54.2. Summonsing a witness

A witness may appear in proceedings before the Registrar as a result of:

• the Registrar issuing a summons following a request by one of the parties in an inter partes matter;
• the Registrar issuing a summons of his or her own volition; or
• an arrangement with the party or the parties, without the necessity for the Registrar to issue a summons

Section 202 of the Trade Marks Act 1995 provides authority for the Registrar to summon witnesses in order to give oral evidence but she is unlikely to issue a summons of her own volition. Sections 8(2) and 9(2) of the Trade Marks (Means and Form of Filing Documents and Evidence) (Opposition and Other Proceedings) Instrument 2019 require that evidence given in writing must be in the form of a declaration. The Registrar will generally accept the contents of a declaration at face value unless there is evidence to the contrary. The comments of Lord Evershed in dealing with an application to cross-examine declarants in Kidax Ltd’s Application [1959] RPC 167 are relevant. His Lordship said at p 175:

“the registrar will normally deal with these matters on this paper evidence and that a party seeking to supplement such paper evidence - either by cross- examining a deponent or otherwise - has a substantial onus of proof to discharge. As a matter of administrative necessity, if for no other reason, it would no doubt be impossible for the Registrar to do other than deal with these cases as best he can, by and large, on this written material.”

There is also the cost and inconvenience involved in requiring a witness to attend before the Registrar. Generally the evidence filed in the proceedings establishes the facts and there is nothing more than conflict as to the interpretation of those facts, or the application of law to those facts. In those circumstances, there is no compelling reason to summons a witness. If the Registrar is not convinced that there is a very good purpose to be served she will not summons a witness. (See, for example, American Cyanamid Company v Nalco Chemical Company (1992) 24 IPR 131 in which a delegate of the Commissioner of Patents refused to issue a summons under section 210 of the Patents Act, the equivalent provision to section 202 of the Trade Marks Act.)  It is usually only where there is contradictory evidence, and it appears that the conflict on facts, as opposed to opinions, could be resolved or clarified by taking oral evidence, that the Registrar will issue a summons.

In deciding whether to issue a summons, the Registrar must consider whether the summons is being sought “for the purposes of this Act”. Therefore he or she must consider whether the summons is relevant and the cross-examination is likely to affect the outcome of the matter in suit. The question of relevance was judicially considered in respect of the exercise of a discretionary power under section 210 of the Patents Act. (See GS Technology Pty Ltd v The Commissioner of Patents (1997) 39 IPR 583.) The appropriate test to apply is one of adjectival rather than substantive relevance and the Registrar is therefore required to decide whether summoning the witness could be relevant rather than would be relevant

If the Registrar intends to refuse a request to summons a witness, the person who made the request has a right under section 203 to be heard on the matter. However there is no provision in the Act for a person to object to the issue of a summons, nor is there a requirement under natural justice for the Registrar to give the other party an opportunity to comment. (See Structureco Inc v Registrar of Trade Marks [2003] FCA 1290.) Any objections he or she might have to the summons could be argued as a “reasonable excuse” for non-compliance with the summons, as per section 153 (see part 54.2.3.1 below).

2.1  Form of summons

A typical summons is drawn up as shown in Annex A2 to this part. Although not a requirement, it should be accompanied by copies of sections 202, 153 and 154 of the Act - to inform the person being summoned of the Registrar’s powers in relation to summonses, and of the penalty that may be incurred through failure to comply with the summons. Since the summons must specify the date, time and place of the hearing, it can only be drawn up once the hearing has been set.

2.2 Service of summons

Normally, service of the summons is the responsibility of the requesting party, and the Registrar will forward the summons to the requesting party for service to be effected. The summons must be served on the person in sufficient time to enable them reasonably to make arrangements to attend the hearing.

The party serving the summons is to advise the Registrar of the date of service of the summons as soon as practicable after its service.

2.2.1  Payment of reasonable expenses of person summonsed

The person being summonsed must be offered payment of a reasonable sum for expenses.

• Division 1 of Part 2 of Schedule 8 to the Regulations specifies the expenses for travel and accommodation to which a person attending proceedings before the Registrar may be entitled.
• In addition items 3 and 4 of Division 2 of Part 2 of Schedule 8 specify the minimum allowances which must be paid to persons summoned to appear before the Registrar, as either expert or non-expert witnesses.

Where the summons is made on the request of a party, the Registrar will expect that party to make the necessary offer and arrangements for payment of reasonable expenses. The Registrar has no power to enforce payment of moneys. The enforcement of contractual agreements is a matter for the courts.

2.3  Non-compliance with summons

The failure of a witness to appear is the subject of section 153(1) of the Act, which provides

“A person:

a. who has been summoned to appear as a witness before the Registrar:

and

b. to whom a reasonable sum has been tendered in payment for expenses;

must not fail to appear in answer to the summons.

Penalty: 10 penalty units.¹”

Section 153(2A) provides that a person must comply with a summons unless there is a “reasonable excuse” for not doing so.

2.3.1  Reasonable excuse for non-compliance with summons

There is no definition of a “reasonable excuse” in the Act. However, a reasonable excuse may be that the person has not been offered payment of reasonable expenses (see part 54.2.2.1 above). If a person does not comply with a summons on the ground that no offer of reasonable payment of expenses has been made, it will be up to the person requesting the summons to counter this, by demonstrating to the Registrar that a reasonable and contractually binding offer was made.

Failure to serve the summons in sufficient time for the person to arrange attendance at the hearing might also be a reasonable excuse for non-attendance. Or, a person summoned may argue that the cross-examination will not serve a purpose under the Act and the issues are not relevant, or arguably relevant, to the determination of the proceedings.

Where a summons is not complied with, and the Registrar is not satisfied there is a reasonable excuse, the matter may be referred to the Director of Public Prosecutions for action with regard to the penalty provisions of section 153.

2.4  Manner of taking evidence

Section 202(b) allows the Registrar to take evidence on oath or affirmation and section 154 provides that it is an offence of strict liability² for a person appearing as a witness before the Registrar to refuse to be sworn or make an affirmation.

An oath may be taken in such form and with such ceremonies as the person taking it declares to be binding on him or her. If the witness feels that an oath would not be binding, or if religious considerations prevent him or her from making an oath, they may make an affirmation.

Certain evidence may be taken unsworn; eg from a child, or from a person doing no more than presenting a document in answer to a subpoena, or an advocate giving evidence of a compromise reached by the parties.

The forms of “oath” and “affirmation” are those used by the ACT Supreme Court.

2.5  Examination of witness

If a witness has been summoned to appear before the Registrar, it will usually be for the purpose of testing the credibility of the witness and the accuracy and completeness of declarations that the witness has put in evidence.  This rarely occurs in proceedings before the Registrar. It is more common in proceedings before the Commissioner of Patents and a guide to the examination of witnesses is contained within the internal Patent Office publication Conducting a Hearing: a best practice guide Conducting a Hearing: a best practice guide.

It is an offence under section 154 for a witness to refuse to answer questions that he or she is lawfully required to answer, or to fail to produce any document or thing he or she is lawfully required to produce.  In such cases the Registrar may refer the matter to the Director of Public Prosecutions.

¹ The Reader's Guide to the Trade Marks Act 1995 refers to the information about penalties in the Crimes Act 1914. Under section 4AA of the Crimes Act 1914. The penalty unit is subject to indexation every 3 years commencing 1 July 2018. Under subsection 4B(3) of the Crimes Act 1914, a court may impose a fine 5 times this amount if the "person" is a body corporate.

² The definition of "an offence of strict liability" is provided by section 6.1 of the Criminal Code. The Criminal Code is contained in the Schedule to the Criminal Code Act 1995.