Federal Court of Australia

Top Intellectual Property Pty Ltd v Grayson’s International Pty Ltd [2024] FCA 561

ORDERS

THE COURT ORDERS THAT:

1.    The respondent’s interlocutory application for leave for Grayson O’Connor to represent the respondent in the principal proceeding be dismissed.

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

REASONS FOR JUDGMENT

(Delivered ex tempore)

STEWART J:

1    This is an interlocutory application by the respondent for leave to be represented in this proceeding by Grayson O’Connor, the respondent’s director. The application arises from the prohibition in r 4.01(2) of the Federal Court Rules 2011 (Cth) against a corporation proceeding in the Court other than by a lawyer, and r 1.34 which provides that the Court may dispense with compliance with any of the Rules.

2    The principal proceeding is an appeal from a decision of a delegate of the Registrar of Trade Marks refusing the registration of a trade mark. The trade mark in question is CORRO SADDLE in class 6 in respect of metal mesh for gutters; metal mesh for preventing debris from entering gutters; gutter supports of metal; and protective metal guard mountings for surfaces.

3    The respondent’s opposition to the registration relies on s 41 of the Trade Marks Act 1995 (Cth) on the basis that the subject mark is not capable of distinguishing the appellant’s goods in respect of which the mark is sought to be registered.

4    I gratefully adopt the summary of the relevant principles in relation to dispensing with the requirement that a corporation be represented by a lawyer identified by White J in Basetec Services Pty Ltd v CPB Contractors Pty Ltd (formerly Leighton Contractors Pty Ltd) [2017] FCA 510 at [8]. His Honour identified that the exercise of the Court’s discretion pursuant to r 1.34 in relation to r 4.01(2) is to be exercised by reference to “all relevant considerations”. There are a variety of matters which may bear upon the exercise of the discretion in a given case, including:

(1)    the financial capacity of the company and those standing behind it and whether a lack of financial capacity would inhibit a company from obtaining legal representation;

(2)    the factual complexities of the case and the capacity of the proposed representative to conduct it effectively having regard to the skills, training, qualifications and experience of that representative;

(3)    the overarching purpose of the civil practice and procedure provisions specified in s 37M of the Federal Court of Australia Act 1976 (Cth) and the effect on the achievement of that purpose if the company proceeds with, or without, legal representation;

(4)    the ability of the proposed representative to exercise the objectivity expected of a legal practitioner;

(5)    whether a lack of available disciplinary measures in relation to the person seeking to represent the company will affect the administration of justice;

(6)    the manner in which the case has progressed to date and the manner in which it may progress without the party having legal representation; and

(7)    when the company in question is a respondent, a more liberal approach to the exercise of the discretion may be warranted.

5    It has been said that the “guiding principle” for the exercise of a court’s discretion to grant leave to a non-lawyer to represent a corporation is:

the public interest in the attainment of the ends of justice. The public has an interest in the effective, efficient and expeditious disposal of litigation in the courts. As a general rule this can best be achieved by parties employing qualified lawyers.

(Damjanovic v Maley [2002] NSWCA 230; 55 NSWLR 149 at [83] per Stein JA, Mason P and Sheller JA agreeing.)

6    When the interlocutory application first came on for hearing on 9 April 2024, I granted Mr O’Connor leave to represent the respondent for the purposes of the interlocutory application. When I asked Mr O’Connor whether he was familiar with the principles that I must apply in deciding whether or not to grant leave for him to represent the respondent in the principal proceeding, he answered that he was not. I then outlined the relevant principles for him, namely those from Basetec identified above, and adjourned the interlocutory application to today so that the respondent could in the meantime file the necessary evidence and submissions in support of the interlocutory application.

7    The respondent has not filed any submissions. Aside from evidence that goes to the merits of the principal case, to which I will return, the respondent’s evidence on the interlocutory application is very limited.

8    First, on the question of financial capacity there is one paragraph of an affidavit by Mr O’Connor and the annexure referred to in that paragraph:

The Respondent does not have the financial capacity to obtain legal representation or to employ lawyers. Annexure GO2 shows the current bank balance of the Respondent of $1376.97. Due to the current cost of living crisis, the entire roofing and gutter protection industry is facing an unprecedented lull in sales Australia wide.

9    The annexure appears to be a Commonwealth Bank balance statement for “Grayson’s International” dated 7 May 2024 which indeed shows a positive balance of $1,376.97.

10    The difficulty with this evidence is that it is hopelessly incomplete. It does not address what other assets or resources the respondent may have, and it does not address the financial capacity of those who stand behind the respondent – Mr O’Connor says from the bar table that he is the sole shareholder and director of the respondent. The statement that the respondent does not have the “financial capacity to obtain legal representation” is merely conclusionary. Even if it were admissible, it would have barely any weight without being backed up by proper evidence as to the respondent’s financial position.

11    Secondly, on Mr O’Connor’s capacity to represent the respondent he states on affidavit that he has been involved in the gutter protection business since 2001 and he has extensive knowledge of the Australian trade marks relating to the industry. He also says that, “until this point”, he has conducted the case effectively by successfully opposing the CORRO SADDLE application to the Registrar and the appellant’s other generic word applications for YOUR GUTTERS and GUTTER GUARDIAN. Mr O’Connor does not profess to have any legal training or experience.

12    In relation to the merits of the respondent’s opposition to registration of the subject mark, Mr O’Connor says that “the principal case is not complex”. With reference to a lengthy exhibit filed in the principal proceeding, he says that CORRO SADDLE is a non-proprietary name. He cites examples of other traders using the name as descriptive of a particular component used to fasten a mesh gutter-guard (to prevent leaves and other debris getting caught in a roof gutter) to corrugated roof-sheeting.

13    Unfortunately, the manner in which the respondent’s case has thus far been presented demonstrates that Mr O’Connor has very limited understanding of elementary aspects of procedural and adjectival law, despite his experience in the industry and his evident honestly held conviction that the respondent’s case is unanswerable. Of course, it is no criticism of Mr O’Connor in observing that he has no legal experience, but it is a highly relevant consideration in the exercise of the discretion that I am asked to exercise.

14    An example of the problematic presentation of evidence thus far is that the respondent seeks to rely on a “sworn statement” of one McDonald Silver. Although the statement is purportedly sworn, it is not witnessed and merely features as one of many documents in a lengthy exhibit. It is obviously hearsay and inadmissible. There is much other evidence that appears on its face to be inadmissible. Included in the exhibit is a copy of a judgment from the Commonwealth Law Reports, which is clearly not evidence at all and inappropriate for tender.

15    Another difficulty is that the respondent’s evidence is not directed at the relevant date, being the date that the trade mark application was filed, namely 10 November 2020. This difficulty was specifically raised by the delegate in their reasons, but it has not been addressed in the respondent’s evidence filed in the appeal proceeding.

16    In short, even assuming the case to be a simple one, I can have no confidence that Mr O’Connor will be able to present the case adequately or that he will be able to assist the Court in any significant way. It looks to me that the respondent will be seriously prejudiced if it is not represented by someone who knows what they are doing, and the Court will be seriously burdened. I am not satisfied that it is in the interests of justice that Mr O’Connor be given leave to represent the respondent. The interlocutory application must be dismissed.

17    As the appellant maintained a neutral stance on the interlocutory application, I do not propose to make any order with regard to the costs of the interlocutory application.

Associate:

Dated:    27 May 2024