54.1. Subpoenas

1.1  What is a subpoena?

A subpoena is a document issued by a court, requiring the person named to attend at the court to give oral evidence and/or produce documents or other things. A subpoena requiring the person named to attend the court for the purpose of giving evidence is known as a “subpoena to give evidence”; a subpoena requiring the person named to attend the court and produce a document or thing is known as a “subpoena for production”.

Persons must comply with the requirements of a subpoena. Failure to do so will render the person liable to contempt of court. Any officer of a government department who handles a response to a subpoena must be aware that if it is incorrectly handled, they may become personally liable for contempt of court. The consequences of mishandling a subpoena were outlined in a circular from the Australian Government Solicitor issued in 1990 (see Annex A1)

A person is not bound to comply with a subpoena if the requirements are oppressive or it is served too late for compliance. This might be where the requirement is for a wide selection of files, and the time is not adequate. The subpoena, however, remains valid until it is set aside on notice of motion. (See section 54.1.4).

1.2  Service of a subpoena on the Registrar

Service of a subpoena is governed by the rules of the court from which it issues.  A subpoena issued by the Federal Court is governed by Rule 24.16 of the Federal Court Rules 2011. The Federal Circuit Court and other courts such as the various state Supreme Courts and District Courts have their own rules.

A subpoena cannot be enforced by way of contempt of court proceedings unless it has been personally served on the person named in it. A subpoena may be served on the Registrar of Trade Marks by leaving it with the Registrar or with the Deputy Registrar of Trade Marks, Trade Mark Hearings, who is authorised to accept service on behalf of the Registrar.

1.3  Form of a subpoena

A subpoena served on the Registrar of Trade Marks is almost always in relation to the production of documents held in the Trade Marks Office rather than requiring attendance to give evidence. The party requesting issue of the subpoena is required to file a copy with the court registry in the form specified in the court rules (in the case of the Federal Court, Rule 24.13 specifies Form 43B for a subpoena for production). Unless the court directs otherwise, the court registrar issues the subpoena under seal to the requesting party for service on the person named. The Registrar of Trade Marks is usually the person named in a subpoena but it is also acceptable if the subpoena is directed to “the proper officer” of the Trade Marks Office.

The subpoena must state the date and place where the Registrar is to produce the documents.  It must also specify the documents required for production.

1.4  Registrar’s response to a subpoena

An officer responsible to the Deputy Registrar, Trade Mark Hearings, will co-ordinate the response to a subpoena for production taking into account the matters set out in the subpoena including the following:

1.4.1  Time for compliance

The subpoena will state the date by which the documents must be produced.  A person is not bound to comply with a subpoena which is served too late for compliance, but it will remain valid until set aside by the court. Therefore prompt action should be taken if there is insufficient time for compliance and the party which requested the subpoena may be contacted to negotiate a later date.  Or it may be necessary to instruct the Australian Government Solicitor to appear in court to explain the circumstances or to file a notion of motion to have the subpoena set aside.

1.4.2  Specification of documents

The subpoena must specify the documents required for production. A person may not be bound to comply with a subpoena which is oppressively widely drawn so that compliance would be difficult or require diversion of substantial resources. An example of oppressive width would be “all documents referring to” a trade mark application or registration. This might include, for example, all publications which refer to the application or registration, or any examiner reports which cite the application or registration against other trade mark applications. Location of such material would be very time-consuming, if not impossible.  In such cases the officer may contact the party which requested the subpoena to clarify precisely what documents are being sought and if appropriate negotiate a reduction in the scope of the subpoena.  Or the Australian Government Solicitor may be instructed to conduct the negotiations on the Registrar’s behalf.

Other issues which may need to be considered include:

• whether certified copies of original documents are appropriate and acceptable
• whether and how much conduct money is payable.  

PLEASE NOTE: Conduct money is money paid by the party which requested the subpoena to cover expenses incurred by the Registrar in producing the documents to the court.

The officer will advise the Deputy Registrar whether there are likely to be any difficulties in complying with the subpoena and whether it is necessary to consult the Australian Government Solicitor to decide the appropriate method of proceeding.  If the matter is straightforward the officer will retrieve the requested documents and send them or certified copies together with any other material identified in compliance with the subpoena to the court which issued the subpoena.  It is the Registrar’s practice to ensure the documents are received at the court registry at least two days before the set return date.  If any matters need to be explained to the court, the Australian Government Solicitor may be instructed to arrange delivery.  Otherwise the documents may be sent directly to the court using a commercial courier such as Toll. To assist the courier with delivery the contact phone number at the court registry which was nominated in the subpoena should be clearly identified in the covering letter.

PLEASE NOTE: A record of matters before the court is kept in the document “Court Matters and Suspensions” which is currently stored at G:\HEARINGS\COURT MATTERS & SUSPENSIONS\Active.  Relevant statistics are stored at G:\Hearings\Stats.