defendant. The Tribunal affirms the decision under review. ASIC was required to register the business name 'Dementia Australia' to Dementia Australia Ltd once satisfied that the requirements of section 24(1)...
Key principles
Section 24(1) of the Business Names Registration Act 2011 (Cth) imposes a mandatory obligation on ASIC to register a business name when satisfied of the criteria in paragraphs...
The definition of 'available' in section 3 of the Act operates disjunctively, such that a business name is available if it satisfies either section 25 or section 31(3), not both;...
Section 31(3) of the Act deems a business name 'taken to be available' to an applicant where the registered holder consents to the transfer and requests cancellation of its own...
Section 24(4) does not confer a broad discretion on ASIC to refuse registration in all circumstances; rather, it operates in the context of section 24(3) to address situations...
Issues before the court
Whether the business name 'Dementia Australia' was 'available' to be registered to Dementia Australia Ltd under section 24(1)(c) of the Business...
Plain English Summary
This case concerned whether ASIC could register the business name 'Dementia Australia' to Dementia Australia Ltd when Alzheimer's Association of Queensland already held the same name. The Tribunal found that the Business Names Registration Act creates two separate ways for a name to become 'available': either it is not identical to any existing name (section 25), or it is being transferred with consent from the current holder (section 31). Because the South Australian holder consented to transfer its registration, the name was 'taken to be available' under section 31, even though the Queensland holder still had the same name. The Tribunal also held that ASIC had no choice but to register the name once the statutory requirements were met—the word 'must' in the legislation was truly mandatory, not discretionary. The decision to register the name was affirmed.
AI-generated legal information, not legal advice. Zoe can make mistakes. Check the cited source, and for advice about your situation consult a qualified Australian lawyer.
Judgment (43 paragraphs)
[1]
The Applicant in these proceedings argues that on 21 May 2016, when ASIC cancelled the registration of the name Dementia Australia held by AASA, only one body in Australia held the registered business name 'Dementia Australia,' being the Applicant in these proceedings. The Applicant contended that once the registration was cancelled on 21 May 2016, anybody seeking to register that name would be confronted with the difficulty that the name was already registered, and that therefore an application to register the name would be rejected under Section 25 as the name was not available to another party.
Whether ASIC had a discretion under section 24 of the Act to refuse to register the business name even if satisfied of the criteria in section...
Whether the legislative scheme permits the transfer of identical grandfathered business names between entities
Cited legislation
6 cited instruments linked from this judgment.
The Applicant submits that for there to be an effective transfer of the name, the cancellation and new registration should occur simultaneously.
The Respondent submits that nothing in the Act necessarily contemplates the existence of a simultaneous process, and the Act requires two documents to be submitted by the transferor and one by the transferee.[22] In fact, it is clear from the provisions of section 31 (4)-(6) that the Act instead contemplates and makes provision for a two-step process - that is, for consent to be lodged, and then for the name to be transferred.
Further support for the Respondent's argument is gained from an examination of the provisions of section 25(b) in conjunction with section 54, which provides that if ASIC cancels the registration of a business name to an entity, the business name is held during a review period, but the entity does not commit an offence if it carries on a business under the business name during the review period. The Act clearly contemplates there being a period after cancellation when the name is, in effect, held in escrow, pending the happening of certain events but can be used by the parties and no one else.
I accept the Respondent's submissions that the Act does not require simultaneous cancellation and new registration, and instead allows for a two-part transfer process.
[2]
Was the business name available to be registered on the Business Names Register?
[3]
The Applicant submits that given the definition of 'is available' in section 3, a business name is not available unless it becomes available under both sections 25 and subsection 31(3) of the Act.[23] For the reasons expounded below, such a proposition is inconsistent with the scheme of the Act.
Sections 25 and 31(3) each individually confer the availability of the business name once either section is fulfilled. Section 25 provides that "a business name is available if....."; and section 31(3) provides ".....the business name is taken to be available". Having established that a name is available under section 25 or deemed to be available under section 31(3), one may then apply under section 24 for registration. Section 25 does not refer to section 31, and section 31(3) does not mandate section 25 to be fulfilled as a prerequisite to its application. The sections provide distinct rules for determining availability under section 24(1)(c) according to the existence of specific circumstances dealt with separately by each section. Furthermore, section 3 defines a name as being available in the circumstances set out in sections 25 and 31(3) of the Act and item 21 of Schedule 1 to the Transitional Act. Having regard to the construction of sections 3, 25 and 31(3) of the Act, it is clear that the definition of 'available' in section 3 is to be interpreted disjunctively.
The submission that to be "available" under section 3 one must satisfy the provisions of section 25 and subsection 31(3) is inconsistent with the provisions of the Act. Section 29 of the Act corresponds to section 25(c), and outlines that where two applications for the registration of business names that are nearly identical are made, and neither is a consent application, the first in time will have priority. If Parliament had intended for business names to meet the criteria in both sections 25 and 31(3) in order to be available, there would be no need to deal with priority in section 29(1)(b).
Section 31 read with section 3 of the Act is clearly intended to specify the process by which a name is taken to be available in the situation when it is being transferred by consent**,** independent of the process when the circumstances of section 25 of the Act or item 21 of Schedule 1 of the Transitional Act arise. Indeed, so much is envisaged in the note to Section 31(1) of the Act.
Furthermore, documents circulated by the Department of Innovation, Industry, Science and Research providing information regarding the (then) proposed National Business Name Registration System indicate that for a business name which was grandfathered on the BNR and which is identical to another business name, the registration for that Business Name was intended to be transferrable to a new owner.[24] While this document does not form part of the policy framework regarding the national business name registration scheme, it is indicative of the discrete conferral operation of section 31 of the Act.
To put it simply, and as submitted by the Other Party and the Respondent, Parliament intended to create two pathways in which a Business Name can be available under the Act.[25] For new business names, being those not previously registered on the BNR, registration occurs through the operation of section 25 of the Act. For those business names already recorded on the BNR, through the operation of the Transitional Act, and which are the subject of a consent application, availability is to be determined by the operation of section 31 of the Act. The rule against identical names therefore only applies to business names available under section 25.
Therefore, if it is established that AASA and the Other Party complied with the provisions of section 31, the business name is taken to have been available to the Other Party, without having to simultaneously consider availability under section 25.
It is not in dispute that AASA and the Other Party complied with the provisions of section 31. Accordingly, 'Dementia Australia' was deemed to be available to the Other Party and section 24(1) of the Act is satisfied.
[4]
Does s 24 of the Act require the Respondent to register the business name if satisfied of the criteria set out in that section?
[5]
Upon satisfaction of section 24(1)(c), section 24 of the Act provides that ASIC must register the business name to Alzheimer's Australia. The applicant submits that the word "must" in the context of this provision means "may". The Applicant also relies on section 24(4) of the Act to suggest that the Respondent had discretion to refuse the application by the Other Party to register the business name.[26] At hearing, Counsel for the Respondent and the Other Party submitted that it had no such discretion.
Occasionally the word "must" means "may" but that is rare.[27] The High Court has held that the test for distinguishing between whether a legislative requirement is directive or mandatory is to ask whether it was a purpose of the legislation that an act done in breach of the provision is to be invalid. The Court directed regard to be had to the language of the relevant provision and the scope and object of the whole statute,[28] however ultimately accepted that there is no decisive rule.[29] "Must" and 'may" are used repeatedly and deliberately throughout this Act and bear their ordinary grammatical meaning (see for example sections 22, 27 and 47 where both "may" and "must" are used). Before one strains the language of section 24 to infer the word "must" in the place of "may", there should be a clear indication as such in the provision or the legislation as a whole. There is not.
The Applicant submits that, as Section 24(4) provides that section 24(3) does not limit the grounds on which ASIC may refuse an application to register a business name to an entity, there is therefore a discretion to refuse to register the business name.[30] The Applicant further submits that the discretion should have been so exercised because inter alia, the name has been used extensively by the Applicant since at least 2006, and not by the Other Party, and that they have suffered significant harm as a result of the decision.[31]
At hearing, the Respondent submitted that to the contrary, where the Act contains provisions that have the effect of depriving an entity of a business name, the Act specifically requires the decision maker to accord procedural fairness. There is no such provision for procedural fairness to be accorded in section 24.
Section 24(4) must be read in the context of Section 24(3) which relates to section 24(2). Accordingly, it must relate to the situation where ASIC requires more information before it can be satisfied that the name must be registered, for example where the entity may have failed to comply with a request at all; or where the entity complying with the request provided insufficient information or complied with the request in part only. At hearing, the Respondent submitted that section 24(4) of the Act was intended to "cure the mischief" that would ensue if the only ground to refuse registration to an entity that ASIC requested further information from under section 24(2) of the Act existed in relation to information tendered out of time.
To regard ASIC as having a broad discretion to be exercised in every application would be to frustrate the purpose of the Act. The evidence before me indicates that there are roughly 2.24 million business names on the BNR at present.[32] If there was a discretion available in relation to each application, the burden imposed on ASIC would be oppressive. Even if that discretion was limited to identical grandfather business names being transferred under subsection 31(3) of the Act, this would still entail thousands of names to be examined as at November 2017. No reference was made in the explanatory notes to the Act regarding an undertaking of this nature. Furthermore, such a discretion would undermine Parliament's intention of using an automated system to manage this register. Such a construction would oblige ASIC to undertake complex investigations as to which party is better entitled to a Business Name and it would make the Tribunal a forum for ventilating misleading and deceptive conduct, trademarks, branding and passing off actions. As mentioned previously, the Explanatory Memorandum explicitly states that the Act is not a mechanism under which proprietary rights to a name can be conferred.[33]
Finally, the Applicant submitted that discretion arises under section 56 of the Act, which allows an entity in relation to whom there is a real risk of substantial detriment to review a decision made under section 24 of the Act.[34] The Applicant argues that they are entitled to a full merits review of the decision as they have suffered, or have a real risk of suffering substantial detrimental due to the decision to register 'Dementia Australia' to the Other Party. The Applicant put forward that the language of the section, granting a full merits review to certain parties gives "effect and colour" as to how the statute should be interpreted.
"In interpreting a provision of an act, the interpretation that would best achieve the purpose or object of the act (whether or not that purpose or object is expressly stated in the act) is to be preferred to each other interpretation."
[7]
In Project Blue Sky Inc v Australian Broadcasting Authority[1998] HCA 28, McHugh, Gummow, Kirby and Hayne JJ said:
[8]
"[69] the primary object of statutory construction is to construe the relevant provision so that it is consistent with the language and purpose of all the provisions of the statute. The meaning of the provision must be determined "by reference to the language of the instrument viewed as a whole."
[9]
A reading of sections 16 and 17 of the Act, and the second reading speech indicates that Parliament clearly intended an automated system of registration to simplify and unify the registration of business names throughout the Commonwealth. Section 16(2) of the Act provides that the objectives divulged in section 16(1), to ensure that if an entity carries on business under a certain name, those who engage with the business can identify the entity and to eliminate the inconvenience caused by registering business names in each State or Territory, are achieved by the establishment and maintenance of the national register. Section 16(4) of the Act provides that the objects mentioned in subsection (3), relevantly in this matter, to avoid confusion by ensuring business names that are identical are not registered, are achieved by the rules dealing with the availability of business names.
The Act simply provides for the grandfathering of business names from the existing State registers to the Commonwealth register, and seeks to ensure that, despite the existence of identical names that were grandfathered under the Transitional Act, the registered owner of a business name remains entitled to transfer the name of that business to another. I accept the Respondent and Other Party's submissions that, pursuant to the provisions of section 24, ASIC had no choice but to register the business name upon being satisfied that the requirements of section 24(1) had been met. Accordingly, I do not need to consider whether discretion should have been exercised to refuse to transfer the business name.
The decision under review is affirmed.
[10]
I certify that the preceding 58 (fifty-eight) paragraphs are a true copy of the reasons for the decision herein of Deputy President R I Hanger AM QC.
[9] Applicant's Statement of Facts, Issues and Contentions dated 2 November 2017 at para 2(a).
[21]
[11] Applicant's Statement of Facts, Issues and Contentions dated 2 November 2017 at para 1(e).
[22]
[12] T-documents, T6 at page 224 Business name extract summary for 'Dementia Australia' former identifier BN04695835; T7 at page 225, Business name extract summary for 'Dementia Australia' former identifier NB17531573.
[23]
[13] Respondent's Statement of Facts, Issues and Contentions dated 14 December 2017 at para 7.
[24]
[14] Applicant's Statement of Facts, Issues and Contentions dated 2 November 2017 at para 1(j).
[25]
[15] Respondent's Statement of Facts, Issues and Contentions dated 14 December 2017 at para 9; Other Party's Submissions dated 25 June 2018 at [10(a)].
[26]
[16] Respondent's Statement of Facts, Issues and Contentions dated 14 December 2017 at para 10.
[27]
[17] T documents, T8, page 226, Business name extract summary for 'Dementia Australia' ABN 79625582771.
[28]
[18] T documents, T10, page 326, Statement of reasons for decision - Alzheimer's Association of Queensland Inc dated 26 June 2017.
[29]
[19] T documents, T1, Application for review, page 1, dated 13 July 2017.
[30]
[20]Respondent's Statement of Facts, Issues and Contentions dated 14 December 2017, para 29; Other Party's Statement of Facts, Issues and Contentions dated 25 June 2018 at para 1
[31]
[21] The Act, s 25. See subsections 25(a)(i),(ii), (b) and (c).
[32]
[22] Respondent's Statement of Facts, Issues and Contentions dated 14 December 2017 at para 52.
[33]
[23] Applicant's Statements of Facts, Issues and Contentions dated 2 November 2017 at para 3.
[34]
[24] Exhibit 1, Annexure RW-2, Fact Sheet entitled "Proposed National Business Name Registration System" dated 10 March 2011.
[35]
[25] Respondent's Statements of Facts, Issues and Contentions dated 14 December 2017 at [63]; Other Party's Submissions dated 25 June 2018 at [27]..
[36]
[26] Applicant's Statement of Facts, Issues and Contentions dated 2 November 2017 at para 3(c).
[30] Applicant's Statement of Facts, Issues and Contentions dated 2 November 2017 at para 3(c).
[40]
[31] Exhibit 3, Affidavit of Mr Jack Henry Longley dated 26 April 2018 at [5]. Exhibit 2, Affidavit of Stephen McNally dated 26 April 2018 at [84]-[86].
[41]
[32] Exhibit 1, Annexure RW11, Copy of Table 1, dated 23 May 2018.
[34] Applicant's Statement of Facts, Issues and Contentions dated 2 November 2017 at para 3(l).
Legislation Cited (6)
Appeals Tribunal Act 1975
Interpretation Act 1901
Names Registration Act 2011
Names Registration (Transitional and Consequential Provisions) Act 2011
Names Act 1962
Incorporation Act 1985
Cases Cited (3)
Alzheimer's Association of Queensland Inc and Australian Securities and Investments Commission [2018] AATA 2403 (20 July 2018)
Project Blue Sky Inc v Australian Broadcasting Authority[1998] HCA 28
(1998) 194 CLR 355
AI Analysis
Outcomedefendant
Disposition:
The Tribunal affirms the decision under review. ASIC was required to register the business name 'Dementia Australia' to Dementia Australia Ltd once satisfied that the requirements of section 24(1) of the Business Names Registration Act 2011 (Cth) were met, including that the name was 'taken to be available' under section 31(3).