FEDERAL COURT OF AUSTRALIA

Laminar Air Flow Pty Ltd v Registrar of Trade Marks [2017] FCA 1447

ORDERS

THE COURT ORDERS THAT:

1.    The decision of the delegate made on 29 May 2017 is set aside with effect from the date of the decision.

2.    The delegate’s award of costs against the present applicant is set aside.

3.    The second respondent is to pay the costs of the applicant in this Court, as agreed or taxed.

4.    Subject to order 5, there be no order for costs for or against the first respondent, the Registrar.

5.    If the Registrar wishes to contend for an order different to order 4 above, she is to notify the Court and the other parties within 7 days of the date of this order. If such notice is given, directions will thereafter be made for short written submissions on that question.

6.    Within seven days of the date of this order, the applicant and the second respondent endeavour to agree and notify the Court as to the appropriate order for costs before the delegate. If no such agreement is able to be reached, those parties are to file, within that period, the competing orders for which they contend together with their written submissions, limited to 2 pages each, in support of those orders.

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

REASONS FOR JUDGMENT

ROBERTSON J:

Introduction

1    Laminar Air Flow Pty Ltd (Laminar) applies to the Court for judicial review of the decision of the delegate of the Registrar of Trade Marks made on 29 May 2017 that “the Register be corrected to show the owner of the Trade Marks (being registrations 152414, 216896, 250505, 387080, 387081, and 387082) to be the registrant as it was before the errors of 17 August 2001: that is, that the applicant, Vokes Limited, be entered as the owner of the Trade Marks by correction of the Register.”

2    The decision of the delegate has been stayed pending the determination of the present proceedings. The first respondent, the Registrar, took no part in these proceedings and submitted save as to costs.

3    In December 2014, Vokes Limited (Vokes), the second respondent, applied to the Registrar for corrections under s 81 of the Trade Marks Act 1995 (Cth) to the following trade mark registrations, in respect of which Laminar was by then recorded in the Register as the owner:

4    In the decision of the delegate, it was stated that until 17 August 2001 the above registrations were registered in the name of Vokes who, on 3 December 2014, applied to the Registrar citing s 81 of the Trade Marks Act for correction of an error or omission made when entering a change of owner’s name on the Register on 17 August 2001.

5    The chain of events was set out by the delegate, as follows:

Vokes Limited applied to register the trade marks. There have been no requests made to IP Australia to record assignment of the trade marks from Vokes Limited.

A request was made on 15 August 2001 to change the name of the registered owner from Vokes Limited to AES Environmental Pty Ltd. The Trade Marks Office amended the registered owner’s details to AES Environmental Pty Ltd on 17 August 2001.

Section 216(2) of the Trade Marks Act 1995 provides that, if there is a change in the name of the registered owner of the registered trade mark, the registered owner must notify the Registrar in writing of the change and the Registrar must amend the Register accordingly. Subsection 216(2) of the Act does not refer to the change in the identity of the registered owner.

Only by effect of an assignment, transmission, cancellation or probate provisions, will the identity of the registered owner of a trade mark be altered (Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 209 ALR 1, 28 [123]).

The amendment to change the name of the registered owner was made in error. As there is no hard evidence before me that there was a valid assignment entitling AES Environmental Pty Ltd to the abovementioned trade mark registrations, I intend to correct the particulars of the registered owner under section 81 of the Act.

Provisions of the Trade Marks Act

6    The central statutory provision is in the following terms:

Part 8 — Amendment, cancellation and revocation of registration

Division1 — Action by Registrar

Subdivision A — Amending Register

81    Correction of Register

The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark.

Note:    For Register see section 6.

Also relevant are the following:

Part 10—Assignment and transmission of trade marks

106    Assignment etc. of trade mark

(1)    A registered trade mark, or a trade mark whose registration is being sought, may be assigned or transmitted in accordance with this section.

(2)    The assignment or transmission may be partial, that is, it may apply to some only of the goods and/or services in respect of which registration is sought or the trade mark is registered, but it may not be partial in relation to the use of a trade mark in a particular area.

(3)    The assignment or transmission may be with or without the goodwill of the business concerned in the relevant goods and/or services.

Note:     For assignment and transmission see section 6.

107    Applications for record to be made of assignment etc. of trade mark whose registration is sought

(1)    If a trade mark whose registration is being sought is assigned or transmitted:

(a)    the applicant for the registration of the trade mark; or

(b)    the person to whom it has been assigned or transmitted;

must apply to the Registrar for the assignment or transmission to be recorded.

(2)    The application must:

(a)    be in an approved form; and

(b)    be filed, together with any prescribed document, in accordance with the regulations.

Note:     For approved form and file see section 6.

108    Recording of assignment etc. of trade mark whose registration is sought

(1)    If the application complies with this Act, the Registrar must:

(a)    at, or within, the time provided for in the regulations, record in the manner that the Registrar thinks fit (but not in the Register) the particulars of the assignment or transmission; and

(b)    publish the particulars of the assignment or transmission in accordance with the regulations.

(2)    On and after the day on which the Registrar records the particulars of the assignment or transmission, the person to whom the trade mark has been assigned or transmitted is taken, for the purposes of this Act, to be the applicant for the registration of the trade mark.

109    Application for record of assignment etc. of registered trade mark to be entered in Register

(1)    If a registered trade mark is assigned or transmitted:

(a)    the person registered as the owner of the trade mark; or

(b)    the person to whom the trade mark has been assigned or transmitted;

must apply to the Registrar for a record of the assignment or transmission to be entered in the Register.

(2)    The application must:

(a)    be in an approved form; and

(b)    be filed, together with any prescribed document, in accordance with the regulations.

Note:     For approved form and file see section 6.

110    Recording of assignment etc. of registered trade mark

(1)    If the application complies with this Act, the Registrar must, at, or within, the time provided for in the regulations:

(a)    enter the particulars of the assignment or transmission in the Register; and

(b)    register the person to whom the trade mark has been assigned or transmitted (beneficiary) as the owner of the trade mark in relation to the goods and/or services in respect of which the assignment or transmission has effect.

(2)    The particulars are taken to have been entered in the Register on the day on which the application was filed, and the registration of the beneficiary as the owner of the trade mark is taken to have had effect from and including that day.

(3)    The Registrar must advertise in the Official Journal:

(a)    the recording of the assignment or transmission; and

(b)    the registration of the beneficiary as the owner of the trade mark.

…

216    Change of name

(1)    …

(2)    If there is a change in the name of:

(a)    the registered owner of a registered trade mark; or

(b)    a person whose claim to an interest in, or to a right in respect of, a trade mark is recorded in the Register;

the registered owner or the person must notify the Registrar in writing of the change and the Registrar must amend the Register accordingly.

The decision under review

7    The reasoning of the delegate, at [7], was that the essential point to emerge from the evidence was that both parties were agreed that the change to the trade marks that happened on 17 August 2001 wrongly reflected a change in the name of the owner of the trade marks rather than to effect an assignment of the trade marks.

8    At [18], the delegate noted that r 10.2 of the Trade Marks Regulations 1995 (Cth) and ss 109 and 110 of the Trade Marks Act were prescriptive and the Registrar had no discretion in relation to those provisions: it appeared to follow, he said, that (in the circumstances of these matters) the Registrar’s discretion in s 81 might be qualified by those prescriptions.

9    Further, at [18], the delegate said, three observations immediately flowed from a consideration of the prescriptive nature of the above provisions:

1.    It is agreed by the parties that there are no applications for the assignment of the Trade Marks before the Registrar – nor have there ever been; and

2.    There are no accompanying documents that establish the title to the trade mark of the assignee or of the person to who the Trade Marks have been transmitted from the Applicant; and

3.    The Applicant has not changed its name.

10    These observations had two effects, the delegate said, at [19]:

1.    The change of name of the owner of the Trade Marks (rather than transfer of the Trade Marks by assignment to a new owner) must (in the absence of valid applications for assignment) have been administrative errors; and

2.    As there are no valid applications for the assignments of the Trade Marks presently before the Registrar (or, indeed, at all), she must not consider whether the Trade Marks have been subsequently assigned by any person as to so determine would involve further administrative errors.

11    The delegate reasoned that he, therefore, must not consider either the evidence, or the most comprehensive submissions of both Counsel, concerning the disputed chain of title to the registrations or whether Vokes was now (after the elapse of 16 years) estopped from being entered as a correction to the name of registrant of the trade marks.

12    The delegate then referred to the decision of Emmett J in Mediaquest Communications LLC v Registrar of Trade Marks [2012] FCA 768; 205 FCR 205 at [53]-[54] as follows:

I consider that the existence of an effective assignment or transmission is a necessary precondition to the making of a valid application under s 109 and the subsequent exercise of power by the Registrar under s 110. The absence of a valid assignment or transmission means that any purported exercise by the Registrar of the power conferred by s 110 would be affected by jurisdictional error. There is no reason in principle why the general law should treat administrative decisions involving jurisdictional error as binding or having legal effect unless and until set aside. A decision that involves jurisdictional error lacks legal foundation and is properly regarded, in law, as no decision at all (see Plaintiff S157/2002 v Commonwealth (2003) 211 CLR 476 at [76]).

There was no actual assignment of the Registered Mark to Mediaquest, either from Mr Brailsford or from his executors. Accordingly, the Registrar’s decision of 8 October 2010 to record the assignment in the Register was tainted by jurisdictional error and was no decision at all. It was therefore open to the Registrar to reconsider whether the duty imposed by s 110 had been enlivened, by revisiting the question of whether there was an actual assignment or transmission of the Registered Mark to Mediaquest. Having determined that there was no actual assignment or transmission, it was open to the Registrar to take steps to cancel the earlier action. There is nothing in the Act to indicate that a decision of the Registrar under Pt 10 that was affected by jurisdictional error should continue to have legal effect. Indeed the considerations outlined above suggest the contrary.

13    The delegate then said, at [23], that by analogy the decisions to record changes of the owner’s name on the Register, when they ought to have been the entry of assignments of the trade mark, were (in the absence of either those applications for assignment and accompanying documents or – alternatively – an actual change of name of the registrant) tainted by what Emmett J identified as being ‘jurisdictional error’, had no legal foundation and were no decisions at all. As there was no actual change of name of the owner (or valid assignment documents before the Registrar), the changes of name of the owner of the trade marks were administrative errors of the same genus as those referred to by Emmett J, and it was open to the Registrar to correct the earlier actions (while stressing that s 81 specified that the Registrar may correct ‘any’ error).

The amended originating application to the Court

14    The amended originating application brought by Laminar referred in grounds 1-4 to ss 5(1)(d), 5(1)(f), 5(1)(j) and 5(1)(e) of the Administrative Decisions (Judicial Review) Act 1977 (Cth). This last reference also involved reference to ss 5(2)(b), 5(2)(c) and 5(2)(g).

15    Those provisions in s 5(1) refer to a decision being: (d) not authorized by the enactment in pursuance of which it was purported to be made; (f) involving an error of law, whether or not the error appears on the record of the decision; (j) being otherwise contrary to law; and (e) that the making of the decision was an improper exercise of the power conferred by the enactment in pursuance of which it was purported to be made.

16    The reference in s 5(1)(e) to an improper exercise of a power is to be construed as including a reference to s 5(2):

(b)    failing to take a relevant consideration into account in the exercise of a power;

(c)    an exercise of a power for a purpose other than a purpose for which the power is conferred;

…

(g)    an exercise of a power that is so unreasonable that no reasonable person could have so exercised the power; …

17    It was common ground that there was no appeal from a decision of the Registrar under s 81.

18    In substance the issue was whether, in the circumstances, s 81 was available to correct the Register. That it was not, was put a number of ways on behalf of Laminar. The first was to contend that the decision of the delegate was ultra vires. (The second was to contend that the legal entity that is the registered owner of the Trade Marks is not a “particular” in respect of the registration and not therefore something that could be “corrected” pursuant to s 81. This was abandoned by counsel for Laminar at the commencement of the hearing.) Thirdly, and alternatively, Laminar contended that the correction of a historical particular from August 2001 did not permit any change to be made to the legal entity that was the registered owner, especially in the absence of any application to “correct” the particulars concerning the assignment from AES Environmental Pty Ltd (AES) to Laminar. Fourthly, even if s 81 permitted the Registrar to make the decision, Laminar contended that the delegate erred in his understanding of the discretion conferred by s 81, and therefore misapplied s 81.

19    Laminar sought by its amended judicial review application to challenge the findings at [18] of the delegate’s decision set out at [9] above:

(i)    It is agreed by the parties that there are no applications for the assignment of the Trade Marks before the Registrar – nor have there ever been; and

(ii)    There are no accompanying documents that establish the title to the trade mark of the assignee or of the person to who the Trade Marks have been transmitted from the Applicant;

Finding (i)

20    The basis on which Laminar challenged finding (i) was that the evidence before the delegate included an Application to Record Assignment or Transmission of a Trade Mark dated 20 October 2005 prepared by Laminar. That application attached a Deed of Assignment between AES and Laminar dated 12 October 2005, which effected the assignment of the trade marks from AES to Laminar.

21    Vokes’ response was that the finding, properly construed, was that there was no assignment application (or accompanying documentation) filed with the Registrar to transmit the trade marks from Vokes (Vokes’ emphasis). The finding as so characterised was correct. There was no such assignment document (or accompanying documentation filed) to effect the purported change in circa 2001. The Application for assignment relied upon by Laminar in an attempt to undermine this finding did not relate to any transmission from Vokes. This was a different assignment between AES and Laminar which was filed in 2005. This was acknowledged by the delegate who referred to that assignment, see [9] of the Decision.

Finding (ii)

22    Laminar challenged finding (ii) on the same basis as it challenged finding (i). Finding (ii) was also challenged on the basis recorded at [9] of the delegate’s decision. That is, the evidence of Laminar (being the opponent before the Trade Marks Office), including the documentary evidence, established Laminar’s title to the trade marks and the person to whom the trade marks were transmitted from Vokes (being the applicant before the Trade Marks Office). The person to whom the trade marks were transmitted from Vokes was BTR Industrial Holdings Limited.

23    Vokes’ response to the challenge to finding (ii) was that the effect of the passage asserted by Laminar to be erroneous appeared to be that there was no evidence which showed a transfer of the trade marks from Vokes. However, properly understood, [18] of the decision concerned documentation filed with the Registrar which accompanied any application for assignment (that is, documents relied upon by the Registrar to make the relevant changes to the Register). In so far as a transfer from Vokes was concerned, no such accompanying documentation was filed in respect of the trade marks either alone or together with any assignment application to effect any assignment as required by s 107 of the Trade Marks Act. No such documentation was filed with the erroneous change of name document. The finding at [18] was therefore correct, Vokes submitted, because there were no such “accompanying documents”. There had never been any application filed under that section to record an assignment from Vokes and there could therefore not be any accompanying documentation (for an application that did not occur). Furthermore, leaving aside the fact that no such documents were filed to effect any relevant assignment on the Register, there was evidence before the delegate on the s 81 application that there were no such assignment documents transferring the trade marks from Vokes (to BTR Industrial Holdings Limited).

The submissions of the parties

24    Laminar submitted that in the period between 17 August 2001 and December 2014 many other particulars in respect of the trade marks were entered on the Register. Most importantly, an assignment of the trade marks from AES to Laminar was entered on the Register on 25 October 2005 pursuant to ss 109 and 110. Since then, Laminar had been recorded on the Register. Laminar was not involved in the submission to the Registrar of the change of name form in August 2001.

25    Laminar submitted, first, that the decision of the delegate was ultra vires. It submitted that s 81 was confined to the correction of errors or omissions made in the course of the Registrar’s act of entering particulars on the Register. Here, as no error was made “in entering in the Register” the change of name, s 81 did not permit the delegate’s purported exercise of power. The provision had a narrower sphere of operation than the Court’s powers under s 85 and s 88(1)(b). Further, the delegate’s correction of the historical change of name particular under s 81 provided no basis for the relief granted: no application was made to correct any particulars relating to Laminar’s ownership of the trade marks. No application was made to correct or cancel the assignment from AES to Laminar. Mediaquest did not stand for the proposition that, having identified an erroneous historical particular, the Registrar could under s 81 then proceed to determine the legal entity that owned the mark to which that error related and, in effect, remove a subsequent owner of the mark.

26    Laminar also submitted that, if the decision of the delegate was not ultra vires, the delegate erroneously held that the discretion was qualified by ss 109 and 110. Laminar asked the delegate to consider, in the exercise of his discretion, whether the trade marks were assigned from Vokes and, further, their subsequent chain of title. Laminar’s primary case was that the evidence established that Vokes was the owner of the trade marks until 1998, when they were assigned to BTR Industrial Holdings Ltd, following which they were assigned to AES. Laminar’s first alternative case was that even if Vokes had remained the beneficial owner of the trade marks, it could not be entered as the registered owner of at least two of those marks because it had assigned them to a company named SPX Vokes Limited in 2007. Laminar’s second alternative case was that the discretion not be exercised in favour of Vokes because of laches, estoppel and/or acquiescence.

27    In oral submissions, counsel for Laminar submitted it was not in dispute that the change of name form was the wrong form: it should have been a form recording an assignment to AES, but Laminar intended that an assignment should have been registered, and that was reflected in [7] of the Decision, in the second sentence. The change of name form was submitted by an agent of AES, Ms Jacqui Pryor.

28    Laminar submitted that the Registrar’s power in s 81 was limited to the correction of errors or omissions made in the course of her act of entering particulars in the Register, and it was not a broad-ranging power to interfere with substantive trade mark rights like ownership. Rather, those disputes under the Trade Marks Act were to be dealt with by the courts.

29    Laminar distinguished Mediaquest because there was a priorities argument, and s 22 would come into play. Section 22 provided:

22    Power of registered owner to deal with trade mark

(1)    The registered owner of a trade mark may, subject only to any rights appearing in the Register to be vested in another person, deal with the trade mark as its absolute owner and give in good faith discharges for any consideration for that dealing.

(2)    This section does not protect a person who deals with the registered owner otherwise than:

(a)    as a purchaser in good faith for value; and

(b)    without notice of any fraud on the part of the owner.

Note:     For registered owner see section 6.

(2A)    …

(3)    Equities in relation to a registered trade mark may be enforced against the registered owner, except to the prejudice of a purchaser in good faith for value.

Note:     For registered owner and registered trade mark see section 6.

30    Laminar submitted that s 20 set out the rights given by registration to a registered owner and, in essence, they were in the nature of a negative right, that is, a right to exclude all others. The ancillary right to that exclusive right was set out in s 20(2), being a right to obtain relief, including injunctive and pecuniary relief. By s 20(3), the rights were taken to have accrued to the registered owner as from the date of registration of the trade mark. By s 21, a registered trade mark was personal property.

31    Laminar submitted that the phrase “error or omission made in entering in the Register” was primarily an error or omission by the officers. Laminar submitted that its construction of s 81 was within the concept in para 46.D. of the extrinsic material and [68] of the explanatory memorandum to the Trade Marks Bill 1995. The extrinsic material was a report to the Minister for Science and Technology in July 1992 “Recommended Changes to the Australian Trade Marks Legislation” which stated:

There should be provision for the Registrar to correct, of his own motion, clerical errors in entries in the Register effected by officers of the Trade Marks Office, provided that no change in the scope of the registration results from the amendment.

The explanatory memorandum referred to:

Errors or omissions made in entering particulars of a registration in the Register may be corrected on the Registrar’s own initiative.

32    This was also consistent with the scheme of the Trade Marks Act. Section 81 was to be contrasted with ss 85 and 88(1)(b). Section 85 did not use the phrase “in entering” as s 81 did. Also, s 85 was invoked on an application to a court by an aggrieved person, not by the Registrar’s own initiative. In prescribed courts, such as the Federal Court, there would be a right of appeal to the Full Court from a single judge’s determination under that provision. Section 88(1)(b) did not use the phrase “in entering” and significantly referred to an application being made by the Registrar to a court to amend an entry wrongly made on the Register according to any of the grounds referred to in s 88(2).

33    Laminar submitted there was good reason applications to amend the Register to affect property rights were in the domain of the courts. They often involved a variety of legal and equitable principles including competing legal and equitable interests, doctrines of mistake, and estoppel, which were the domain of courts and not the domain of an administrative body and it was important to recall the restrictions of s 22(3) about enforcing equities. It was unlikely, Laminar submitted, that Parliament intended that valuable property rights could be taken away from a person by the Registrar’s own initiative and without the possibility of an appeal.

34    Laminar submitted that ss 83 and 83A were the only powers given in the Trade Marks Act to the Registrar to amend particulars of a registered trade mark.

35    Laminar drew to attention the contrast in the titles. The language in s 81 used “Correction of Register”: s 83 used “Amendment of particulars” and s 83A “Amendment of registered trade mark”. Under s 83, the “Amendment of particulars of trade mark entered in Register”, that amendment could only be done at the written request of the registered owner. The power of the Registrar was circumscribed in that it provided particular grounds for amending and they were set out in s 83(1)(a) to (c) and did not interfere with substantive rights. Under s 83(2), an appeal lay to the Federal Court or to the Federal Circuit Court. Section 83A(2) made clear that it could only be used on a written request by the registered owner of the mark. The section set out a circumscribed power, that is, it provided particular grounds for amending the mark. As made clear in s 83A(8), an appeal lay to the Federal Court, or the Federal Circuit Court, as of right. And s 83A also relevantly set out advertising and opposition procedures. None of that was found in s 81.

36    Part 6 of the Trade Marks Act dealt with the Registrar’s power to amend an application for registration. An application for registration was the step before obtaining a valuable registered property right. That Part must be read with the accompanying Trade Marks Regulations. What was clear was that, again, only the applicant for registration of a trade mark may apply for amendments. If the applicant objects, the Registrar cannot amend. It also made clear that the Registrar’s powers were circumscribed in a number of respects. It set out particular grounds as to when and on what grounds an amendment may be ordered. It set out particular procedures, such as oppositions and advertising. Section 67 provided that an appeal lay to the Federal Court or Federal Circuit Court from a decision of the Registrar under the Part. It was incongruous that an applicant for registration would enjoy greater safeguards in respect of amendment than a registered owner would enjoy under Pt 8. That was because a registered right was a valuable right, the subject of particular powers under the Act.

37    Laminar also relied on s 63(2) as the only other provision conferring a discretion on the Registrar, on his or her own initiative, to amend. It dealt with the amendment of applications.

38    Laminar submitted, in the alternative, that if the Registrar had power under s 81, it was ultra vires for the delegate to determine that Vokes should be substituted as the registered owner in view of the later assignment, dated 12 October 2005, between AES and Laminar of all of the trade marks presently in dispute. This assignment was recorded in the Register. Section 22 had effect. There was no application before the delegate to correct the particular as to the assignment from AES to Laminar.

39    Laminar submitted that Mediaquest was wrongly decided because it misconstrued s 81, but in any event was distinguishable so far as concerned the second ultra vires argument set out in [38] above. Unlike in the present case, Mediaquest did not deal with a situation where there was a later assignment of the registered trade marks. There was no priorities dispute. Section 22 issues were not in play. Laminar also submitted that the substantive question before the Court in Mediaquest was the ownership of the mark whereas the present case did not involve that question. Laminar submitted that s 81 was not the appropriate provision to deal with the correction of an underlying misconception of ownership.

40    In the further alternative, Laminar submitted the delegate nonetheless erred in his understanding of the discretion conferred by s 81, saying it was fettered by ss 109 and 110, and therefore misapplied that provision. Also the delegate failed to consider matters of discretion insofar as they concerned Vokes. The delegate’s focus appeared to be somewhat one sided. It was directed to Laminar or perhaps even to AES. Section 81 required a correction of the Register. Vokes had itself filed evidence below suggesting that it had assigned at least two of the trade marks, to SPX Vokes Limited. The transfer date under the agreement was 1 January 2006. The agreement was dated 5 December 2007. That was some seven years before the application was made by Vokes to correct the Register and seek the remedy that it be substituted as the registered owner. Even on Vokes’ case it was not the owner of at least two of the registered trade marks. So the delegate could not correct the Register by registering Vokes as the owner of those trade marks and, on any view, that would lead the delegate to create an error in the Register.

41    As to the claimed errors of fact, I have set out the competing submissions at [20]-[23] above.

42    Vokes submitted that Laminar, through its related company AES, gained title as a result of an error. Vokes was wrongly removed as the registered owner of the registrations by the filing of a false change of name form. The delegate was correct in determining that the registration should revert to Vokes in circumstances where the change away from Vokes was ultra vires. If Laminar had title from Vokes as it claimed, it should make an application under s 107 supported by the relevant documentation so that it could properly be recorded as an assignee. Where a trade mark registration had been wrongly transmitted, it may be corrected by means of s 81. The identity of the registered owner could only be properly altered by valid assignment, transmission, cancellation or “probative provisions”.

43    In answer to Laminar’s first contention Vokes submitted that the error corrected clearly fell within the express wording of s 81: the changes made on 17 August 2001 involved removing Vokes and wrongly entering AES (and subsequently entering Laminar) into the Register as the owner of the registrations.

44    In answer to Laminar’s third contention, Vokes submitted the only application for transmission and supporting assignment filed with the Registrar showed nothing more than a purported assignment of rights as between AES and Laminar. There was never any assignment filed in support of these changes requesting transmission from Vokes to Laminar. If AES was wrongly entered as the owner it followed that AES had no right to transfer those registrations to Laminar and that assignment should not have been actioned. The same error identified by the delegate infected the basis upon which Laminar came to be entered on the Register. The only way to cancel the earlier action was to revert the registrations back to Vokes. The fact that Laminar registered an assignment from AES did not take the present case outside the scope of s 81 or preclude the delegate from exercising power under that section. Vokes referred in this respect to Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 at [45].

45    In answer to Laminar’s fourth contention, Vokes submitted that Laminar raised a number of disparate arguments which appeared to boil down to the assertion that the delegate had not exercised his discretion in its favour. Vokes submitted that it was not surprising that the delegate, having determined that AES (and subsequently Laminar) was wrongly included on the Register, then directed that it be corrected. The Trade Marks Act provided a mandatory procedure for changing ownership as set out in s 107. This procedure was not followed and the Registrar acted without power in making the name change. The result of the decision was that the Register merely reverted to the position before the Registrar acted ultra vires. It was absurd to suggest that Laminar could not apply to have an assignment registered. Neither Laminar nor any other party ever filed an application to record an assignment from Vokes, the owner listed on the Register, as required by s 107. Vokes submitted it was not unreasonable for the registrations to revert to Vokes or to require the proper mandatory steps to take place. There was no error in referring to the assignment provisions as they illustrated the correct way in which the Trade Marks Act dictated title should be transferred. Laminar could still take transition of title (assuming it could provide the evidence) by following the statutory scheme in ss 107-110.

46    In oral submissions, Vokes contended the structure of the Act was to confine consideration to the documents that were filed to effect the relevant changes, and there were two relevant changes made to the particulars in this case. Vokes was the owner of a suite of registered marks. A company unrelated to Vokes, which was formerly a distributor, filed a change of name document which misrepresented the position to the Registrar that there had been a change of name. There was no change of name. The Registrar actioned that change of name, accepting the document, and entered into the Register the name of AES. That entering into the Register was precisely within the scope that s 81 envisaged. That was in error. The change to that particular away from Vokes was beyond power. The Trade Marks Act did not allow the Registrar to change the name under s 216, because there was no change of name. It was desirable that where the Registrar made a mistake she had a power to correct it. There was no stability to a Register where someone can file the wrong documentation, take ownership of someone else’s mark and then say the Registrar cannot remedy that situation, the aggrieved party must make an application to the court.

47    The change of name also had ramifications for the assignment. Because the assignment was only as between AES and Laminar, if AES was not listed on the Register as the owner, then the assignment could never be registered to Laminar. There was no assignment application filed from Vokes all the way through to Laminar. There were no assignment documents as between Vokes and AES, whether at 2001 or thereafter. There was no assignment filed to take the trade marks away from Vokes and there was no accompanying documentation provided to take the trade marks away from Vokes.

48    Despite the fact that Vokes was on the Register in 2001, the change of name document under s 216 dated 15 August 2001 was not filed by it. The October 2005 application to record an assignment or transmission as between AES to Laminar was filed at the time when AES was listed on the Register as the owner but should not have been so listed because it had wrongly been put on the Register. The deed of assignment was purely between AES and Laminar.

49    If the Registrar had identified her error in recording the wrong change of name, sometime after 2001 but before 2005, the Registrar could not have validly accepted the application, because if the Registrar had discovered her error, and then decided to correct it under s 81, it would have been in error, with Vokes being the proper registered owner, to register an assignment, in circumstances where that assignment was only as between AES and Laminar. It was an error to transfer to AES, and it did not cease to be an error because Laminar, then a related company, filed an assignment.

50    Section 81 dealt with any error and was not limited to a clerical error. There was a contrast with ss 64-66 which spoke about clerical error or obvious mistake. Here the Registrar entered in the Register the name AES as the registered owner of the mark and that was in error. Subsequently the Registrar entered into the Register Laminar as the owner in circumstances where the assignment was not effective and that was an error “in entering”. The words “in entering” encompassed an error that was made by the Registrar at the time the entry was made into the Register. That was narrower than s 85 but not so narrow that it did not cover the present case. In effect, what s 81 was talking about was that the Registrar, when she takes an action in respect of her administration of the Register, can undo an action which she takes which at the time was wrong. It was wrong for the Registrar to action the change of name because there was not a change of name. If the Registrar was going to take an action and amend the name, under s 216, then the Registrar must consider the documentation and made an error by actioning the documentation.

51    Section 85 provided the power to correct an error. It involved an application to a court, but it did not follow that the power of the Registrar would be narrower. The Registrar was tasked with administering the Act and with properly ensuring that the Register was kept. The mere fact that there were different provisions under s 85 did not mean that there should be a gloss placed on s 81. The Registrar was bound by the rules of natural justice to allow the parties an opportunity to be heard, and her decisions were reviewable to this Court. So it was not antithetical to the Trade Marks Act to provide for an administrative power in the present situation. In fact, it would be somewhat absurd that s 81 would not cover it.

52    Vokes submitted that Mediaquest dealt with the very issue and should be followed. As stated in Mediaquest at [56], the scheme of the Trade Marks Act was not proprietorship by registration but registration of proprietorship. The questions were how was registration properly transferred and how was the Registrar required to do that. Section 109 had not been complied with. The registered marks were transferred away from Vokes, where the only way they could be transferred away from Vokes was by virtue of the assignment provisions. This was consistent with the statutory regime. Section 81 could not be used to remove an entry from the Register in its entirety: the appropriate avenue would be s 88. But that was not what Vokes sought to do.

53    In reply, Laminar submitted that the Registrar had made no error in entering the change of name in the Register in light of s 216 which compelled the Registrar to enter the change of name. The Registrar was not required to make enquiries as to who was making the application. The Registrar advertised the change of name in the Australian Official Journal of Trade Marks (Vol. 15 No. 31) so that an aggrieved person could apply to a court under s 85 or s 88(1)(b). The courts were the bodies well equipped to deal with the priorities in terms of equities and to deal with substantive issues. Laminar referred to Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970; 77 IPR 115, I assume at [8]-[10], for the proposition that it was not permissible to move under the wrong provision of the Act. If Vokes wanted to agitate the correctness of the 2001 decision it should have moved under s 85 or s 88(1)(b). Further, the Trade Marks Act did not work on the basis that if an error was found in the change of name form in 2001 then that would invalidate later assignments: this was contrary to s 22 and how priorities worked under the Act.

54    Laminar submitted that to contend, as did Vokes, that the Registrar should have known that there was an error on the face of the document, was putting the Registrar in a position the Trade Marks Act did not intend, in light of the terms of s 216; the prescriptive nature of that provision; and the fact that there was no requirement on the Registrar to make that assessment.

55     As to the point of the later purported assignment from Vokes to SPX Vokes Limited, Laminar’s primary case was that that assignment was ineffective as it did not assign anything, but what it did demonstrate was that by ignoring that assignment the delegate did not understand the discretion that he was exercising. The delegate could not make Vokes the registered owner because the delegate would be creating an error in the Register, as opposed to correcting it.

Consideration

56    It is to be recalled that until August 2001, Vokes was recorded in the Register as the registered owner of the trade marks. At the time of the application under s 81 in December 2014, Laminar was so recorded.

57    The reasoning of the delegate was that it was agreed by both Laminar and Vokes that the change to the trade marks on 17 August 2001 wrongly reflected a change of the name of the owner of the trade marks, rather than effecting an assignment of the trade marks. Next, there were no applications for the assignment of the trade marks before the Registrar; because there were no accompanying documents that established the title to the trade marks of the assignee or of the person to whom the trade marks had been transmitted from Vokes; and because Vokes had not changed its name, then the change of name of the owner had been an administrative error; and because there were no valid applications for the assignments of the trade marks before the Registrar she must not consider whether the trade marks had been subsequently assigned.

58    The central question is whether, in the circumstances, s 81 was available to “correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark”.

59    In my opinion, the question of an assignment as at 2001 tends to be a distraction. The primary question is whether the change of the owner’s name and address on the Register in August 2001 was an error of the kind within s 81.

60    There was no finding by the delegate that in August 2001, and by reference to what the Registrar then knew, there had been an error made by the Registrar. The error was on the part of the person submitting the form in circumstances where there had not, in truth, been a change of name and address: as found by the delegate, Vokes had not changed its name. This was not brought to the Registrar’s attention, so far as the delegate found, before December 2014 when Vokes made its application under s 81.

61    I therefore find that the delegate was in error in concluding that there was an error made in entering in the Register in 2001 the change of name. In so concluding, I take no limited view of what may constitute error. I note that in Kimberly-Clark Ltd v Commissioner of Patents (No 3) (1988) 84 ALR 685 Jenkinson J considered that the delegate had taken a too restricted meaning of the phrase “error or omission” in s 160(1) of the Patents Act 1952 (Cth) in stating that an error or omission should be an accidental event or one of inadvertence. His Honour said, at 694:

A deliberate choice of the same collocation of words was thus made to designate the aberrations of the person holding office or employment in the Patent Office and “of the person concerned or of his agent or attorney”, by reason whereof a consequence of the same description ensued. It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s 160(1). Further, the word “error” is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips. Although the latter kinds of error may be those which the draftsman had principally in mind, I do not think the phrase “error or omission” should be given by construction the restricted meaning which the delegate assigned, and accordingly I conclude that this ground of the application has been established.

62    In the present case, as was later shown, there was an error, but in my opinion not one made in 2001 in entering in the Register the change of name.

63    It may be thought that that conclusion is inconsistent with some of the reasoning and part of the conclusion in Mediaquest. But the point as to correcting any error or omission made in entering in the Register does not appear to have been argued or decided and thus Mediaquest is not authority on that point. Unlike the present case, the substantive issue in that proceeding was the question of ownership of the registered mark. Importantly, as was observed at [9] of the judgment, the question of the Registrar’s powers was essentially procedural background to the substantive dispute. At [40], it was noted that once the Court had concluded that Mediaquest was not entitled to a declaration that it was the beneficial owner of the registered mark, it would follow that appropriate steps could be taken to rectify the Register by restoring the name of Mr Brailsford as the registered owner and transmission into the name of his executors.

64    It was in that context that the validity of the decision of the delegate of 26 May 2011 to “cancel” the assignment to Mediaquest under s 81 was examined. It was held to be within the Registrar’s power under that provision since the name of the registered owner was erroneously changed by the Registrar, purportedly acting under s 110. It appears that the reasoning of the delegate as to the error enlivening s 81 was that Mediaquest did not provide any prescribed document clearly demonstrating proof of title and that therefore the assignment application was not properly made: see [6]. That reasoning is not available in the present case as the application that was processed in 2001 was a change of name and not an assignment.

65    Contrary to the conclusion of the delegate in the present case at [23], in my opinion there was no jurisdictional error on the part of the Registrar in 2001. It is true that there was not a change in the name of the registered owner of the registered trade marks but the Registrar did not know that nor should she have known it: the submission was not pressed before me that it was plain on the face of the form that there was no change of name in the registered owner. If there were no jurisdictional error then it follows that the decisions to record changes of the owner’s name on the Register were not decisions which “had no legal foundation and are no decisions at all” as found by the delegate as a consequence of his conclusion that the decisions were tainted by jurisdictional error.

66    Although it was not put by the delegate or argued, as I understood it, precisely in this way before me, the relevant reasoning in Mediaquest was that the existence of an effective assignment or transmission was a necessary precondition to the making of a valid application under s 109 and the subsequent exercise of power by the Registrar under s 110: see the judgment at [53]. The same reasoning appears at [48] to the effect that ss 109 and 110 are not engaged unless there has been an actual assignment or transmission of a trade mark (original emphasis). The reasoning then continued that the absence of a valid assignment or transmission meant, in effect, that the Registrar had no jurisdiction under s 110 to register the person. I would not read s 216, the provision dealing with change of name, in the same way although there is some similarity in the conditional form of the language. Thus I would not regard the actual change in the name of the registered owner of the registered trade mark as a jurisdictional fact underlying the exercise of power under s 216. Nor do I regard an actual change in the name of the registered owner as a precondition to the power in s 216.

67    It also follows from this conclusion that Mediaquest does not support the delegate’s decision as that judgment turned on a finding of jurisdictional error affecting the Registrar’s decision the record the “assignment” in the Register.

68    If I am wrong in what I have so far concluded, I find that there was no power to correct under s 81 in light of the intervening dealings, that is, the dealings before the Registrar acted under that section. For example, an assignment of the trade marks from AES to Laminar was entered on the Register on 25 October 2005.

69    I distinguish Mediaquest on the basis that, in that case, there were no such dealings. The events in Mediaquest were: an application to record an assignment to Mediaquest dated 21 September 2010, the assignment being recorded in the Register on 8 October 2010, the Registrar receiving a letter complaining about the registration of the assignment on 12 November 2010, a letter dated 22 November 2010 by the Registrar of intention to cancel the assignment and, on 26 May 2011, a decision by the delegate that the assignment to Mediaquest should be cancelled one month after that date.

70    In my opinion it would not be conducive to the “integrity” of the Register and that it be “pure”, as referred to by the High Court in Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13; 240 CLR 590 at, for example, [22] that the Register may be amended by the Registrar on her own initiative under s 81 in circumstances where many years have passed and intervening dealings have occurred with the result that those subsequent dealings would fall as a consequence. This construction is supported, in my opinion, by the availability to an aggrieved person of other remedies in respect of the Register.

71    For completeness, I reject Laminar’s challenge to the findings made by the delegate at [18] of his decision. Construed in context, the delegate was there considering what was filed with the Registrar to transmit or transfer the trade marks from Vokes.

Conclusion and orders

72    The decision of the delegate made on 29 May 2017 is set aside with effect from the date of the decision. I also set aside the delegate’s award of costs against the present applicant. Because it is my opinion that s 81 was not available in the circumstances, I do not remit the matter to the Registrar for further consideration. The second respondent is to pay the costs of the applicant in this Court. I propose to make no order for costs for or against the first respondent, the Registrar. If she wishes to contend for some different order she is to notify the Court and the other parties within 7 days of the date of this order. Within the same period the other parties are to notify each other and the Court as to the appropriate order in relation to costs of the proceedings before the delegate: no submissions were directed to this point and it is not presently clear to me whether the Court has any power, other than to note an agreement between the parties, to order those costs be paid by a particular entity.

Associate:

Dated:    6 December 2017