Trade Marks. In the current circumstances, there could be no reliance on r 10.08 (which does authorise service on a party’s representative before the Registrar). It is unclear whether Mr Beling may have been under a misapprehension that r 10.08 did apply.

19    On 21 November 2014, the applicant and Mr Morcom appeared at the first directions hearing in the proceeding. No notice of address for service had been filed by the respondent by this date, nor any notice giving effect to r 4.01(2) of the Rules. Mr Morcom informed the Court he appeared in his capacity as (then) co-respondent. He indicated to the Court that he was not an Australian legal practitioner and had no instructions to act for the respondent in the present proceeding. He did however make it plain that the respondent remained his client, in the sense that he was the Australian patent and trade marks attorney for the respondent, and that he was in communication with the respondent.

20    There being no basis at all for Mr Beling’s naming of Mr Morcom as a co-respondent, orders were made on 21 November 2014 pursuant to r 9.08 of the Rules removing Mr Morcom as the second respondent to the proceeding. Mr Beling did not oppose that order.

21    Since the matter of what was said by Mr Morcom at this directions hearing became something of an issue at final hearing, I set out the relevant parts of what Mr Morcom initially said:

HER HONOUR: You’re not here to inform the Court about anything to do – or make an admission as to service against Sixty International. Is that right?

MR MORCOM: Only insofar as I would – I am the address for service in relation to Sixty International for the purposes of the trademark opposition. So my understanding is that service upon me, our firm, would be service upon Sixty International.

HER HONOUR: All right. Are you able to tell the Court whether – Sixty International to be, under our rules, represented by a lawyer in these proceedings.

MR MORCOM: Yes. I – well, they’re not being represented here.

HER HONOUR: No.

MR MORCOM: That’s actually very difficult. They’re an overseas corporation. I’m dealing through a – being instructed by another firm of attorneys in Luxembourg. They’re based in Belgium, I think, and it’s a very circuitous, rather tenuous sort of route of instruction. So I have no instructions from them here. I cannot represent them here. So I’m here as my own self as a – one of the respondents.

22    Having then explained to Mr Morcom the need for the respondent to file an address for service, and the risk of judgment in default if it did not, the following exchange occurred:

HER HONOUR: Yes. All right. Well, it doesn’t seem to me that there’s any basis for you to be named as a respondent to this proceeding but I am concerned that Mr Beling not – Mr Beling’s application not be entirely frustrated because of the non-appearance of anybody on behalf of the first respondent. The – pardon me a moment. There’s a requirement, the first step a respondent has to take is to file a notice of address for service. Now, until that happens, there’s nobody on the record for the first respondent and that puts the Court, let alone Mr Beling, in an invidious position. And perhaps at least, informally, can I ask you Mr Morcom to convey to your clients because they are your clients at least in one capacity that they need to retain some lawyers in this jurisdiction.

MR MORCOM: Yes.

HER HONOUR: And they need to file an address for service in this jurisdiction, in this matter. All right. It’s rule 5.02 of the Federal Court Rules. You might make a note of that. 5.02. If they don’t do that they risk having judgment entered against them and you will have seen the scope of Mr Beling’s claims. So it does seem to me it’s in their interests as well as in the interests of the administration of justice that they do something about this.

MR MORCOM: All right.

HER HONOUR: So will you communicate that to them?

MR MORCOM: I shall.

23    Although he was then excused, Mr Morcom chose to stay for the duration of the directions hearing.

24    It could not have been clearer, in my opinion, that Mr Morcom led the Court to believe he would bring this proceeding to the respondent’s attention, and that he undertook to convey to the respondent the need to file a notice of address for service and retain lawyers in this jurisdiction. As Mr Morcom’s subsequent evidence bore out, the respondent was, I infer, well aware of the proceeding but had chosen to be uncooperative in it, until the eleventh hour.

25    At that directions hearing, I made orders removing Mr Morcom as a party to the proceeding pursuant to r 9.08 of the Rules, on the basis that there is no power given to the Registrar of Trade Marks under s 221 of the Act to make an order for costs against any person other than a party to the proceedings before the Registrar. That party was relevantly Sixty International SA. The orders also directed the applicant to file written submissions in support of his appeal by 23 January 2015. As no notice of address for service for the respondent had yet been filed, no directions were made in relation to the respondent. I ordered that the proceeding be listed for hearing on 5 February 2015.

26    Following the directions hearing, there was a series of communications from my chambers to Mr Morcom, consequent upon what he had said to the Court. At the final hearing, the applicant cross-examined Mr Morcom about these communications. The applicant also tendered relevant email communications, as part of his opposition to the respondent’s eventual adjournment application, which I deal with below. It is convenient to set out relevant parts of that oral and written evidence, which I accept.

27    By email after the directions hearing, Mr Morcom was sent a copy of my orders of 21 November 2014 and was asked to provide them to the respondent.

28    By email on 17 December 2014, my associate further conveyed to Mr Morcom:

I note that the respondent in this proceeding is yet to file a notice of address for service pursuant to r 5.02 of the Federal Court Rules 2011 (Cth). Her Honour has asked me to confirm with you whether you have

a.    sent a copy of the orders of the Court dated 21 November 2014 to the respondent, and

b.    communicated with the respondent regarding their obligations to file a notice of address for service under the Rules, as you indicated you would do at the directions hearing before her Honour on 21 November 2014.

Noting that you are not acting for the respondent in this proceeding and are no longer a party, her Honour nonetheless has asked me to remind you that the matter is listed for hearing at 10.15am on 5 February 2015. No orders have been made yet for the respondent to file written submissions in response to Mr Beling’s submissions due to be filed on 23 January 2015, and none will be made until the respondent has a solicitor on the record.

Her Honour has also asked me to make clear to you, and asks that you communicate to the respondent, that the hearing date of 5 February 2015 will not be adjourned for the respondent’s non-appearance, and if no address for service is filed they risk having judgment entered against them.

29    Despite a further follow-up email to Mr Morcom on 5 January 2015, no response was received to either email.

30    Mr Morcom confirmed in his oral evidence on the adjournment application that he received a telephone call from my chambers on 27 January 2015, during which he told my associate that the respondent was aware that this matter had been listed for hearing on 5 February 2015.

31    By what was described as a “notice of motion” on 2 February 2015, the applicant indicated he would be seeking the following additional relief at the hearing as follows:

Pursuant to r. 5.23(2)(d) of the Federal Court Rules 2011 (Cth) (“the Rules”), the Applicant hereby gives the Court notice that, at the Hearing of this matter on 5 February, 2015, as a result of the Respondent’s failure to file a Notice of address as required by r. 5.02 of the Rules, the Applicant will be moving the Court for an order giving judgment against the respondent for the relief claimed in “Orders Sought” numbers 1 and 4 of the Notice of Appeal dated 23 October 2014 (p. 2), to which the Court is satisfied that the Applicant is entitled. In addition, the Applicant will be seeking his full professional costs for the present proceeding calculated on an exceptional basis, since he is a solicitor admitted to practice before this Court.

32    Given the conclusion I have reached, it was unnecessary to determine this application.

33    The respondent eventually filed, through its recently appointed solicitors, a notice of address for service on 4 February 2015.

The respondent’s application for adjournment

34    I make the following findings about the course of events up to and including the respondent’s application for an adjournment of the final hearing. On 4 February 2015, when the notice for address for service was filed by the respondent, there was an email communication from the respondent’s newly appointed solicitors, M+K Lawyers. That email was admitted into evidence. Relevantly that email stated that M+K Lawyers were retained on 3 February 2015 to represent the respondent, and counsel was “verbally engaged” on that date. The email then asserted that because the proceeding involved an appeal from a decision of the Registrar of Trade Marks “it will be necessary for the relevant files from the Opposition before the Registrar to be reviewed, together with the documents on the Court file.” The email stated that neither the firm nor counsel would be prepared for a half-day hearing on 5 February 2015, and requested a “revised timetable for a later hearing of the preliminary issues raised by the Court” and an opportunity to respond by affidavit or submissions to any matters raised by the applicant in documents filed with the Court.

35    By email on 4 February 2015 my chambers advised the parties, including M+K Lawyers on behalf of the respondent, that the hearing listed for 5 February 2015 would be proceeding and should the respondent wish to make an application for an adjournment, it may do so at the hearing, supported by affidavit.

36    At the hearing on 5 February 2015 counsel appeared for the respondent, unrobed and without an instructing solicitor. After stating that she had initially thought she would not be in a position to proceed, she then said:

I do have certain views that I have formed which I think it may be useful for your Honour if we could canvass that today. So I don’t want to make a formal application just at this point of time, your Honour. I think it could be useful that we spent some time just going through the matters as I have been able to ascertain in the last 24 hours, and perhaps there’s a possibility of resolution, although it may not be possible.

37    On being informed that the matter was listed for final hearing today, and that it would proceed in the absence of an application for an adjournment, counsel made an oral application for an adjournment and sought to support that application by adducing oral evidence from Mr Morcom.

38    Aside from the matters to which I have already referred, in chief Mr Morcom’s evidence included the following description of his role and of the respondent’s attitude to this proceeding:

I’m the patent attorney representing Sixty International. I’m instructed by another firm of patent and trademark attorneys, Dennemeyer & Co., out of Luxembourg. The – Sixty International is a Luxembourg company with their office in Luxembourg. I take my instructions from Dennemeyer & Co. And I was then acting through – on that – in that regard for the patent opposition against Mr Beling’s – not patent application – trademark application. The opposition against Mr Beling’s trademark application. The matter has since gone on to the appeal to your Court. I continue to be instructed by Dennemeyer & Co., who are taking a very low key of the matter. In essence, they want the matter to go away. And I had been not as diligent as I should have been, hoping the matter would go away, in submitting the address for service for – in relation to this case to the Court. So I hadn’t received any – well, I – being a patent attorney, not a solicitor, I am unable to represent Sixty International before this Court, but we hadn’t put the address for service in for M+K Lawyers until the last couple of days.

39    Later in his evidence he confirmed on several occasions that all his communications with the respondent were through Dennemeyer & Co. Despite a leading question in re-examination from counsel suggesting the contrary, Mr Morcom confirmed that his client was the respondent and Dennemeyer & Co were agents for his client.

40    I accept Mr Morcom did his best to recollect the sequence of events as he understood them. His recollection of some dates and details was not good, but that is hardly surprising. He also gave some evidence about having not been well during this period. He made a series of appropriate concessions about his failures, and delays, in communicating with his client and with the Court. He conceded that he did not have a good reason for not answering communications from the Court, and that he was not diligent in that respect. He conceded that he was not diligent in informing his client about what had happened at the directions hearing, and in the proceeding.

41    The following exchange occurred during Mr Beling’s cross-examination of Mr Morcom:

And why hadn’t you attended to this issue, the filing the notice of address, in the previous seven weeks, approximately?---I don’t have a good excuse for that. I hadn’t been well. I was under a lot of stress at work. It hadn’t happened. The fact that I was still waiting for detailed instructions from my associate in Luxembourg – it’s a bit hard to do something if you’re not getting the instructions.

42    Mr Morcom then conceded that the difficulty was not only in getting instructions, and stated that the respondent itself was not being diligent about its participation in this proceeding. Without any objection by the respondent, he then gave the following evidence, which I understood to have related to negotiations between (at least) Mr Beling and the respondent about offers to pay certain amounts of legal costs to Mr Beling:

The fact that the matter of two and a bit thousand dollars’ worth of costs is being disputed and they’re prepared to pay over and above that amount and they couldn’t understand why that wasn’t a – that the payment of that amount wouldn’t fix the problem.

43    Mr Morcom also conceded the respondent had notice of the hearing date since 21 November 2014.

44    After Mr Beling and the respondent’s counsel made submissions on the adjournment application, I gave an ex tempore decision refusing the respondent’s application for an adjournment, in the following terms

This matter is listed today for final hearing, and has been listed for final hearing since 21 November 2014. Today by oral application, supported by oral evidence, the respondent applies for an adjournment of the proceeding for two weeks. The respondent submits that the applicant should be directed to serve all relevant documents on it by 4 pm today, and the respondent submits that it should be directed to file and serve reply submissions one week from today.

The application for an adjournment is refused. In my opinion the predicament the respondent finds itself in is entirely of its own making. There is no evidence that the respondent had no notice of the appeal. Indeed, to the contrary, the evidence from Mr Morcom that was given on the adjournment application this morning satisfies me that there has been conscious delay or avoidance by the respondent of the fact and the content of this proceeding.

The respondent is now represented and will be given an opportunity to file submissions in response to the applicant’s submissions after the hearing. On that basis I am satisfied there will be no material prejudice to the respondent. The respondent will have three weeks to make those submissions, which is three times as long as counsel informed the Court this morning the respondent needed to make any submissions.

The question of the Trade Mark Registrar’s discretionary power to order costs in favour of a self-represented person who is a lawyer is a confined one, and I am satisfied it can be dealt with fairly without an adjournment. The obligations under section 37M of the Federal Court Act to resolve matters according to law and as quickly, inexpensively and efficiently as possible in what is a confined dispute mean that substantive hearing of this matter should proceed. Otherwise, the costs and resources being expended on this matter by all parties will become even more disproportionate than they already are.

Accordingly, I make the follow directions.

(1)     The applicant is to serve on the respondent, via solicitors, all documents filed in this proceeding by 4 pm on 6 February 2015.

(2)     The respondent is to file and serve any submissions it wishes to make on the appeal by 4 pm on 27 February 2015.

(3)     The applicant is to file any submissions he wishes to make in reply on or before 13 March 2015.

45    The matter then proceeded as a final hearing. The respondent’s counsel had in fact prepared detailed written submissions on the subject matter of the appeal, which she handed up and then developed in oral argument. Those submissions were helpful. Mr Beling had also filed written submissions in advance of the hearing, and developed those in oral argument.

46    Despite the leave granted and the respondent’s submission that it was not ready for final hearing, the respondent did not file any further submissions in accordance with the directions made, and was content to rely on what counsel had submitted orally and in writing at the hearing itself.

relevant legal principles on the substantive APPLICATION

47    Section 221 of the Act authorises the Registrar to award costs to a party:

221 Costs awarded by Registrar

(1)    The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

(2)    A party desiring to obtain costs must apply to the Registrar in accordance with the regulations.

(3)    If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party.

48    Regulation 21.12 of the Trade Mark Regulations 1995 (Cth) (the Regulations) provides that applications for costs under s 221 of the Act may be made as follows:

21.12 Applications for costs

(1)    For the purposes of section 221 of the Act (which deals with costs), a party to proceedings before the Registrar may apply to the Registrar, in an approved form, for an award of costs in relation to the proceedings.

(2)    An application must be made:

(a)     during the proceedings; or

(b)     within 3 months from:

(i)     the day on which the Registrar makes a decision in the proceedings that ends those proceedings; or

(ii)     the date of the Registrar’s notice to the party that the proceedings have been discontinued or dismissed;

as the case requires.

(3)    Before awarding costs in respect of the proceedings, the Registrar must give each party to the proceedings a reasonable opportunity to be heard in relation to the award of costs.

…

49    Regulation 21.13(1) of the Regulations authorises the quantum of costs to be fixed on one of two bases:

(1)    For section 221 of the Act, if a matter is mentioned in these Regulations as a matter attracting the award of costs, costs may be awarded:

(a)     in accordance with Schedule 8; or

(b)     if the Registrar has a discretionary power in relation to the award of costs—as the Registrar considers appropriate.

50    In Cachia v Hanes (1994) 179 CLR 403, the High Court by majority (Mason CJ, Brennan, Deane, Dawson and McHugh JJ, Toohey and Gaudron JJ dissenting) held, in relation to costs under the Supreme Court Rules 1970 (NSW), at 410-413 (citations omitted):

To use the Rules to compensate a litigant in person for time lost would cut across their clear intent. Costs, within the meaning of the Rules, are reimbursement for work done or expenses incurred by a practitioner or practitioner’s employee. Compensation for the loss of time of a litigant in person cannot be said to constitute costs within the meaning of the Rules.

It has not been doubted since 1278 when the Statute of Gloucester introduced the notion of costs to the common law, that costs are awarded by way of indemnity (or, more accurately, partial indemnity) for professional legal costs actually incurred in the conduct of litigation. They were never intended to be comprehensive compensation for any loss suffered by a litigant. As Coke observed of the Statute of Gloucester, the costs which might be awarded to a litigant extended to the legal costs of the suit, “but not to the costs and expences of his travell and losse of time”.

A somewhat anomalous exception was introduced by London Scottish Benefit Society v. Chorley in which a solicitor successfully acted for himself in litigation. It was held that he was entitled to the same costs as if he had employed a solicitor, except for items such as obtaining instructions or attendances, which were unnecessary because he was his own client. The justification for the privileged position afforded to a solicitor acting for himself is somewhat dubious, but it serves to emphasize the general rule. Brett M.R. put it thus:

“I cannot think that any privilege of a solicitor exists. I am wholly unable to agree to any argument standing upon that footing. I should have thought that a person wrongfully brought into litigation ought to be indemnified against the expenses to which he is unjustly put; but there cannot be a perfect indemnity, because it is impossible to determine how much of the costs is incurred through his own over-anxiety. When an ordinary party to a suit appears for himself, he is not indemnified for loss of time; but when he appears by solicitor, he is entitled to recover for the time expended by the solicitor in the conduct of the suit. When an ordinary litigant appears in person, he is paid only for costs out of pocket. He cannot himself take every step, and very often employs a solicitor to assist him: the remuneration to the solicitor is money paid out of pocket. He has to pay the fees of the court, that is money paid out of pocket; but for loss of time the law will not indemnify him. When, however, we come to the case of a solicitor, the question must be viewed from a different aspect. There are things which a solicitor can do for himself, but also he can employ another solicitor to do them for him; and it would be unadvisable to lay down that he shall not be entitled to ordinary costs if he appears in person, because in that case he would always employ another solicitor.”

And Bowen L.J., after observing that costs are the creature of statute and referring to the passage in Coke’s Institutes to which we have referred, said:

“Professional skill and labour are recognized and can be measured by the law; private expenditure of labour and trouble by a layman cannot be measured. It depends on the zeal, the assiduity, or the nervousness of the individual. Professional skill, when it is bestowed, is accordingly allowed for in taxing a bill of costs; and it would be absurd to permit a solicitor to charge for the same work when it is done by another solicitor, and not to permit him to charge for it when it is done by his own clerk.

Those assertions that it would be “unadvisable” or “absurd” to refuse to allow a solicitor who acts for himself “to charge” for the work done by himself or his clerk ignore the questionable nature of a situation in which a successful litigant not only receives the amount of the verdict but actually profits from the conduct of the litigation.

Both the general principle and the exception have been accepted in this Court. …

…

If the explanations for allowing the costs of a solicitor acting for himself are unconvincing, the logical answer may be to abandon the exception in favour of the general principle rather than the other way round. However, it is not necessary to go so far for the purposes of the present case. It suffices to say that the existence of a limited and questionable exception provides no proper basis for overturning a general principle which has, as we have said, never been doubted and which has been affirmed in recent times.

51    The majority further held, at 414:

… Taxation on a party and party basis is required to be in accordance with the relevant table in Sch. G and that makes no provision for the reimbursement of a litigant for time lost in the preparation or presentation of his case. It does provide for solicitors’ costs which have been incurred. That affords some basis (although insufficient in our respectful view) for an award of costs in favour of a solicitor acting for himself and so performing professional duties, but it affords no basis whatsoever for an award by way of recompense to a litigant for time lost in the preparation or presentation of his case.

52    In Guss v Veenhuizen (No 2) (1976) 136 CLR 47, the High Court held that the appellant, who had acted for himself as solicitor, though he had briefed counsel to appear, was entitled to recover costs and disbursements. This was notwithstanding that through error his name had not been entered on the Register of Practitioners of the High Court. Gibbs ACJ, Jacobs and Aickin JJ held, at 51-52 (citations omitted):

The appellant did not claim costs incurred by him in retaining the professional services of a solicitor in his litigation. He appeared in person. He sought taxation of costs on the basis that he was a solicitor who acted for himself and did so according to the well established rule of practice which entitles a person, being a solicitor, to certain professional costs in those circumstances. London Scottish Benefit Society v. Chorley, Crawford and Chester. See also H. Tolputt & Co. Ltd. v. Mole. Those authorities establish that the litigant in person does not recover such costs in such circumstances in the capacity of a solicitor, but because, he happening to be a solicitor, his costs are able to be quantified by the Court and its officers. …

…

… The work was done by him in person and the only question is whether in the special circumstances here existing he was entitled to the benefit of the rule of practice established by the authorities to which we have referred. The answer depends on the true basis of the rule. Since its basis is not one of privilege to a solicitor (in which case it might be argued that the precise qualification must be satisfied) but is that work done by a solicitor can be quantified on a taxation of costs, there is no reason why work done by the appellant whose lack of the precise qualification was the result of an error of an officer of the Court, should not have the benefit of the rule of practice.

53    These cases continue to represent the law in Australia. They have been applied in this Court: see Re New Tel Ltd (in liq) (No 4) [2008] FCA 1085 at [9] per McKerracher J; A & D Douglas Pty Ltd v Lawyers Private Mortgages Pty Ltd [2006] FCA 690 at [10] per Dowsett J; Cashman and Partners v Secretary, Department of Human Services and Health (1995) 61 FCR 301 at 313 per Beazley J. A Full Court of this Court has also applied the principle, stating that Guss is binding on the Federal Court: see Secretary, Department of Foreign Affairs and Trade v Boswell (No 2) (1992) 39 FCR 288 at 294 per Sheppard, Hill and Cooper JJ. The principle was also recognised in George v Fletcher (Trustee) (No 2) [2010] FCAFC 71 at [15]-[16] per Ryan, Marshall and Logan JJ. I note that in George v Fletcher, the Full Court indicated the principal aspect of Boswell – namely, that costs were available to a self-represented party – was inconsistent with Cachia v Hanes and should no longer be followed. Boswell had been decided before Cachia v Hanes had been authoritatively determined by the High Court. While repeating the characterisation of the solicitor litigant exception as “questionable”, the Full Court in George v Fletcher did not disturb its existence.

54    Recently in Tyne v UBS AG (No 2) [2014] FCA 1228, Greenwood J has set out the authorities in some detail: see [23]-[24]. Consistently with previous authorities, his Honour recognised the continued existence of the solicitor litigant exception in relation to the rule that self-represented parties could not secure an order for costs pursuant to s 43 of the Federal Court of Australia Act 1976 (Cth), although as his Honour noted whether in any given circumstance a solicitor litigant could secure such an order would likely depend on whether the person was entitled to practise in the court concerned. That is a relevant matter on this appeal.

55    The exception was subjected to rational and persuasive criticism in Dobree v Hoffman (1996) 18 WAR 36, especially at 41-48. I note but one of the persuasive observations made by Parker J (with whom Rowland and Steytler JJ agreed) at 41:

While each member of the court [in Chorley] was adamant they were not establishing a privilege for solicitors, it must be accepted that non-solicitors would have difficulty seeing the result in any other terms, a perception which reflects poorly on the court and the administration of justice. By way of example, were a chartered accountant and a solicitor to engage in litigation against each other and were each to conduct their own case, from the viewpoint of the accountant there can be neither fairness nor logic in a rule of practice under which, should the accountant win, there would be no recompense for the time and effort expended by the accountant or his or her clerk, in conducting the case, but should the accountant lose the solicitor would be recompensed for the time and effort put in by the solicitor and his or her clerk, calculated on a basis which also allows the solicitor the ordinary profit as though acting for a client. The reality is unfairness and a privileged position for the court's officers.

Consideration

56    Although recognised as anomalous, in circumstances where courts have power to award costs, it is well established that this power may be exercised in favour of a self-represented party where that party is a lawyer. I have no difficulty in adding to the many judicial voices who have said this exception is unjustified, especially in contemporary litigation where it ignores the other aspects of the relationship of lawyer and client and the contractual basis for a party being liable to her or his lawyer for the cost of work performed. Lawyers, like anyone else, are capable of retaining legal representation if they wish to, and should, like anyone else, incur liability for such representation. If a lawyer wishes to represent herself or himself, in my opinion she or he should be treated like any other self-represented party.

57    That is not, however, the law. Despite the persuasiveness of Dobree, and the fact that no such exception applies in Western Australia, so far as decisions of this Court are concerned the solicitor litigant exception continues to be recognised.

58    The issue is whether the exception should be taken to apply to s 221 of the Act. There is no reported decision which has considered this issue.

59    It is, however, difficult to see a principled basis on which a distinction could be made between the power in s 221 of the Act and the other statutory powers to award costs to which the principles have been applied. As the cases to which I have referred above demonstrate, the statutory power to award costs in the Federal Court of Australia Act has been seen as affected by the principles in Cachia and Guss.

60    By s 201 of the Act, the Registrar has the powers and functions given to her under the Act, the Regulations or any other relevant act or regulations. Section 202 gives the Registrar some express powers and functions:

202 Registrar’s powers

The Registrar may, for the purposes of this Act:

(a)     summon witnesses; and

(b)     receive written or oral evidence on oath or affirmation; and

(c)     require the production of documents or articles; and

(d)     award costs against a party to proceedings brought before the Registrar; and

(e)     notify, as he or she considers fit, any person of any matter that, in his or her opinion, should be brought to the person’s notice.

61    Section 203 conditions the manner in which all powers and functions exercised by the Registrar under the Act may be exercised, by imposing an obligation to afford procedural fairness. This provision clearly conditions the exercise of power under s 221 of the Act. It states:

203 Exercise of power by Registrar

The Registrar may not exercise a power under this Act in any way that adversely affects a person applying for the exercise of that power without first giving that person a reasonable opportunity of being heard.

62    Regulation 21.15 of the Regulations provides further content to this obligation. It provides:

21.15 Opportunity to be heard by Registrar

(1)    This regulation applies if the Act or these Regulations provide for a person to be heard by the Registrar.

(2)     The Registrar may give the person an opportunity to be heard by:

(a)     asking the person for written submissions; or

(b)     notifying the person that on request to the Registrar, the person may be heard by way of an oral hearing on a date, and at a time and place, determined by the Registrar; or

(c)     notifying the person of the date, time and place of an oral hearing.

(3)     A request for a hearing must be in an approved form.

(4)     The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.

(5)     The Registrar may decide a matter if each person that is a party to the matter:

(a)     notifies the Registrar that the person does not want to be heard; or

(b)     does not file written submissions if requested under subregulation 21.16(1); or

(c)     does not request an oral hearing after being notified under paragraph (2)(b); or

(d)     does not attend an oral hearing if notified under subregulation 21.16(2).

(6)     In the circumstances mentioned in subregulation (5), the Registrar may make a decision by reference to relevant information that is held in the Trade Marks Office.

(7)     If the Registrar makes a decision in any of the circumstances mentioned in subregulation (5), the Registrar must notify each party of the Registrar's decision.

63    The Registrar is able to delegate any or all of her functions or powers: see s 206.

64    It can be seen from the list of express functions and powers in s 202 that these powers include coercive powers, and powers to receive evidence in the same form in which courts receive evidence. By s 54, the Registrar must conduct opposition proceedings in relation to a trade mark application in accordance with the Regulations. Part 5 of the Regulations contains a detailed scheme for the manner in which those proceedings must be conducted. It includes the filing of documents akin to pleadings (see Div 2), the filing of evidence (Subdiv C of Div 2) and the conduct of a hearing (Div 4).

65    The legislative scheme for the conduct of opposition proceedings by the Registrar is similar to court proceedings in both levels of formality and detail, and substantive procedures. It indicates the Registrar’s powers and functions must be exercised and performed judicially. Parliament has contemplated it is the kind of process for which participants may wish or need to retain experienced and qualified representatives. For that reason, Pt 21 Div 2 of the Regulations includes detailed provision for applications for and awards of costs. Schedule 8 of the Regulations fixes a scale for such costs. That schedule includes items allowing for attendances by registered patent attorneys, registered trade marks attorneys or solicitors. It also provides for fees to counsel.

66    Costs that are ordered are recoverable as a debt in a court of competent jurisdiction: see s 221(3). The Registrar also has power to order security for costs: see s 222.

67    In my opinion, the nature and content of the legislative scheme for the determination of opposition proceedings under the Act, combined with the express powers given to the Registrar to award costs, and the presence of a scale of costs, mean that the power in s 221 of the Act should be construed as conditioned by the same principles applicable to similar discretionary powers to award costs, such as those present in s 43 of the Federal Court of Australia Act. Those principles, as the law currently stands, include the exception for solicitor litigants as expressed in Cachia and Guss, and the decisions of this Court to which I have referred at [53]-[54] above.

68    Mr Beling also submitted that the presence of a scale of costs in a court or tribunal has been seen as significant in terms of the application of the exception. That is because there is an objective basis for the fixing of the amount of costs to be awarded to a solicitor, and this tends to mark out the position of the solicitor from that of any other unrepresented party. Again, without accepting there is any underlying rationality to that position, Mr Beling is correct to submit that the presence of a scale has been a factor referred to in decisions: see Tyne at [24].

69    I also accept Mr Beling’s submission that it would be anomalous to have different principles applied as between the Registrar of Trade Marks and this Court, when there is an appeal to this Court (or to the Federal Circuit Court) under s 56 of the Act, and that right of appeal includes a right to appeal on questions of costs. Of course if the proper construction of the Act rendered the solicitor litigant exception clearly inapplicable, any anomaly would be immaterial. I am not persuaded that is the case.

70    Mr Beling referred to a New Zealand decision where a successful litigant who was a patent attorney was found to be entitled to be paid for disbursements incurred in opposing the registration of a trade mark. In that decision, the Assistant Commissioner of Trade Marks appeared to recognise, obiter, the existence of the solicitor litigant exception although it did not apply to the party seeking costs in that case: see R v Hardie [2003] NZIPOTM 39 at [9]-[15]. I accept this decision provides some support for Mr Beling’s contentions. It certainly illustrates that no different approach has been taken to a costs power conferred by statute on specialist trade marks decision makers.

71    The respondent did not contend these principles should not be applied. In fact, eventually it conceded these principles did apply to s 221 of the Act. For that reason, it is difficult to understand how the respondent could submit, as it did, the applicant’s proceeding in this Court was “misguided”.

72    In my opinion, so long as Cachia and Guss, and the exception in relation to awards of costs in favour of lawyers who represent themselves continue to be the law in Australia, there is no principled basis on which distinguish s 221 of the Act from other statutory costs powers to which the exception has been held to apply. The basic compensatory approach, by reference to a scale of costs, applies to all such powers. Given the continuing recognition of the exception in this Court, it is not appropriate for me, as a single judge, to adopt the approach taken by the Supreme Court of Western Australia in Dobree, even if its reasoning is persuasive.

73    That being the case, the delegate should have given consideration to the exception for solicitor litigants in his consideration of Mr Beling’s application for costs. It is obvious, in my opinion, from his decision, that the delegate was unaware of the exception. If he had afforded Mr Beling an opportunity to make submissions about costs, I am certain Mr Beling would have drawn the applicable decisions to his attention. The delegate failed to give Mr Beling any such opportunity, and proceeded to exercise the power in s 221, unaware of the solicitor litigant exception. The exercise of the costs discretion was affected by an error of law in that respect. I do not accept the respondent’s rather faint submissions that these few paragraphs in the delegate’s reasons (and especially [35]) should be read as disclosing the delegate was aware of the solicitor litigant exception because he referred to Mr Beling’s claim to be an “Australian legal practitioner”. If the delegate had been aware of these principles, then it is plain there would have been reference to the exception. Instead he treated the applicant as only a self-represented person – that is the effect of [37] of the reasons.

74    Further, I do not accept the respondent’s submission that this Court should not proceed on the basis Mr Beling was in fact an Australian legal practitioner at the time of the delegate’s decision. It is clear from the delegate’s reasons that Mr Beling had claimed to be an Australian legal practitioner from the time of his submissions in the opposition proceeding.

75    Mr Beling produced a current unrestricted practising certificate entitling him to practise under the Legal Profession Act 2004 (Vic) in the State of Victoria, as a principal of a law practice. That certificate was admitted into evidence. It was issued on 24 April 2014 and covers the period 1 July 2014 to 30 June 2015. Its commencement predates the decision of the delegate by several months. There is no basis in the evidence before the Court to infer, as the respondent sought to have the Court do, that Mr Beling had not previously held such a certificate. There is no basis in the evidence, in other words, to find that Mr Beling had made a false and fraudulent representation to the delegate.

76    Mr Beling’s entitlement to practise in the Federal Court depends upon compliance with s 55B of the Judiciary Act 1903 (Cth). Relevantly, he must be entitled to practise as a barrister or solicitor in the Supreme Court of a State, and his name must appear on the Register of Practitioners kept in accordance with s 55C of the Judiciary Act. Mr Beling produced a letter from the Deputy Registrar of the High Court of Australia, dated 21 January 2015, informing Mr Beling that on 12 January 2015 his name was entered in the Register of Practitioners kept by the High Court Registry. That letter was admitted into evidence. Accordingly, Mr Beling was entitled to practise in this Court on and from 12 January 2015. This fact is relevant to his entitlement to costs under the solicitor litigant exception in relation to this appeal.

77    Having determined that the delegate failed to address the correct legal principles in deciding whether Mr Beling was entitled to an order for costs, because the delegate did not recognise the presence of the solicitor litigant exception to the rule that a self-represented party is not entitled to an order for costs, the next issue is what orders, if any, should flow from that in relation to the appeal.

78    The jurisdiction of this Court on appeal under s 56 of the Act is original jurisdiction, and authorises, on the identification of an error by the Registrar, a full rehearing: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; [1999] FCA 1020 at [32]-[33] per French J, Tamberlin J agreeing. Branson J, who dissented in the result, agreed as to the nature of the Court’s jurisdiction: see [64].

79    Mr Beling appeals only as to part of the delegate’s decision. Naturally, he seeks to preserve the part which rejected the grounds of opposition and directed that the trade mark application proceed to registration. Any orders made in his favour by the Court on this appeal can thus only affect part of the Registrar’s decision. In the circumstances of this proceeding, it is plainly not appropriate for the Court to conduct a rehearing on the question of costs. The repository of the power failed to exercise the power according to correct principles, and so none of the underlying claims for costs by Mr Beling has been examined at all. No documents or other evidence have been produced to substantiate his claims as to any quantum of professional costs. No consideration at all has been given to his claims to be entitled to recover costs on an indemnity basis because of the behaviour of the respondent before the Registrar. Those are matters which should be assessed, with appropriate evidence, by the Registrar, who has the requisite familiarity with the conduct of opposition proceedings under the Act. The matter of Mr Beling’s costs application should be determined by the Registrar.

80    Both parties ultimately accepted this was the appropriate order, if the Court were to conclude the appeal should be allowed. Accordingly, the submissions made by the parties about the quantum of costs, and what Mr Beling may or may not be entitled to (including whether he is entitled to more than scale costs), do not need to be considered further on this appeal. For the same reason, Mr Beling’s somewhat persistent submissions about the attitude of the respondent, and the way in which that attitude had contributed to increased costs, are matters the Registrar may consider in a further exercise of discretion.

81    Despite my observations about how matters might have been different had Mr Beling been given an opportunity to make submissions to the delegate, where no doubt he would have referred to the solicitor litigant exception, it is not necessary to decide Mr Beling’s claim about denial of natural justice. The matter will be returned to the Registrar for decision and I have no doubt Mr Beling will, in the circumstances of this proceeding, be given an opportunity, in accordance with s 203 of the Act, to be heard on the nature and content of the orders for costs he submits should be made in his favour, in accordance with the law as stated in Cachia and Guss, and the other decisions to which I have referred.

CONCLUSION

82    The appeal will be allowed. There will be orders setting aside the decision of the Registrar’s delegate only insofar as the delegate declined or refused to make an order of costs in favour of Mr Beling.

83    The record held by the Registrar was transmitted to this Court in accordance with r 34.30 of the Rules. From that record it appears there are no separate orders, or decision record of the Registrar’s decision. All that exists is the one document entitled “Decision of a delegate of the Registrar of Trade Marks with reasons”.

84    The way in which the Court’s powers on appeal should be exercised must reflect the state of that record.

85    Unsurprisingly, Mr Beling sought his costs in this Court, by application of the same principles in Cachia and Guss. Were I free to decide the matter for myself, I would take the view the exception is anachronistic and without an ongoing rational basis in the contemporary conduct of litigation. I do not however consider myself free to act on that opinion, given the state of authorities in this Court and in the High Court.

86    The respondent’s attitude to this proceeding has been wholly uncooperative. Its tardiness in taking the steps required under the Rules was explained only, to use the words of Mr Morcom, by an unimpressive attitude of “want[ing] the problem to go away”.

87    When the respondent finally appeared, it conceded the substantive point on the appeal.

88    It is clear from evidence given and submissions made in the proceeding that lying behind the legal arguments is a more contested debate about the amount of costs to which Mr Beling may be entitled. The existence of that debate however, does not change the fact that Mr Beling had to bring and prosecute this appeal in order to vindicate his claim that the Registrar had erroneously ignored the solicitor litigant exception to the principles on awards of costs. The simplest of actions by the respondent on the lodging of Mr Beling’s appeal, by agreeing to the matter being sent back to the Registrar for determination according to law, would have saved the time and resources of both parties, and of the Court. I consider the respondent’s conduct to have been unreasonable, and indeed to have shown considerable disrespect to Mr Beling’s right of appeal, to this Court’s jurisdiction under the Act, and to the requirements imposed on parties by this Court’s Rules.

89    In those circumstances, and given the exception remains an applicable principle in the Court’s exercise of its costs discretion, I consider it is appropriate to award Mr Beling costs, but only on and from 12 January 2015, being the date on which he was entitled to practise in this Court.

90    Costs should, in my opinion be awarded in a lump sum: see r 40.02 of the Rules. Mr Beling will be directed to file affidavit evidence substantiating the professional costs he claims on and from 12 January 2015, together with disbursements incurred in the appeal, and any short submissions he wishes to make, such submissions to be limited to two pages. The respondent will be given an opportunity to file any responsive affidavit material and any short submissions it wishes to make, such submissions to be limited to two pages. The matter will then be dealt with on the papers and lump sum costs orders made.

91    This will allow Mr Beling to adduce evidence of the time he has spent on and from 12 January 2015 on this appeal, together with disbursements incurred in the appeal. Ultimately, the figure fixed will depend on the evidence and submissions, to be filed in accordance with directions given on publication of orders and judgment.

Associate:    

Dated:    20 March 2015