Jefferjee v. Scarlett [1937] HCA 36; (1937) 57 CLR 115

Imagic Inc v. Futuretronics (Aust) Pty Ltd (1983) 51 ALR 122

"Zoppas" Trade Mark (1965) RPC 381

Ex parte Kingsford & Son (1889) 61 LT 426

Re The Australian Wine Co Ltd (1889) 61 LT 427n

Lincoln Industries Ltd v. Wham-O-Manufacturing Co (1984) 3 IPR 115

Aquaculture Corp v. New Zealand Green Mussel Co Ltd (No 2) (1986) 10 IPR 319

Counsel for the Applicant: R Merkel QC and C Colvan

Counsel for the first Respondent: Australian Government Solicitor

and third Respondents: J McL Emmerson QC and BJ Hess

The Court orders that the Registrar of Trade Marks be directed to register the trade mark "Dr. Maertens" (application number B400023) in the names of the second and third respondents.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

SUNDBERG J On 16 November 1983 the applicant applied to the Registrar of Trade Marks pursuant to s.40 of the Trade Marks Act 1955 ("the Act") for registration of the trade mark "Dr. Martens" in respect of footwear being goods included in Class No. 25. The Registrar accepted the application under s.44. The application was advertised pursuant to s.47. On 6 September 1988 Dr. Ing. Herbert Funck and Dr. Klaus Maertens gave notice under s.49 of opposition to registration of the mark. On 26 June 1991 the Registrar allowed the opposition and refused to register the mark. He did so on the ground that the use by others of the mark in Australia prior to the applicant's application for registration in November 1983 meant that the applicant was not entitled to claim proprietorship of the mark. On 14 July 1992 the applicant appealed to this Court under s.51 against the Registrar's decision. In the meantime Dr. Maertens had died, and, in October 1993, the third respondent, as representative of his estate was joined as a party to the appeal in his place. The appeal was listed for hearing on 7 August 1995 together with another proceeding in which Dr. Funck, Mrs. Maertens and others claimed that Figgins' use of the name "Dr. Martens" constituted misleading and deceptive conduct and passing off (VG443/94). On that day I was told that the parties had settled their differences upon terms which included the assignment of Figgins' application for registration to Dr. Funck and Mrs. Maertens. I made consent orders in VG443/94. In the present proceeding I was asked to direct that the mark "Dr. Martens" be registered in the names of Dr. Funck and Mrs. Maertens. There was some doubt as to whether the Court had power to make such an order, and I heard argument on the point. The Registrar was represented before me and did not oppose the making of the order sought, but made no submission on jurisdiction.

If the Registrar is satisfied that there is no lawful ground

of objection to an application, or that the grounds of

objection to an application have been removed, the Registrar

shall accept the application without conditions or

limitations or subject to such conditions or limitations as

he thinks fit: if he is not so satisfied, he may refuse to

accept the application.

3. Section 50(1) deals with the determination of opposition proceedings. Sub-section (2) provides:

In determining the opposition the Registrar may take into

account a ground of objection whether relied upon by the

opponent or not.

4. The appeal to this Court is provided for by s.51. Section 115A provides that upon the hearing of an appeal from a decision or direction of the Registrar, the Court may

(a) admit further evidence, either orally or upon

affidavit or otherwise;

...

(d) affirm, review or modify the decision or direction

appealed from;

(e) give such judgment, or make such order, as in all the

circumstances it thinks fit, or refuse to make an

order ...

...

5. An "appeal" under s.51 is not really an appeal at all. It is the first judicial determination in the proceedings, and is within the original jurisdiction of the Court. The issue for the Court is not whether the Registrar fell into error in refusing to register the mark, but whether on the material before the Court the application for registration should be granted. See Jefferjee v. Scarlett [1937] HCA 36; (1937) 57 CLR 115, at pp 119, 126 and Shanahan, Australian Law of Trade Marks and Passing Off 2nd ed. (1990), p 487.

6. Dr. Emmerson QC, who appeared with Mr. Hess for the second and thi rd respondents ("the respondents"), understandably accepted that the Registrar's decision to refuse the application for registration was correct on the material that was before him. But things had changed since his decision in mid-1991. The application to register has been assigned to the respondents, and there is no opposition to registration of the mark in their names. He referred to the phrase in s.44(1) - "or that the grounds of objection to an application have been removed" - and submitted that the assignment had removed the ground of objection on which the Registrar relied. Accordingly, if the matter were before the Registrar today, he should register the trade mark in the name of the respondents. Hence the Court should direct him to do so.

7. Counsel could point to no direct authority in support of his submission, but said that some support was to be found in Imagic Inc. v. Futuretronics (Aust.) Pty. Ltd. (1983) 51 ALR 122. Imagic, an American company, developed and marketed video games. Futuretronics, an Australian company, expressed interest in becoming Imagic's Australian distributor. Futuretronics' representative warned Imagic of the dangers of failing to register its trade marks in Australia, and offered to have registration carried out through its own patent attorneys. Imagic accepted the offer. Futuretronics filed applications in its own name for registration of the marks. Imagic claimed that Futuretronics held the benefit of the applications and any trade marks registered pursuant thereto in trust for Imagic, and orders that Futuretronics assign the applications and any such marks to Imagic. The claim was upheld. McLelland J said:

it is alleged (by Futuretronics) that if, as Imagic asserts,

Futuretronics made the trade mark applications in its own

name in breach of its obligations to Imagic, it will be the

duty of the Registrar of Trade Marks to refuse to register

the marks pursuant to those applications, and the proper

forum for determination of that issue is in opposition

proceedings before the Registrar.

...

If it were necessary to decide whether registration of

Imagic as proprietor of the trade marks could validly take

place pursuant to the applications in question, I would

incline to the affirmative view, on the basis of such

decisions as Re Australia Wine Co. Ltd. (1885) 61 LT 427m;

Re Wellcome's Trade Mark (1886) 32 ChD 213; Re Greenlee's

Trade Marks (1892) 9 RPC 93, and "Zoppas" Trade Mark

(1965) RPC 381 (and see ss.15, 19 and 57(2) of the Trade

Marks Act 1955.

... there is ... nothing in the relief sought which would

give rise to any fraud on the Registrar or on the public.

8. The basis of this dictum was that Futuretronics held its applications on trust for Imagic. In the present case, having received the whole of the consideration for the assignment, Figgins holds the applications on trust for the respondents. Cf. Chang v. Registrar of Titles [1976] HCA 1; (1976) 137 CLR 177, at p 185.

9. There is another line of authority illustrated by the Zoppas Case, to which McLelland J referred, to the effect that the Court has power under s.22(1) to order that the name of the true owner of a mark be substituted for that of a wrongful claimant. That sub-section empowers the Court to rectify the Register by, inter alia, correcting errors or defects in it. In Kerley's Law of Trade Marks and Trade Names 12th ed. (1986), par.11-62 it is said of the counterpart of s.22(1) in the Trade Marks Act 1938 (U.K.):

It would seem clear from its wording that section 32 gives

jurisdiction where a mark has been wrongfully registered in

the name of someone other than the proprietor, to rectify by

expunging that name and substituting that of the person

entitled to the mark. This has been done under the present

Act. However, under s.90 of the 1883 Act, such

rectification was refused where the Registrar objected. The

basis of such objection was apparently that it was felt that

the proper course to be taken was for the mark to be

expunged entirely and for the true proprietor to make a

fresh application for registration which would be advertised

in the ordinary course and might lead to opposition. No

doubt where the public interest required it, such a course

would be followed today, but, now that assignment in gross

is no longer forbidden, there will be many cases where the

substitution of the name of the true proprietor for the

existing proprietor can be achieved by the convenient

procedure under section 32.

10. This passage was cited with approval by the Court of Appeal of New Zealand in Lincoln Industries Ltd. v. Wham-O-Manufacturing Co. (1984) 3 IPR 115, at pp 155-156, though rectification was refused there because the Registrar was not before the Court. See also Aquaculture Corp. v. New Zealand Green Mussel Co. Ltd. (No. 2) (1986) 10 IPR 319, at p 344.

11. Section 90 of the Patents, Designs and Trade Marks Act 1883 (U.K.) is the predecessor of s.22 of the Act and s.32 of the 1938 Act. The practice under s.90 was discussed more fully in earlier editions of Kerly. See for example 7th ed. (1951), pp 297-298, where the cases supporting the Registrar's ground of objection are collected. Ex parte Kingsford and Son (1889) 61 LT 426 is an example. That there was never a general rule under the 1883 Act requiring a fresh application for registration in cases where a mark had been wrongly registered in the name of someone other than the proprietor is shown by another of the cases referred to by McLelland J, Re The Australian Wine Co. Ltd., decided in 1885 and reported in a note to the Kingsford Case, though not cited in that case. In the Australian Wine Case the mark "Auldana" had been registered in his own name by the sole consignee of wines from the Auldana Vineyards in South Australia, the consignee intending to use the registration solely for the protection of such wine, and so long only as he should remain consignee. The mark was transferred to his trustee in bankruptcy, with the consignee's business, to a purchaser who procured the entry on the Register of his own name as proprietor. Subsequently, on the application under s.90 of the owners of the vineyard, Chitty J directed their names to be entered as proprietors of the mark in lieu of that of the purchaser of the assignee's business, on the ground that the mark had been registered for the benefit of the owner of the vineyard, not for that of the owner of the business.

12. It is important to note that the basis for what was thought by the Registrar to be the proper course in cases such as Kingsford was that advertisement might produce an objector who would otherwise be unaware of the proceeding, rectification being an inter partes matter on which members of the public have no right to be heard. In a case such as the present, however, where the matter arose by way of opposition following advertisement, and where only the respondents objected, the basis for the Registrar's stand would be absent.

13. Section 115A empowers the Court to make such orders as in all the circumstances it thinks fit. That is very broad language. Encouraged by the dictum in Imagic and comforted by the "comveniet procedure" adopted in rectification cases which McLelland J thought, and I consider, analogous, I am of the view that the Court has jurisdiction to direct the Registrar to register the trade mark "Dr. Martens" in the name of Dr. Funck and Mrs. Maertens.

14. I think I should exercise that jurisdiction by making the order sought. It is a convenient course to adopt. It is a course not opposed by the Registrar or by Figgins. The advertisement of Figgins' application did not attract the interest of objectors other than the respondents. The making of the order will thus give rise to no "fraud on the public" in the sense referred to by McLelland J.

15. The Order of the Court is that the Registrar be directed to register the trade mark "Dr. Martens" (application number B400023) in the names of Dr. Funck and Mrs. Maertens.