FEDERAL COURT OF AUSTRALIA

Quach v Registrar of Trade Marks [2025] FCA 311

ORDERS

THE COURT ORDERS THAT:

1.    Pursuant to s 31A(2) of the Federal Court of Australia Act 1976 (Cth) and r 26.01(1) of the Federal Court Rules 2011 (Cth), judgment be entered in favour of the respondent in relation to the whole of the proceeding.

2.    The applicant’s application for interlocutory relief be dismissed.

3.    The applicant pay the respondent’s costs as agreed or assessed.

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

REASONS FOR JUDGMENT

MEAGHER J

INTRODUCTION

1    On 1 July 2024 Dr Quach applied to this Court for the following relief:

    that the trade mark number 2375963, “BYRON BAY BEACHFRONT APARTMENTS”, be registered to Bennelong Medical Pty Ltd (Bennelong); and

    that interlocutory relief be granted in the form of an order that IP Australia not register elsewhere a later trade mark application 2410434 for a turtle logo with “BYRON BAY BEACHFRONT APARTMENTS”, which Dr Quach asserts belongs to him.

2    On 21 August 2024 the respondent, the Registrar of Trade Marks (Registrar), sought summary judgment, pursuant to r 26.01 of the Federal Court Rules 2011 (Cth) (FCR) or alternatively s 31A of the Federal Court of Australia Act 1976 (Cth) (FCA).

3    Dr Quach’s application for interlocutory relief and the Registrar’s application for summary judgment were heard together on 24 October 2024.

4    Dr Quach relied on the following material:

    an affidavit of 1 July 2024 in support of his originating application;

    an affidavit in support of interlocutory relief of 16 July 2024;

    a further affidavit of 23 October 2024 in support of injunctive relief;

    an outline of submissions dated 26 September 2024; and

    an outline of submissions dated 10 October 2024.

5    Dr Quach required leave to rely on the affidavit of 23 October 2024, as it was filed late and not served on the Registrar. There was no opposition. Leave was granted.

6    The Registrar relied on the following material:

    an affidavit of Ms Karla Holzberger dated 20 August 2024;

    an outline of submissions dated 26 September 2024; and

    an outline of submissions dated 10 October 2024.

For the reasons that follow, the Registrar is granted interlocutory relief in the form of summary judgment.

BACKGROUND

7    It is useful to explain the processes available under the Trade Marks Act 1995 (Cth) (TMA) and Trade Marks Regulations 1995 (Cth) (TMR) as they apply to this application.

8    The TMA and TMR provide for a number of processes in relation to the registration and protection of trade marks. Relevantly to this matter, the processes include, at Part 3A of the TMR, an assisted filing service (AFS). The AFS includes a preliminary assessment of a trade mark to establish whether a trade mark is likely to be accepted for registration. There is also a process for applying for the registration of a trade mark. Section 27(2) of the TMA provides that an applicant must apply to register a trade mark in accordance with Part 4 of the TMR. The registration of a trade mark may be opposed, and the process to be undertaken in that regard is contained in Part 5 of the TMA. The relevant legislation is set out below.

9    Ms Holzberger is an Assistant Hearing Officer at IP Australia. She deposed that her role is to “administer the trade mark opposition process as part of the Respondent’s Trade Marks and Designs Group, Opposition and Hearings Section”. Assistant Hearing Officers exercise delegations under the TMA and TMR. These delegations include “processing or deciding on statements of grounds and particulars, extensions of time, amendments, costs, and evidence issues”.

10    In her affidavit, she deposed that “[a] ‘TM Headstart’, also known as a ‘Headstart Application’, is a service provided by the Respondent to potential trade mark applicants”. This service allows a trade mark examiner to assess and provide feedback “to an applicant on a proposed trade mark. An applicant is able to consider any feedback received and consider whether to make a formal application to register the trade mark”. This falls within the scope of the AFS procedures in the TMA and TMR.

Trade mark 2375963

11    Dr Quach filed a Headstart Application on behalf of Bennelong on 31 July 2023. He is the sole director of Bennelong. The proposed trade mark in question was the “plain text word mark”, that read “BYRON BAY BEACHFRONT APARTMENTS”. In her affidavit, Ms Holzberger deposed that “[o]n 3 August 2023, the Respondent provided the Applicant with an Adverse TM Headstart assessment”. A copy of that was annexed to Dr Quach’s affidavit affirmed 1 July 2024 and relevantly included the following:

Dear Applicant,

The results of the assessment of your TM Headstart request indicate that your trade mark would not meet the requirements for registration under the Trade Marks Act 1995. However, please note that this assessment does not constitute a formal examination of your trade mark.

…

What you need to do now

To formally file your trade mark application you must pay the Part 2 application fee by 9 August 2023 otherwise your TM Headstart request will be discontinued. Please refer to the relevant information regarding fees on our website. For assistance with our online lodgement services please contact 1300 65 10 10.

…

What you can do now

The following options are available to you:

Change your trade mark so that it is able to distinguish your goods and services from the similar goods and services of others. Please note that you will need to pay an additional fee to provide a new representation for reassessment and new issues may arise as a result of the reassessment. Any changes to the mark should also be reflective of your intention to use the mark, in order to mitigate issues that may result from an opposition in the future should your mark gain acceptance and/or registration.

Pay the Part 2 application fee to file a formal application. Once this occurs I will issue a formal report and you will have 15 months in which to address the issues by agreeing to amend your statement of goods, or providing submissions and/or evidence of use.

…

Things to be aware of

…

Please remember that you have not yet completed the process of filing a formal application and have not been allocated a filing date. The filing date is important because this is the date from which your protection begins.

If you pay the part 2 application fee:

•    If you choose to pursue the registration of this trade mark it is in your interest to complete the filing process as soon as possible. Every day you wait other traders may file applications for similar trade marks.

(Emphasis in original.)

12    As is clear from above, the letter indicated that the trade mark would not meet the requirements for acceptance for registration and advised Dr Quach that his options included altering the trade mark, such that it distinguished his “goods and services from the similar goods and services of others”, consistent with the requirements in s 41 of the TMA. Dr Quach did not respond to the Adverse TM Headstart assessment nor pay the fee for a formal filing of the trade mark, which fell due on 9 August 2023. On 10 August 2023, the Registrar wrote to Dr Quach advising that the Headstart application was discontinued. No further applications under s 27 of the TMA were made by Dr Quach on behalf of Bennelong.

Trade mark 2410434

13    On 4 December 2023, a Headstart Application was filed for a “plain text word mark”, which read “Byron Bay Beachfront Apartments” under the name The Owners-Strata Plan No 48462. An “Adverse TM Headstart assessment” was provided by the Registrar on 7 December 2023. On 14 December 2023, the Registrar received a response in which The Owners-Strata Plan No 48462 had altered their initial trade mark, being the subject of this Headstart Application. The altered version was a figurative trade mark “containing the words ‘Byron Bay Beachfront Apartments’ and an image of a stylised turtle”. The response also requested that the name on the application be amended to Medcraft Pty Ltd (Medcraft) instead of The Owners-Strata Plan No 48462.

14    The Registrar issued a “Clear TM Headstart assessment” on 15 December 2023. Medcraft officially filed the trade mark application on 21 December 2023 and paid the required fee. On 12 January 2024, the Registrar advised Medcraft that the trade mark had been examined early and accepted. Medcraft was also advised, as per international agreements, that the trade mark could not be registered immediately, and would be advertised as accepted after 21 May 2024. On 22 May 2024, Medcraft was advised that the trade mark “has passed the examination stage and has been accepted” on the register.

15    On 27 May 2024, QE Family Pty Ltd trustee for Qe Tai Sing Family Trust, trading as BYRON BAY BEACHFRONT APARTMENTS (QE Family Pty Ltd) filed a notice of intention to oppose registration of Medcraft’s trade mark. Dr Quach is the sole director of QE Family Pty Ltd.

16    On 5 June 2024, Medcraft requested full assignment of its trade mark to Proprietors of Strata Plan 48462. The Registrar processed this request on 6 June 2024. The Proprietors of Strata Plan 48462 and QE Family Pty Ltd were advised of the assignment on 6 June 2024.

17    On 26 June 2024, QE Family Pty Ltd filed a Statement of Grounds and Particulars opposing registration of the trade mark. The Statement of Grounds and Particulars contained nine grounds of opposition. On 27 June 2024, Ms Holzberger deposed that the Registrar informed QE Family Pty Ltd “that two of the grounds contained in [its] Statement of Grounds and Particulars had been assessed as inadequate”. QE Family Pty Ltd was provided with 14 days to rectify the Statement of Grounds and Particulars at its discretion. Relevantly, the Registrar’s letter stated:

Dear Opponent,

Your statement of grounds and particulars (SGP) received on 26 June 2024 has been assessed as inadequate. A copy of the inadequate SGP is attached for your records.

What this means

If you wish to proceed with the following grounds you must provide these particulars:

…

What you need to do now

You have 14 days from the date of this letter to file the information specified above to rectify the inadequacy.

When you respond, please provide the required information in the form of a letter. The letter should be filed via the online portal by selecting ‘Make a general submission’ from the search bar in the portal, enter the trade mark number and choose ‘Opposition matter (excluding evidence)’. Please do not file your response using the ‘File a statement of grounds and particulars’ option.

(Emphasis in original.)

18    In addition, the Registrar informed QE Family Pty Ltd that failure to rectify or respond may result in deletion of the “inadequate ground/s and associated material” from the Statement of Grounds and Particulars “without further notice”. Should that occur, the Registrar would inform QE Family Pty Ltd, and the opposition would proceed only on the remaining grounds in the Statement of Grounds and Particulars. QE Family Pty Ltd could apply to the Administrative Appeals Tribunal for “review of a decision to delete material” from the Statement of Grounds and Particulars. Relevantly, the Registrar’s letter stated:

…

Things to be aware of

If you do not respond or the information provided does not rectify the inadequacy, the inadequate ground/s and associated material may be deleted from the SGP without further notice to you. The opposition will then proceed on the grounds remaining in the statement.

Please note that you have NOT been invited to add further information to the grounds and particulars in your SGP that have already been determined to be adequate. Other amendments to your SGP besides the requirements identified above must be separately requested under the provisions of regulation (5.12, 17A.34G). There are strict criteria associated with amendment under these provisions.

You may apply to the Administrative Appeals Tribunal (AAT) for review of a decision to delete material from the SGP.

(Emphasis in original.)

19    The Registrar’s letter also referred specifically to the two grounds which were considered inadequate.

20    QE Family Pty Ltd responded to the Registrar’s notice on 11 July 2024. QE Family Pty Ltd supplied duplicate copies of the “Adverse TM Headstart assessment” in respect of Bennelong’s trade mark application, but failed to file any rectification of the inadequacies in its Statement of Grounds and Particulars.

21    In her affidavit, Ms Holzberger deposed that on 12 July 2024, she discussed with Dr Quach the letter sent on 27 June 2024. As a result of their conversation, Dr Quach indicated to Ms Holzberger that he intended to review the letter. Ms Holzberger requested that Dr Quach contact her directly by telephone on 15 July 2024 with any questions and advised him that if no such contact was made, the Registrar would remove the two inadequate grounds of opposition from the Statement of Grounds and Particulars.

22    As Dr Quach did not contact Ms Holzberger on the aforementioned date, she telephoned him on 16 July 2024. He requested additional time until 22 July 2024, which Ms Holzberger granted.

23    Dr Quach, on behalf of QE Family Pty Ltd, failed to file any information to rectify the inadequacies in his Statement of Grounds and Particulars made in his capacity as sole director of QE Family Pty Ltd.

24    Thus, the Registrar “considered and processed” QE Family Pty Ltd’s Statement of Grounds and Particulars and rectified its Statement of Grounds and Particulars by “deleting the two insufficiently particularised grounds of opposition” relating to ss 41 and 43 of the TMA.

25    On 23 July 2024, the Registrar notified the Proprietors of Strata Plan 48462 of the opposition to their trade mark application, and provided a copy of QE Family Pty Ltd’s rectified Statement of Grounds and Particulars. As well, the Registrar provided a copy of the Statement of Grounds and Particulars to QE Family Pty Ltd.

26    The Proprietors of Strata Plan 48462 were given until 23 August 2024 to file their notice of intention to defend. They filed on 31 July 2024. The notice of intention to defend was processed by the Registrar on 5 August 2024.

27    QE Family Pty Ltd had until 5 November 2024 to file evidence in support of those grounds of opposition in the Statement of Grounds and Particulars which were considered adequate.

LEGAL PRINCIPLES

TMR and TMA

28    Regulation 3A.1 of the TMR explains the purpose of the AFS.

3A.1 Purpose of Part

This Part provides for an assisted filing service to enable a person proposing to make an application under Part 4 of the Act to request:

(a)    a preliminary assessment from the Registrar concerning the likelihood of the application for the proposed trade mark being successful under Part 4 of the Act; and

(b)    information concerning the requirements for registration under Part 4 of the Act.

29    When an applicant seeks to rely upon the AFS, they must do so in accordance with the requirements in reg 3A.3 of the TMR.

3A.3 Request for filing assistance—form of request

(1)    A person proposing to submit an application under Part 4 of the Act (a requester) may submit a request for filing assistance (an AFS request) under this Part.

(2)    An AFS request must:

(a)    be supported by such material and attachments as required by the Registrar having regard to the requirements of Part 4 of the Act in relation to an application for registration; and

(b)    be accompanied by the fee prescribed for the AFS request.

(3) An AFS request:

(a)    must be submitted in a manner required by the Registrar; and

(b)    must contain the name of the requester; and

(c)    must contain contact details that includes the business or residential address and a telephone number for the requester, and:

(i) the fax number of the requester; or

(ii) the email address of the requester; and

(d)    must include a representation of the trade mark that is sufficient to identify the trade mark; and

(e)    must specify the goods and/or services in relation to which the request is made; and

(f)    must not relate to a matter published by the Registrar on the IP Australia website to be a matter for which an AFS request is not available; and

(g)    if the AFS request relates to a matter for which the Registrar has published conditions on the IP Australia website—must comply with the conditions.

(4)    If the fee mentioned in paragraph (2)(b) remains unpaid 5 working days after an AFS request is submitted, the AFS request is incomplete and is taken not to have been submitted.

(5)    A requester may amend an AFS request before it is assessed by the Registrar by advising the Registrar of the details of the amendments and providing:

(a)    any material to be added to the AFS request; and

(b)    any other document required by the Registrar in relation to the amendment; and

(c) any fee prescribed in relation to the amendment.

(6)    For the fee prescribed for an amendment mentioned in paragraph (5)(c), the Registrar may:

(a)    decide to waive the fee; or

(b)    decide not to waive the fee, and require that payment of the fee be made within the period of 5 working days after that decision.

(7) The Registrar must amend the AFS request on receipt of an amendment:

(a) that complies with subregulation (5); and

(b) in respect of which the fee, if any, has been paid.

30    Once the request is submitted to the Registrar, the Registrar must make an assessment.

3A.4 AFS request—assessment by Registrar

(1)    After receiving an AFS request the Registrar must, as soon as practicable, assess the AFS request having regard to the requirements of Part 4 of the Act and form an opinion whether or not:

(a)    the AFS request would, if submitted in that form as an application for registration under Part 4 of the Act, be in accordance with that Part; and

(b)    there would be grounds under Division 2 of Part 4 of the Act for rejecting the AFS request.

(2)    After forming an opinion the Registrar must, as soon as practicable, inform the requester of:

(a)    the opinion; and

(b)    the procedural requirements of regulation 3A.5 for making an amendment to the AFS request; and

(c)    the procedural requirements for making an application for the registration of a trade mark under Part 4 of the Act.

(3) The Registrar may inform the requester:

(a) in writing, by mail, fax or email; or

(b) by telephone; or

(c) in person.

31    Once the applicant has received the outcome of their proposed trade mark assessment, they may amend their application or submit the AFS request with the accompanying fee to formalise their application for registration.

3A.5 AFS request—formal requirements for amendment or proceeding to Part 4 application

(1)    The requester may, within 5 working days after being informed by the Registrar under subregulation 3A.4(2), or within an extended period as decided by the Registrar under regulation 3A.7:

(a)    amend the AFS request under subregulation 3A.5(2); or

(b)    submit the AFS request as an application for registration of a trade mark under Part 4 of the Act by payment of the fee prescribed by item 35 of the table in subclause 1(1) of Schedule 9.

…

(6)    An AFS request is discontinued if a requester fails to submit an application under Part 4 of the Act after following the procedure mentioned in subregulation (1).

32    Part 4 of the TMR, reg 4.1, reaffirms that the formalisation of an application to register a trade mark will only comply with the TMA if the relevant fee is paid.

4.1    Applications—approved form

(1)    For subsection 27(2) of the Act (which deals with applications for registration), an application for the registration of a trade mark must be:

(a)    in an approved form; or

(b)    an AFS request mentioned in Part 3A, in respect of which all fees were paid within the prescribed time limits.

33    Relevantly, s 27 of the TMA explains how an application to register a trade mark is made.

27 Application – how made

(1)    A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a)    the person claims to be the owner of the trade mark; and

(b)    one of the following applies:

(i)    the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii)    the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii)    the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Note: For use see section 7.

(2)    The application must:

(a)    be in accordance with the regulations; and

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

(c)    be made by a person or persons having legal personality.

Note: For file see section 6.

(2A) Despite paragraph (2)(c), an application for registration of a collective trade mark need not be made by a person or persons having legal personality.

Note: For collective trade mark see section 162.

(3)    Without limiting the particulars that may be included in an application, the application must:

(a)    include a representation of the trade mark; and

(b)    specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trade mark.

(4)    Regulations made for the purposes of paragraph (3)(b) may apply, adopt or incorporate any matter contained in any listing of goods and/or services published by the Registrar from time to time and made available for inspection by the public at the Trade Marks Office and its sub-offices (if any).

(5)    An application may be made in respect of goods and services of one or more of the classes provided for in regulations made under subsection 19(3).

34    An application to register a trade mark may be rejected under s 41 of the TMA.

41 Trade mark not distinguishing applicant’s goods or services

(1)    An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note: For goods of a person and services of a person see section 6.

(2)    A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)    This subsection applies to a trade mark if:

(a)    the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)    the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)    This subsection applies to a trade mark if:

(a)    the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)    the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)    the use, or intended use, of the trade mark by the applicant;

(iii)     any other circumstances.

Note 1:    Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:     For goods of a person and services of a person see section 6.

Note 3:    Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)    For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:     For applicant and predecessor in title see section 6.

Note 2:     If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

35    It is possible to oppose the registration of a trade mark under s 52 of the TMA.

52 Opposition

(1)    If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.

(2)    The notice of opposition must be filed:

(a)    in accordance with the regulations; and

(b)    within the prescribed period, or within that period as extended in accordance with the regulations or in accordance with subsection (5).

(3)    Regulations made for the purposes of paragraph (2)(a) or (b) may make different provision with respect to different components (if any) of the notice of opposition.

(3A) Subsection (3) does not limit subsection 33(3A) of the Acts Interpretation Act 1901.

(4)    The registration of a trade mark may be opposed on any of the grounds specified in this Act and on no other grounds.

Note: For this Act see section 6.

(5) If:

(a)    a person is granted an extension of time in which to file a notice of opposition; and

(b)    before the notice of opposition is filed, the right or interest on which the person could have relied to file the notice of opposition becomes vested in another person; and

(c)    the other person notifies the Registrar in writing that the right or interest is vested in him or her;

then:

(d)    the other person is taken to have been granted an extension of time in which to file the notice of opposition; and

(e) that extension ends when the extension mentioned in paragraph (a) ends.

36    The Registrar must then make a decision as per s 55 of the TMA, which relevantly provides:

55 Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)    to refuse to register the trade mark; or

(b)    to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note: For limitations see section 6.

(2)    Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.

Note: For examine and this Act see section 6.

(3) This subsection applies to the proceedings if:

(a)    the proceedings are discontinued; or

(b)    the proceedings are dismissed; or

(c)    the application lapses because of the operation of section 54A (about lapsing of applications if a notice to defend the application is not filed).

37    The decision of the Registrar may be appealed under s 56 of the TMA.

56 Appeal

The applicant or the opponent may appeal to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) from a decision of the Registrar under section 55.

Note: For applicant and opponent see section 6.

38    Section 206 of the TMA provides for the delegation of the Registrar’s powers.

206 Delegation of Registrar’s powers and functions

(1)    The Registrar may by signed instrument delegate all or any of his or her powers or functions to a prescribed employee, or employees in a prescribed class.

Note 1: For employee see section 6.

Note 2: See section 34AB of the Acts Interpretation Act 1901 about the effect of this subsection.

(2)    A delegate must, if so required by the instrument of delegation, exercise or perform a delegated power or function under the direction or supervision of:

(a)    the Registrar; or

(b)    a person specified in the instrument, being a person referred to in subsection (1).

39    An employee is defined in s 6 of the TMA.

6 Definitions

(1)    In this Act, unless the contrary intention appears:

…

employee means a person, other than the Registrar or a Deputy Registrar, who:

(a)    is a person engaged under the Public Service Act 1999 and is employed in the Trade Marks Office; or

(b)    is not such a person but performs services, in the Trade Marks Office, for or on behalf of the Commonwealth.

40    The TMR elaborates in reg 19.2:

19.2 Persons to whom Registrar may delegate (Act, s 206(1))

For subsection 206(1) of the Act, a person holding, or performing the duties of, an office in the Trade Marks Office stated in Schedule 6 is a person to whom the Registrar may delegate all or any of the Registrar’s powers or functions under the Act.

Summary Judgment

41    The Court’s power to give summary judgment is contained in s 31A(2) of the FCA.

31A Summary judgment

…

(2)    The Court may give judgment for one party against another in relation to the whole or any part of a proceeding if:

(a)    the first party is defending the proceeding or the part of the proceeding: and

(b)    the Court is satisfied that the other party has no reasonable prospect of successfully prosecuting the proceeding or that part of the proceeding.

(3)    For the purposes of this section, a defence or a proceeding or part of a proceeding need not be:

(a)    Hopeless; or

(b)    Bound to fail;

for it to have no reasonable prospect of success.

(4)    This section does not limit any powers that the Court has apart from this section.

(5)    This section does not apply to criminal proceedings.

42    Alternatively, the Registrar relies on r 26.01(1) of the FCR, which provides:

26.01    Summary judgment

(1)    A party may apply to the Court for an order that judgment be given against another party because:

(a)    the applicant has no reasonable prospect of successfully prosecuting the proceeding or part of the proceeding; or

(b)    the proceeding is frivolous or vexatious; or

(c)    no reasonable cause of action is disclosed; or

(d)    the proceeding is an abuse of the process of the Court; or

(e)    the respondent has no reasonable prospect of successfully defending the proceeding or part of the proceeding.

43    The authorities regarding summary judgment are well-established, and are helpfully summarised by McKerracher J in Buurabalayji Thalanyji Aboriginal Corporation v Onslow Salt Pty Ltd (No 2) [2018] FCA 978 at [3]:

Without reference to all the well-known authorities, the parties agree that it is well established that the Court may give judgment for a defending party in relation to the whole or any part of a proceeding where the Court is satisfied that the prosecuting party has no reasonable prospects of successfully prosecuting the proceeding or a part of the proceeding. Further:

•    the claim need not be hopeless or bound to fail for it to have no reasonable prospects of success: s 31A of the Federal Court Act;

•    a reasonable prospect of success is one which is real, not fanciful or merely arguable: Rogers v Assets Loan Co Pty Ltd (2008) 250 ALR 82 per Logan J (at [41]);

…

•    s 31A is amenable to resolving straightforward questions of law: Luck v University of Southern Queensland [2008] FCA 1582 per Logan J (at [16]). However, summary judgment may still be appropriate if a question raised is of some complexity: SK Foods LP v SK Foods Australia (in liq) (No 3) (2013) 214 FCR 543 per Flick J (at [115]);

•    it is clear that the legislature’s intention in enacting s 31A was to lower the bar for obtaining summary judgment, including summary dismissal, below that fixed by previous authorities: Spencer v Commonwealth of Australia (2010) 241 CLR 118 per Hayne, Crennan, Kiefel and Bell JJ; Jefferson Ford per Gordon J (at [127]);

•    s 31A permits dismissal of a proceeding where an inquiry into the merits of the issues of law demonstrates the arguments are insufficiently strong to warrant the matter going to trial: McAleer v University of Western Australia (No 3) (2008) 171 FCR 499 per Siopis J (at [39] and the cases therein cited).

(Emphasis in original.)

44    In Buurabalayji Thalanyji Aboriginal Corporation, McKerracher J at [3], citing Kimber v The Owners of Strata Plan No 48216 (2017) 258 FCR 575; [2017] FCAFC 226 per Logan, Kerr and Farrell JJ (at [62]) quoting with approval Eliezer v University of Sydney (2015) 239 FCR 381; [2015] FCA 1045 per Perry J (at [37]), noted that a consideration of summary judgment requires a discretionary “value judgement in the absence of a full and complex factual matrix and argument”. The particular facts and circumstances of each case are relevant: Buurabalayji Thalanyji Aboriginal Corporation at [3], citing Australian Securities and Investments Commission v Cassimatis (2013) 220 FCR 256; [2013] FCA 641 per Reeves J (at [46]).

45    In Cassimatis, Reeves J stated at [50]:

Finally, these authorities show that there are at least two other factors that need to be borne in mind on a summary judgment application such as this. The first is that, in all the situations outlined above, the court has a discretion as to whether to determine the proceedings summarily, or to refer them to trial. Of course, as with any such discretion, it has to be exercised judicially: see Latoudis v Casey (1990) 170 CLR 534 at 569; 97 ALR 45 at 69 per McHugh J, quoting Donald Campbell and Co Ltd v Pollak [1927] AC 732 at 811–12 per Viscount Cave LC. Second, while s 31A sets a lower bar, or a softened test, for the summary determination of proceedings, any such summary determination still has to be approached with caution. This is so because a trial is the usual and accepted means by which disputed questions of fact are determined in this country.

46    Section 31A of the FCA was inserted in 2005 by the Migration Litigation Reform Act 2005 (Cth), s 3 and Sch 1, item 7 and modified the level of satisfaction necessary for the entry of summary judgment. In that regard Hayne, Crennan, Kiefel and Bell JJ in Spencer v The Commonwealth of Australia (2010) 241 CLR 118; [2010] HCA 28 at [53] stated as follows:

In this respect, s 31A departs radically from the basis upon which earlier forms of provision permitting the entry of summary judgment have been understood and administered. Those earlier provisions were understood as requiring formation of a certain and concluded determination that a proceeding would necessarily fail.

47    In Spencer v The Commonwealth, their Honours at [58] considered the expression “no reasonable prospect”, and concluded that it was impossible to adopt a paraphrase of the expression sufficient to explain its operation. Further, any attempts to create a “lexicon of words or phrases” to this effect should be avoided: Spencer v The Commonwealth at [58].

48    At [59] of Spencer v The Commonwealth, Hayne, Crennan, Kiefel and Bell JJ stated:

In many cases where a plaintiff has no reasonable prospect of prosecuting a proceeding, the proceeding could be described (with or without the addition of intensifying epithets like “clearly”, “manifestly” or “obviously”) as “frivolous”, “untenable”, “groundless” or “faulty”. But none of those expressions (alone or in combination) should be understood as providing a sufficient chart of the metes and bounds of the power given by s 31A. Nor can the content of the word “reasonable”, in the phrase “no reasonable prospect”, be sufficiently, let alone completely, illuminated by drawing some contrast with what would be a “frivolous”, “untenable”, “groundless” or “faulty” claim.

Interlocutory Injunctions

49    The legal principles concerning interlocutory injunctions are well settled and summarised in Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57; [2006] HCA 46, as per Gleeson CJ and Crennan J at [19]:

… As Doyle CJ said in the last-mentioned case, in all applications for an interlocutory injunction, a court will ask whether the plaintiff has shown that there is a serious question to be tried as to the plaintiff’s entitlement to relief, has shown that the plaintiff is likely to suffer injury for which damages will not be an adequate remedy, and has shown that the balance of convenience favours the granting of an injunction. These are the organising principles, to be applied having regard to the nature and circumstances of the case, under which issues of justice and convenience are addressed.

50    Thus, the requirements for interlocutory injunctive relief include a prima facie case and the balance of convenience. For the applicant to be successful in his interlocutory application, he must satisfy both requirements.

CONSIDERATION

51    The Registrar correctly submitted that if Dr Quach is found to have no reasonable prospect of prosecuting the application he has brought for final relief that will have a bearing upon the issues, with respect to the application for an interlocutory injunction, of whether there is a serious question to be tried, and as to the balance of convenience. It is therefore appropriate to first consider whether summary judgment should be granted before examining Dr Quach’s application for an interlocutory injunction.

52    Meaning no disrespect, Dr Quach made a number of submissions which were confusing and misguided. Many of his submissions were contained within his affidavits. He did not address all aspects of the relief sought. Rather, he sought to challenge the legitimacy of the AFS process under the TMA and TMR and the authority of the Registrar. Further, while the relief sought in the originating application was expressed in terms of final relief directing the Registrar to register a trade mark, and interlocutory relief restraining her from registering another trade mark, as Dr Quach’s argument proceeded it was unclear whether the relief expressed to be interlocutory was actually so. Taking that into account, and noting that Dr Quach is not legally qualified, I have made the best I can of his submissions.

Summary Judgment Application

53    Dr Quach’s initial submission was that the Registrar’s Headstart Application program was not permissible and legitimate under the TMA or the TMR. His second submission was unclear but spoke to principles of judicial review. The core of the submission appears to be a request that the Court restrain the Registrar from registering trade mark 2410434 and order her to register trade mark 2375963. During the interlocutory hearing, Dr Quach made verbal submissions impugning the validity of Ms Holzberger’s affidavit. He also submitted that separate applications are required for the assignment of a trade mark.

54    The Registrar submitted that the applicant had misunderstood the legislation. The Registrar claimed that Dr Quach’s lack of a formal application to register his trade mark meant that no decision had been made. Further, the Court could not circumvent the statutory regime for registering trade marks.

55    I will now consider each of Dr Quach’s contentions in turn.

Ms Holzberger’s Affidavit

56    Dr Quach submitted that Ms Holzberger’s affidavit was “false and misleading” because it referred to her role with IP Australia and the Headstart program. He asserted that IP Australia was not authorised to administer the Headstart program. Further, Dr Quach argued that the affidavit had been incorrectly signed. He was asked by the Court to withdraw the submissions as to the claimed “false and misleading” nature of the affidavit as Ms Holzberger was neither present nor able to be cross-examined. The Court was not minded to grant leave for cross-examination and Dr Quach withdrew those submissions. In respect of the submissions regarding a failure to correctly sign the affidavit, Dr Quach is misguided. Ms Holzberger’s affidavit was signed and witnessed in accordance with Part 6A, Div 5 of the Oaths Act 1867 (Qld). Regarding the Headstart program, the TMR clearly provide for an AFS, including a preliminary assessment of proposed trade marks: regs 3A.3 and 3A.4 of the TMR. Finally, as to Ms Holzberger’s role, the TMA provides that the Registrar may delegate her powers: s 206 of the TMA. I am therefore satisfied that Ms Holzberger’s affidavit was not false and misleading and that the Headstart program was administered in accordance with the TMR.

Assignment of Trade Mark 2410434

57    Dr Quach submitted that the Registrar had incorrectly granted ownership of the trade mark to The Owners-Strata Plan 48462. Dr Quach sought to distinguish ownership and assignment. He seemed to proceed on the basis that separate applications should have been made by The Owners-Strata Plan 48462 and Medcraft. These submissions must be rejected.

58    The initial application to register trade mark 2410434 was brought by The Owners-Strata Plan 48462. There was a request to amend the owner’s name to Medcraft on 14 December 2023. This was processed by the Registrar as an amendment of the name and not an assignment. However, an assignment of trade mark 2410434 from Medcraft to Proprietors of Strata Plan 48462 was processed by the Registrar on 6 June 2024. Both Dr Quach and Medcraft were notified of that on the same day.

59    Section 106 of the TMA permits the assignment of a trade mark which is sought to be registered. Under s 107 of the TMA, the applicant or assignee must apply to the Registrar for the assignment to be recorded in an approved form and filed accordingly. Under s 108 of the TMA, the assignment must then be recorded by the Registrar. Under s 111 of the TMA, the Registrar must notify “any person recorded under Part 11 as claiming an interest in, or a right in respect of, the trade mark”. It appears that the Registrar has followed the prescribed requirements in assigning the trade mark. There has been no “incorrect” granting of ownership. No issue arises with respect to the assignment of the trade mark to Proprietors of Strata Plan 48462 from Medcraft. There is no need for a separate and different application in these circumstances.

Impermissible Exercise of Judicial Power

60    Dr Quach’s next submission concerned Part 3A of the TMR, which establishes a process for an AFS. He seemed to suggest that the Registrar was engaging in an impermissible and illegitimate exercise of judicial power under the TMA and TMR, and that the Court should not endorse that. Dr Quach repeatedly stated that the Registrar acted as the “judge, jury, and executioner” in the matter. Dr Quach submitted that the TMR conferred powers upon the Registrar which were of a judicial nature, not an executive nature. If so, this would contravene Chapter III of the Commonwealth of Australia Constitution Act 1977 (Cth).

61     Dr Quach relied on Attorney-General for Australia v R and The Boilermakers’ Society of Australia and Others [1957] AC 288 which remains the leading authority with respect to the federal separation of powers doctrine. The character of judicial power is discussed in Boilermakers’ at 310:

As was said by Isaacs and Rich JJ. in Waterside Workers’ Federation of Australia v Alexander (J. W.) Ltd. “…the essential difference is that the judicial power is concerned with the ascertainment, declaration and enforcement of the rights and liabilities of the parties as they exist, or are deemed to exist, at the moment the proceedings are instituted …”.

(Footnotes omitted.)

62    Under the TMA and TMR, the Registrar does not have the power to ascertain, declare or enforce an applicant’s rights regarding their trade mark. The Registrar’s powers are confined to deciding whether an applicant’s application for a trade mark meets the requirements under the TMA and TMR. The Registrar may only register a trade mark in accordance with these legislative requirements. In other words, the Registrar can register the legal right to a trade mark, but cannot ascertain or declare whether that right exists at law, or enforce that right. That is a judicial function. Indeed, the TMA provides for appeals to the Federal Court in circumstances where the applicant or opponent are aggrieved by the Registrar’s decision to register or not register a trade mark: ss 35, 56 of the TMA. Thus, Dr Quach’s submission that the Registrar’s power to assist applicants in the filing process is an impermissible exercise of judicial power is misguided.

63    Dr Quach’s contention that judicial review principles are enlivened by his submissions are also misguided. His first hurdle is the lack of an executive decision to which to direct the review process.

64    Part 3A of the TMR establishes a process for an AFS. Its purpose is to provide a preliminary assessment of the likelihood of a successful trade mark application, prior to a formal application to the Registrar: reg 3A.1 of the TMR. The Registrar assesses the request, and should amendments be required, reg 3A.5 of the TMR provides for this process: reg 3A.4 and reg 3A.5 of the TMR. To convert a preliminary request into a formal application, an applicant must submit the request in accordance with Part 4 of the TMA and pay the prescribed fee: reg 3A.5(1)(b) of the TMR.

65    In this case, Dr Quach partially engaged with the AFS under the TMR, but did not satisfy the formal trade mark application requirements. He requested a preliminary assessment of his trade mark, which was returned with an adverse outcome. However, he failed to respond to this assessment. He did not amend the application or, crucially, file a formal application and pay the required fee. This means that Dr Quach did not lodge a formal application with the Registrar. Therefore, no formal decision by the Registrar has been made regarding Dr Quach’s application. There is no starting point for the process of judicial review.

66    As is clear from Dr Quach’s submissions he is simply under a number of misapprehensions as to what has occurred in relation to trade mark applications 2375963 and 2410434. While Dr Quach maintains that he has made an application to register trade mark 2375963, that is simply not the case. As is set out above, in relation to that application, he did no more than seek preliminary feedback.

67    Further, if Dr Quach had made an application to register trade mark 2375963, which he has not, this application would presumably be to appeal against a decision of the Registrar to reject the application, in circumstances where no such decision has been made. In those circumstances, the Court cannot consider the application as an appeal pursuant to the TMA as the necessary precondition has not been met. In that regard, s 197 of the TMA provides:

197 Powers of Federal Court and Federal Circuit and Family Court of Australia (Division 2) on hearing an appeal

On hearing an appeal against a decision or direction of the Registrar, the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) may do any one or more of the following:

(a)    admit evidence orally, or on affidavit or otherwise;

(b)    permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the Registrar;

(c)    order an issue of fact to be tried as it directs;

(d)    affirm, reverse or vary the Registrar’s decision or direction;

(e)    give any judgment, or make any order, that, in all the circumstances, it thinks fit;

(f)    order a party to pay costs to another party.

68    Furthermore, if those hypothetical circumstances did exist, even then Dr Quach does not have standing to bring a claim. The correct applicant would be Bennelong, being the applicant for trade mark 2375963. Pursuant to s 35(b) of the TMA an applicant may appeal to the Federal Court against a decision of the Registrar to reject the application. The applicant in this context, in accordance with s 6 of the TMA, is “the person in whose name the application is for the time being proceeding”.

69    With respect to trade mark 2410434, Dr Quach is also mistaken. In his affidavit of 1 July 2024 Dr Quach deposed that the Registrar “stated it intends to register elsewhere within 2 weeks, the turtle logo with BYRON BAY BEACHFRONT APARTMENTS that belongs to the Applicant”. He has misunderstood the meaning of the letter of 27 June 2024, referred to at [17] – [18] above. That letter does not indicate that the Registrar had made a decision to register the trademark or that that would occur within two weeks. Rather, it makes clear Dr Quach’s options with respect to progressing his opposition. However, it seems that he characterised it as a decision of the Registrar against which he seeks to appeal. For the same reasons as those which apply to Dr Quach’s approach to trade mark 2375963, the Court cannot consider his application as an appeal against a decision of the Registrar as the necessary precondition has not been met. Similarly, there is no starting point for judicial review.

70    In relation to trade mark 2410434, Dr Quach also lacks standing. Pursuant to s 56 of the TMA the party with the right to appeal is the “opponent”, defined in s 6 of the TMA as the person who filed the notice of opposition to the registration of the trade mark. Thus, the appropriate party in this hypothetical case is QE Family Pty Ltd. Of course, as submitted by the Registrar, and as set out above, the opposition procedure with respect to trade mark 2410434 is underway, and in the event that the opposition is successful the effect will be the same as that which would flow from the grant of an interlocutory injunction. Alternatively, should the opposition not succeed then at that point the right of appeal to the Federal Court is enlivened. However, until that point any such appeal is premature.

71    For those reasons, the application for summary judgment succeeds. Dr Quach has no reasonable prospects of success in prosecuting the proceeding.

Does the applicant have a prima facie case?

72    The first requirement which must be satisfied before interlocutory relief is granted is a prima facie case. This can be phrased as “a serious question to be tried, which if resolved in its favour, would entitle it to final relief”: Kolback Securities Ltd v Epoch Mining NL (1987) 8 NSWLR 533 at 535, per McLelland J. The Court must “assess the strength of the probability of ultimate success on the part of the plaintiff”: Samsung Electronics Company Ltd v Apple Inc (2011) 217 FCR 238; [2011] FCAFC 156 at [59], per Dowsett, Foster and Yates JJ.

73    Given my conclusions with respect to the application for summary judgment, namely that Dr Quach has no reasonable prospects of success in prosecuting the proceeding it follows that it discloses no serious question to be tried.

74    Therefore, the applicant’s submissions cannot establish a prima facie case for the purpose of interlocutory relief.

Does the balance of convenience weigh in favour of the applicant?

75    If Dr Quach was not granted injunctive relief to prevent the registration of trade mark 2410434 and to order the Registrar to register trade mark 2375963, what position would the applicant find himself in? At this stage, Dr Quach is engaged in the process under Part 5 of the TMA to oppose the registration of trade mark 2410434. No decision has yet been made to register the trade mark. Once a decision has been made by the Registrar pursuant to s 55 of the TMA, Dr Quach may appeal to the Court under s 56 of the TMA. Regarding the registration of trade mark 2375963, Dr Quach may alter the trade mark such that it conforms with the legislative requirements under the TMA, before submitting a formal application for registration under s 27 of the TMA. Once again, Dr Quach may appeal the Registrar’s decision to the Court as per s 35 of the TMA.

76    If injunctive relief were not granted, Dr Quach would remain in a position to oppose the registration of trade mark 2410434. Not granting injunctive relief means that the Court does not circumvent the legislative procedures under the TMA in breach of the limitations of judicial power, as explained above. However, should the need arise, the Court would remain available through the legislatively prescribed appeal processes: ss 35 and 56 of the TMA.

77    In contrast, should the injunctive relief sought by Dr Quach be granted, the Registrar would be put in a position where it must continue to defend court proceedings, for which no basis currently exists, whilst undertaking procedures related to opposition in ss 54 and 55 of the TMA.

78    On the balance of convenience, it would not be appropriate to grant the interlocutory injunction.

COSTS

79    In the Registrar’s oral submissions, the Registrar sought indemnity costs on the basis that Dr Quach’s case “had no prospects of success and disclosed no reasonable cause of action”. Specifically, the Registrar submitted that:

(1)    Dr Quach had been invited by the Registrar to discontinue his proceedings;

(2)    Dr Quach had been informed by the Registrar, that if he did not discontinue his proceedings, the Registrar would file an application for summary judgment;

(3)    Dr Quach had been informed that the Registrar would draw the Court’s attention to their letter, dated 16 July 2024, which was sent to Dr Quach, and evidenced the Registrar’s claims in (1) and (2) above; and

(4)    Subsequently, the Registrar was required to respond to Dr Quach’s application, which had no reasonable prospects, and has incurred costs in doing so.

80    Costs are typically awarded in accordance with r 40.01 of the FCR, which states:

40.01 Party and party costs

If an order is made that a party or person pay costs or be paid costs, without any further description of the costs, the costs are to be costs as between party and party.

Note:     Costs as between party and party is defined in the Dictionary.

81    However, in Alhalek v Quintiliani trading as Kells Lawyers (No 3) [2021] FCAFC 150, Katzmann, Derrington and Anastassiou JJ stated at [10]:

Where, however, a case has some “special or unusual feature” which would justify a departure from the ordinary course, the Court may make an order for indemnity costs. The purpose of an indemnity costs order is to compensate a party in full for their costs when the Court takes the view that it was unreasonable for the party against whom the order was made to have caused the other party to incur costs.

(Citations omitted.)

82    As a general proposition, the Courts are less likely to award indemnity costs against a litigant in person: Ogawa v The University of Melbourne (No 2) [2004] FCA 1275 at [42]. This proposition is not absolute: Ogawa at [42]. In the case of summary dismissal, indemnity costs may be awarded against a litigant in person where they have failed to demonstrate a reasonable prospect of success, accompanied by actions demonstrating an abuse of the Court’s process: Pekar v Holden (No 2) [2021] FCA 343 at [6].

83    In this case, there is no suggestion that Dr Quach has engaged in an abuse of process. Rather, it is clear that he has misunderstood the processes involved in registering and opposing trade marks.

84    I am not inclined to order indemnity costs. Despite Dr Quach’s experience in litigation, he is a litigant in person.

CONCLUSION

85    The Registrar is granted interlocutory relief in the form of summary judgment. Costs ought to follow the event.

Associate:

Dated:    03 April 2025