Federal Court of Australia

Quach v Registrar of Trade Marks [2025] FCA 1544

ORDERS

THE COURT ORDERS THAT:

1.    The Proprietors of Strata Plan 48462 be joined as a respondent to the proceedings.

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

REASONS FOR JUDGMENT

DERRINGTON J:

1    By an Interlocutory Application filed on 5 November 2025, the Proprietors of Strata Plan 48462 (the Proprietors) seek to be joined as a respondent to proceedings brought by the applicant, Dr Quach, which is an appeal from a decision of the Registrar of Trade Marks (the Registrar) dated 5 August 2025 (the Decision). The dispute which underlies the Decision is not uncomplicated. That said, on the evidence presently before the Court, it appears to be the case that:

(1)    on 21 December 2023, Medcraft Pty Ltd filed a trade mark application pursuant to s 27 of the Trade Marks Act 1995 (Cth) (the Act). The subject of that application related to the words “Byron Bay Beachfront Apartments” with a stylised logo of a turtle (TM434).

(2)    on 27 May 2024, QE Family Pty Ltd (QE Family), as trustee for the Qe Tai Sing Family Trust, filed a Notice of Intention to Oppose the registration of TM434.

(3)    on or about 5 June 2024, TM434 was purportedly assigned to the Proprietors (who then, some two months later, filed a Notice of Intention to Defend on 31 July 2024).

(4)    on 5 August 2025, a delegate of the Registrar determined that QE Family had failed to establish any of the grounds of opposition and, therefore, concluded that the application for the registration of TM434 could proceed (pursuant to s 55 of the Act).

(5)    on 1 September 2025, being 27 days after the Decision, Dr Quach filed an application for an extension of time in which to appeal from the Decision pursuant to rule 34.25 of the Federal Court Rules 2011 (Cth) (the Rules). Such application named the Registrar as the relevant respondent and, contrary to the requirements s 56 of the Act, named Dr Quach as the applicant (i.e., the relevant “opponent” instead being QE Family).

2    On 1 October 2025, a Registrar of the Court conducted a case management hearing as between Dr Quach and the Registrar. A further hearing was conducted two weeks later, on 15 October, where orders were made requiring any interested party to file an application for joinder.

3    On 5 November 2025, the Proprietors filed such an application. Albeit not explicitly referenced in the application, it sufficiently appears that the Proprietors apply under rule 9.05 of the Rules; they also seek leave to appear unrepresented (noting the requirements of rule 4.01(2)).

4    Rule 9.05 of the Rules is drafted in the following terms:

9.05    Joinder of parties by Court order

(1)    A party may apply to the Court for an order that a person be joined as a party to the proceeding if the person:

(a)     ought to have been joined as a party to the proceeding; or

(b)     is a person:

(i)     whose cooperation might be required to enforce a judgment; or

(ii)     whose joinder is necessary to ensure that each issue in dispute in the proceeding is able to be heard and finally determined; or

(iii)     who should be joined as a party in order to enable determination of a related dispute and, as a result, avoid multiplicity of proceedings.

(2)     A person must not be added as an applicant without the person’s consent.

(3)     If a person is joined as a party under this rule, the start date of the proceeding for the person is the date on which the order is made.

(4)     An application under subrule (1) need not be served on any person who was not served with a copy of the originating application.

    Note:     The Court may make an order for any of the following:

(a)    service of the order and any other document in the proceeding;

(b)    amendment of a document in the proceeding;

(c)    the filing of a notice of address for service by a party.

5    The anomaly which is sometimes said to exist in rule 9.05 – being that only a “party” to the proceedings can apply to join a person who is a non-party to the proceedings: McAlister v New South Wales (2014) 223 FCR 1, 4 [14]; Kadam v MiiResorts Group 1 Pty Ltd [2016] FCA 1205 [13] (Kadam): is of no relevance in the present case given the overriding operation of rules 1.32 and 1.35 of the Rules. It is accepted that a joinder application might be initiated by a non-party in reliance upon the Court’s power under rule 1.32 (to make any order that it “considers appropriate in the interests of justice”) and, in such a case, the “same constraints and conditions as are required by r 9.05 have been treated as generally applicable”: Karellas Investments Pty Ltd v FW Projects Pty Limited (in liq) [2021] FCA 870 [31], citing Kadam [13] – [19].

6    In this case, I am prepared to accept that the Proprietors are entitled to make an application for joinder under rules 1.32 and 1.35 of the Rules, or that, in any event, the application is supported by the Registrar (being a party to the proceedings).

7    Clearly enough, it is right and proper that the Proprietors be made a party to the relevant appeal. They are, as a matter of fact, the parties in whose favour the Decision was made; at that level, they successfully obtained an order that their application as to TM434 proceed to registration. Naturally, if the arguments raised against the Decision on appeal are successful, the Proprietors will lose the benefit of that order. I say that not overlooking the fact that an appeal commenced under s 56 of the Act is an appeal by way of rehearing de novo, where all issues will be ventilated: Gen-Probe Incorporated v Beckamn Coulter [2022] FCA 194 [20], citing Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 376 – 377 [32] – [33].

8    Nonetheless, it is rather pellucid that the Proprietors, who are notionally at least, if not actually, the trademark applicants (and thereby have an interest in the proceedings), are the party that is directly affected by Dr Quach’s opposition. Indeed, they also are the party in respect of whose premises the trademark is said to apply (i.e., a beachfront unit development at Byron Bay). In those circumstances, it is difficult to conceive as to why they ought not be joined to the appeal as the proper respondent: rule 9.05(1)(a). Indeed, it is necessary that they be so joined, because the issues in dispute will not be able to be finally determined without them: rule 9.05(1)(b)(ii).

9    Therefore, an order should be made joining the proprietors as a respondent to the proceedings.

10    I make that order in the knowledge, as advised to me by Ms Leonard, on behalf of the Registrar, that in doing so, the Registrar will file a submitting appearance and otherwise not take a further active part in the proceedings. Bearing in mind rule 34.23 of the Rules, that is most appropriate.

11    I note, by way of passing, some difficulties stand in the way of a hearing of the appeal of the Decision. For instance, and as noted at supra [1(5)], is the fact the application for an extension of time was filed by Dr Quach in his personal capacity. But that is a matter for another day.

Note

12    These are the amended and revised reasons for judgment given on 3 December 2025. Whilst the reasons given above refine and develop those that were delivered ex tempore, the substance of what was said that day has not been changed nor has any other material change been made.

Associate:    

Dated:    8 December 2025