52.5. Rights of appeal from decisions of the Registrar

5.1  Appeal to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2)

The Federal Court and the Federal Circuit and Family Court of Australia (Division 2) have jurisdiction to hear and determine appeals against decisions, directions or orders of the Registrar (sections 191 and 191A). The statutory rights of appeal to the courts are specifically set out in the relevant sections of the Trade Marks Act 1995 viz. sections 35, 56, 67, 83(2), 83A(8), 84D and 104 and the Trade Mark Regulations viz. reg 17A.26, 17A.34P, 17A.42F. If the Act does not specify a right of appeal to the Federal Court, the Federal Circuit and Family Court of Australia (Division 2), or the Administrative Review Tribunal (see manual section 5.2) the only alternative avenue is under the Administrative Decisions (Judicial Review) Act (see Manual Section 5.3).

Appeals from Registrar’s decisions may be made to the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) in respect of:

• the rejection of an application, or the decision to accept it subject to conditions or limitations (section 35),
• a decision in an opposition matter to register a trade mark, with or without conditions or limitations, or to refuse it (section 56),
• a decision on a request for amendment of the application to register a trade mark or of another document (section 67),
• a decision on a request to amend the particulars of a trade mark entered in the Register (secton 83),
• a decision on a request to amend the particulars of a trade mark entered in the Register to achieve consistency with international agreements (section 83A),
• a decision to revoke registration under section 84A (section 84D),
• a decision in an opposed removal application (section 104),
• the rejection of an IRDA, or the decision to accept it subject to conditions or limitations (reg 17A.26),
• a decision in an opposition matter to refuse or extend protection to an International Registration Designating Australia (reg 17A.34P)
• a decision to exercise or not exercise a power to amend or cease protection of a protected international trade mark (reg 17A.42A)
• a decision to exercise or not exercise a power to amend or cease protection of a protected international trade mark for non-use (reg 17A.48D and 17A.48X)

Such an appeal is not an appeal merely to decide whether the decision of the Registrar can be supported but a complete re-decision, on the material before the court, of the entire question. The appeal is in the nature of a de novo hearing.

The Metro case (Registrar of Trade Marks v Woolworths (1999) 45 IPR 411) confirmed that this established practice under the 1955 Act is maintained under the 1995 Act.

In the Metro case Justice French noted that "(t)he Court is entitled, on hearing an appeal against a decision or direction of the Registrar, to admit further evidence, to permit examination and cross-examination of witnesses, to order issues of fact to be tried as it directs, to affirm, reverse or vary the Registrar’s decision or direction and to give any judgment or make any order that in all the circumstances it thinks fit."  He noted further that because the appeal is in the nature of a re-hearing, "(t)here is therefore no presumption in favour of the correctness of the Registrar's decision save that weight will be given to the Registrar's opinion as that of a skilled and experienced person."

An appeal to the Federal Court or Federal Circuit and Family Court of Australia (Division 2) must be instituted within 21 days after the date of the decision appealed from (or within such further time as the Court allows on application - see Manual Section 5.5).

5.2  Review by the Administrative Review Tribunal

The Trade Marks Act 1995 specifically provides for application for review by the Administrative Review Tribunal (the ART) in the following trade mark matters:

• Refusal by the Registrar to grant an extension of time under the terms  of section 224. An unsuccessful applicant for an extension can seek a review of the refusal (section 224(7)).  (See for example Gracey v Registrar of Trade (2000) AIPC 91-565)
• A decision by the Australian Competition and Consumer Commission in relation to a certification trade mark:
  • not to give a certificate as to the competence of the certifying body, or the appropriateness of the rules (section 175(5)), or
  • to approve, or not to approve, a subsequent variation of the rules governing the use of a registered certification trade mark (section 178(5)), or
  • to refuse consent to the assignment of a registered certification trade mark (section 180(4)).
• A decision by the Registrar to dismiss an opposition because a statement of grounds and particulars is inadequate, or to delete material from a statement of grounds and particulars (section 99A, subregs 5.8(6), 17A.34B(6)).

A review by the ART leads to a full re-decision of the matter on its merits. The tribunal stands in the shoes of the original decision maker and can exercise all of the powers open to that person. Additional evidence can be admitted. Where a right to review by the ART exists, it is not confined to the parties who were involved in the matter leading to the decision concerned any person whose interests are affected by the decision can request to be made a party.

The time limits for requesting a review by the ART are set out in s 18 of the ART Act. In general, the request must be filed at the ART within 28 days commencing on the date of receipt of the document setting out the decision, but the time may be extended.

A delegate who, after complying with section 203, refuses an extension of time under section 224 must also comply with section 227. Section 227 requires that notice of a decision that is reviewable by the ART be given to any person affected by it and that the notice must include a statement that application may be made to the ART for review.

5.3  Review under the Administrative Decisions (Judicial Review) Act 1977

Review of any decision of an administrative nature is available under the Administrative Decisions (Judicial Review) Act 1977, (the AD(JR) Act). Therefore, in addition to any specific rights of appeal under the Trade Marks Act to the Federal Court and the Federal Circuit and Family Court of Australia (Division 2) or to a review of the decision in the ART, a “person aggrieved” by a decision of the Registrar may seek a review of that decision in the Federal Court or the Federal Circuit and Family Court of Australia (Division 2) under the AD(JR) Act.

For example, review of a decision of the Registrar to allow an extension of time for filing notice of opposition to registration of a trade mark might be sought by the applicant for registration (see Lyons (trading as Mitty’s Authorized Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416). Review of a decision to refuse such an extension might be sought by a prospective opponent (see Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks (1987) 7 IPR 551 and Chiron Corporation v Registrar of Trade Marks (1998) 42 IPR 75).

A review under the AD(JR) Act, though conducted in the Federal Court or the Federal Circuit and Family Court of Australia (Division 2), is not a re-examination of the matter. It is not a review of the merits of the decision but goes, briefly and in general terms, to the compliance with procedures under the legislation, provision of procedural fairness and to the availability of evidence on which to base the decision. If the court finds a decision of the Registrar is contrary to law it will not substitute its own decision but may set aside the Registrar’s decision and refer it back to the person who made the decision for reconsideration in accordance with the law (see for example, GS Technology Pty Ltd v Commissioner of Patents (1997) 39 IPR 583).  The court has powers to make orders remedying consequences flowing from an unlawful administrative decision that it proposes to set aside, see British Sky  Broadcasting Limited v Registrar of Trade Marks [2002] FCA 1556 at 47.

The normal time for applying for review to the Federal Court under the AD(JR) Act is 28 days after receipt of the decision.

5.4 Role of the Registrar in an appeal

According to Rule 34.23 of the Federal Court Rules, the Registrar may appear and be heard in any proceedings, but is not a party to proceedings other than an appeal which is (a) from a decision of the Registrar and (b) in which there is no party in opposition to the party bringing the appeal.

In an appeal to the Federal Court from a decision of the Registrar in an ex parte matter, the Registrar is clearly a party to the appeal. Similarly, if an application is made to the ART or to the Federal Court or Federal Circuit and Family Court of Australia (Division 2) under the AD(JR) Act for review of a decision of the Registrar or a delegate in an ex parte matter, the Registrar or the delegate is a party to proceedings before the Tribunal or the Court and will appear or be represented.  In either forum the Registrar will articulate the merits of the matter and the law applicable but will avoid defending the decision in a partisan manner.  See Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551 at 5, and Philmac Pty Ltd v Registrar of Trade Marks (No 2) [2003] FCA 207 at 12.

Opposition matters, by definition, involve two parties and thus the Registrar is not required to be joined as a party to an appeal from such a decision. However, section 196 of the Act provides that the Registrar may appear and be heard at the hearing of an appeal to the Federal Court or the Federal Circuit Court against a decision or direction of the Registrar and this applies even when there is a party in opposition. (See comments of Finkelstein J in Malibu Boats West, Inc v Catanese (2000) AIPC ¶ 91-605).

Normally the Registrar would not participate in inter partes proceedings.  See for example The Queen v. Australian Broadcasting Tribunal; ex parte Hardiman [1980] HCA 13; (1980) 144 CLR 13, the source of the Hardiman principle.  

There may be instances where it is appropriate for the Registrar to attend in the capacity of a Friend of the Court (Amicus Curiae).  While this would rarely be the case, it may be appropriate where, as in the Malibu case (supra), the party in opposition did not appear. Justice Finkelstein approved the Registrar's appearance noting that:

"(t)his was a proper course for the Registrar to take. Often the Court is greatly assisted by the appearance of the Registrar in such circumstances. It is to be expected, as has occurred in this case, that the Registrar will make submissions in a non-partisan fashion."

See also Advantage-Rent-A-Car Inc v  Advantage Car Rental Pty Ltd [2001] FCA 683 at 23 – 32.

5.5  Notice of Federal Court Appeals

Rules 34.24 and 34.25 of the Federal Court Rules provide that a decision of the Registrar may be appealed within 21 days - extendible under the Court Rules. Notice of appeal must be served on the Registrar within 5 days of the day on which the notice of appeal is filed (Rule 34.24(3)). The appellant, not the Registrar, will bear the responsibility for any consequences of the delay in serving the notice on the Registrar.

The Federal Court Rules require the Registrar to file at the appropriate court registry, "the documents necessary for the hearing that are in [the Registrar's] possession, and a list of the documents” (Rule 34.30). These will generally be the materials relied upon in the making of the decision. The Registrar must also give each party to the appeal written notice that the documents have been filed.

A period of 14 days is allowed for this, starting from the date on which the notice of appeal is served on either the Registrar or the Deputy Registrar, Oppositions and Hearings Section.

In practice though the general approach is to advise the appropriate court registry of the evidentiary material that was before the Hearing Officer and that it is available to the court on request. This reduces the handling of often times voluminous amounts of evidentiary material filed and served during the course of the opposition proceeding. However, a certified copy of the decision, certified copy of the trade mark application or registration and certified copy of the original notice of opposition document is filed at the appropriate court registry.

No other members of staff are authorised to accept service of the notice of appeal, and service will not have been effected until the copy reaches either the Registrar or the Deputy Registrar of Trade Marks & Designs, Hearings and Opposition Section.  

While the Trade Marks Office will endeavour to act on copies of the notice of appeal provided by electronic means, the original should be filed as soon as possible. If the notice is to be served by post (which may take longer), the appropriate address is: PO Box 200, Woden, ACT 2606.

5.6  Filing a Notice of Appeal at the Federal Court

Rule 1.61(5) of the Federal Court Rules makes provision for the exclusion of a period of time in any given year from 24 December to 14 January of the following year in respect to the calculation of time.

Unless otherwise varied by way of an order from the Federal Court, a delegate of the Registrar (who issues a decision) and officers in the Hearings Support Team, (who give effect to that decision) are to have regard to the provisions of Rule 1.61(5) of the Federal Court Rules to avoid the premature finalisation of a decision that:

• has an appeal period which falls in part or completely within the time specified in Rule 1.61(5) of the Federal Court Rules and
• is appellable to the Federal Court under Parts 33 or 34 of the Federal Court Rules.

Similarly the timeframe for compliance by:

• the appellant under Rule 34.24 of the Federal Court Rules concerning service of the Notice of Appeal on the Registrar (and respondent(s) to the appeal) and
• the Registrar of Trade Marks under Rule 34.31 of the Federal Court Rules concerning the filing of documents (or certified copies of documents) in the appropriate Court Registry and written advice to the parties to the appeal

should also been taken into account by the Deputy Registrar in Oppositions and Hearings during this period of time.