Federal Court of Australia

Village Roadshow IP Pty Ltd v VUR Village Trading No 1 Limited [2025] FCA 428

ORDERS

THE COURT ORDERS BY CONSENT THAT:

1.    The appellant’s appeal be allowed in respect of Australian trade mark numbers 596854 and 596855 and allowed in respect of Australian trade mark number 596853 (as amended pursuant to order 4(a) of the orders in this proceeding dated 23 September 2024, being the Amended Specification).

2.    The decision of the Registrar of Trade Marks by her delegate, Mr Nicholas Smith, dated 12 September 2023, be set aside insofar as it relates to Australian trade mark numbers 596854 and 596855 and the Amended Specification for Australian trade mark number 596853.

3.    The notice of cross-appeal dated 24 October 2023 be dismissed.

4.    The parties each bear their own costs of this proceeding.

5.    The appellant is directed to provide a copy of these orders to the Registrar of Trade Marks forthwith.

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

REASONS FOR JUDGMENT

O’CALLAGHAN J

1    I made the order set out above in this proceeding this morning. These are my reasons.

2    The respondent, VUR Village Trading No 1 Limited, brought non-use actions before the Registrar of Trade Marks pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (Trade Marks Act) against registrations by the appellant, Village Roadshow IP Pty Ltd, for the following Trade Mark

in classes 9, 35 and 41 (each a VRIP Registration) after those marks were cited against its own trade mark application. The non-use period was from 6 August 2016 to 6 August 2019.

3    The Registrar’s delegate determined that the Trade Mark had not been used in respect of any of the goods in the class 9 VRIP Registration and had not been used in respect of certain services in the class 35 and 41 VRIP Registrations during the non-use period. The Registrar declined to exercise the discretion under s 101(3) of the Trade Marks Act, resulting in orders for the removal of the class 9 VRIP Registration and the partial removal of the class 35 and 41 VRIP Registrations.

4    Village Roadshow appealed to this court from the Registrar’s decision in respect of the goods and/or services which had been removed, and VUR Village cross-appealed from the Registrar’s decision in respect of the goods and/or services which had been retained.

5    On the eve of the trial, which was scheduled to commence last Monday, 28 April 2025, the parties informed the court that they were endeavouring to negotiate a settlement of the proceeding. Accordingly, I adjourned the further hearing of the proceeding until today, 1 May 2025.

6    Yesterday, I was informed by the parties that they had reached a settlement and that they consented to the making of orders that Village Roadshow’s appeal be allowed, and that VUR Village’s cross-appeal be dismissed.

7    I was also informed that the Registrar, having been asked jointly by the parties whether she had any objections to or intended to oppose the orders sought by the parties, wrote to the parties saying that she “does not see any obstacle in the way to proceeding with the proposed court orders”.

8    Village Roadshow, which as I have said was the opponent to the non-use application by VUR Village, contended that it was appropriate to make the orders by consent without a hearing on the merits.

9    In Hungry Spirit Pty Limited ATF The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2020] FCA 883, Burley J faced a similar situation. His Honour was told the matter had been settled and was asked to make consent orders allowing the appeal, setting aside the decision of the Registrar’s delegate that the trade mark be removed for non-use and allowing the trade mark to remain registered for all relevant goods and services, despite the decision of the delegate. As in this case, the Registrar had no objection to the orders sought by the parties being made.

10    It was in those circumstances that Burley J requested that the appellant file written submissions in support of the orders sought.

11    Consistent with his Honour’s approach, in this case Village Roadshow volunteered the filing of written submissions in support of the orders that were sought by consent.

12    In my view, although Burley J did not say so in terms, the principal reason why it is appropriate to require such submissions is that the court needs to be satisfied that orders which have the effect of reversing a decision of the Registrar without a hearing on the merits do not undermine the integrity of the Register of Trade Marks.

13    As French CJ, Gummow, Heydon and Bell JJ said in Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590 at 597 [22]:

[T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have “integrity” and that it be “pure”. It is a “public mischief” if the Register is not pure, for there is “public interest in [its] purity”. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.

(Citations omitted.)

14    The particular provisions in the Trade Marks Act providing for the removal of unused trade marks from the Register are designed to protect its integrity and, in this way, the interests of the consumer. See Austin Nichols & Company Inc v Lodestar Anstalt (No 1) (2012) 202 FCR 490 at 498 [38] (Jacobson, Yates and Katzmann JJ).

15    In Hungry Spirit, Burley J summarised the operation of the statutory scheme in relation to the filing of applications for the removal of trade marks from the Register (including for non-use), as follows (emphasis in original):

8    The Registrar is obliged to give notice of an application under 92, including by advertising the application in the Official Journal: s 95. The application for removal may be referred by the Registrar to a prescribed court for determination: s 94. That step was not taken in this case. Any person may oppose an application for removal by filing a notice of opposition with the Registrar in accordance with the regulations and within the prescribed period: s 96. If the application for removal is unopposed, or the opposition has been dismissed, the Registrar (or the court, if the application is referred to it) must remove the trade mark from the Register in respect of the goods and/or services specified in the application: s 97. If the application is opposed, the registrar must deal with the opposition in accordance with the regulations: s 99. The Trade Marks Regulations 1995 (Cth) provide that the applicant must file a notice of intention to defend the application, if a notice of intention to oppose the application is filed: reg 9.15. If a notice of intention to defend is not filed within the period required, the Registrar may decide to take the opposition to have succeeded, and refuse to remove the trade mark from the Register: reg 9.15(3).

9    Section 100(1) provides that it is for the trade mark owner (as the opponent to the non-use application) to rebut any allegation that the trade mark has not been used or was not intended to be used.

10    Section 101(1) provides that if the proceedings have not been discontinued or dismissed, and the Registrar is satisfied that the grounds on which the application was made have been established the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates. Section 101(2) similarly provides that if, at the end of the proceedings relating to the opposed application the court is satisfied that the grounds on which the application was made have been established the court may order the Registrar to remove the trade mark from the register in respect of all or some of the goods or services to which the application relates. However, the Registrar (or the court) may elect not to effect any removal if she (or the court) is satisfied that it is reasonable to decline to do so: s 101(3), (4).

11    If the application is determined by the Registrar (or her delegate) an appeal lies to this Court or the Federal Circuit Court from the decision: s 104. It is by that route that the present appeal is before the Court. As a hearing de novo, the Court stands in the shoes of the Registrar to consider afresh whether or not the non-use application should be allowed. Accordingly, although in its submissions Hungry Spirit drew specific attention to s 101(2), it is the language of s 101(1) that is directly applicable.

16    Justice Burley explained (at [13]) the nature of the appeal to the court as being a hearing de novo in which the court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to correct error in an executive decision, but to deal with a controversy for the first time. Having done so, his Honour continued:

14    The [Trade Marks] Act and Regulations make clear that it is the applicant for removal that remains the moving party, despite the fact the appeal was initiated by Hungry Spirit and despite the reversal of onus effected by s 100. In this regard it is significant that the applicant is obliged to file a notice of intention to defend. If it does not do so, then the opposition may be taken to have succeeded and the removal application will fail. Whilst Hungry Spirit was obliged to file a notice of appeal in this Court, because it did not succeed before the delegate, the substantive moving party in the proceeding remained Fit n Fast, as the applicant for removal.

15    Further, s 101(1) requires the Registrar to be satisfied that the grounds upon which the non-use application was made have been established. Accordingly, despite the reversal of onus, ultimately it is for the applicant for removal to persuade the Registrar of the appropriateness of any order made.

16    In these circumstances, it is apparent that despite the different scheme set out in the Act and Regulations, the application for non-use must be initiated and prosecuted by the non-use applicant. The position is analogous to that which I considered in Hungry Spirit 1.

17    In the present case, Fit n Fast and Hungry Spirit have reached a compromise, with the consequence that Fit n Fast no longer wishes to prosecute its application for non-use. Hungry Spirit maintains its opposition to the non-use application. Were that to have been the position before the delegate of the Registrar, she could pursuant to reg 9.15 have moved, in effect, to dismiss the application for non-use. Having been notified of the parties’ position, the Registrar does not oppose the orders sought, which will remove the limitation placed on the designation of goods and services. Furthermore, having regard to my consideration of the reasons given by the delegate, I can see no self-evident reason why, in these circumstances, the orders should not be made.

17    Justice Burley’s reasoning in Hungry Spirit was adopted and applied by Thawley J in Seven Network (Operations) Limited v 7-Eleven Inc [2023] FCA 608 at [23]–[27].

18    In my view, it is appropriate to make the orders sought in this case for the following reasons.

19    First, as in Hungry Spirit and Seven, VUR Village, which had been successful before the delegate, consents to the making of the orders, the effect of which is that the substantive orders made by the delegate are to be set aside.

20    Secondly, the Registrar does not oppose, or “does not see any obstacle in the way” of, the orders.

21    Thirdly, the fact that the delegate found that the Trade Mark was not used for some goods and/or services during the non-use period, and also declined to exercise the statutory discretion to allow the Trade Mark to remain registered for such goods and/or services in any event, is not a bar to the court allowing Village Roadshow’s appeal.

22    Fourthly, it was accepted by VUR Village that the evidence that was proposed to be called by Village Roadshow at the hearing before me is different to that which was put before the delegate, and no party now contends that the discretion to allow the Trade Mark to remain registered should not apply in favour of Village Roadshow. In those circumstances, it is difficult to see what bearing the decision of the delegate could have had on the outcome of the appeal.

23    It is therefore appropriate to make orders the effect of which is to reverse the decision of the Registrar’s delegate, without a hearing on the merits.

Associate:

Dated:    1 May 2025