4.2 Consideration
40 I find that the Registrar was obliged to afford procedural fairness to Foxtel, but Foxtel has not established that the failure to provide it with a copy of the Gestalt submissions amounted to a material breach of the requirements of procedural fairness.
41 I first turn to the obligation to afford procedural fairness. Foxtel relies on s 5(1)(a) of the AD(JR) Act which provides:
5 Applications for review of decisions
(1) A person who is aggrieved by a decision to which this Act applies that is made after the commencement of this Act may apply to the Federal Court or the Federal Circuit Court for an order of review in respect of the decision on any one or more of the following grounds:
(a) that a breach of the rules of natural justice occurred in connection with the making of the decision.
42 Section 5(1)(a) does not extend the rules of natural justice beyond their common law application; Kioa v West [1985] HCA 81; 159 CLR 550 at 566, 577, 594.
43 In Annetts v McCann [1990] HCA 57; 170 CLR 596, Mason CJ, Deane and McHugh JJ said at [2]:
It can now be taken as settled that, when a statute confers power upon a public official to destroy, defeat or prejudice a person's rights, interests or legitimate expectations, the rules of natural justice regulate the exercise of that power unless they are excluded by plain words or necessary intendment … an intention on the part of the legislature to exclude the rules of natural justice [is] not to be assumed nor spelled out from 'indirect references, uncertain inferences or equivocal considerations'."
(Citations omitted)
44 In State of South Australia v Honourable Peter Slipper MP [2004] FCAFC 164; 136 FCR 259 Finn J said at [93] (Branson and Finkelstein JJ agreeing):
There is no real dispute between the parties as to the principles to be applied. The parties diverge on the principles' application to the present circumstances. Stated in short form those principles are:
(i) when a statute confers a power on a public official the exercise of which affects a person's rights, interests or expectations, the rules of procedural fairness regulate the exercise of that power unless those rules are excluded by express terms or by necessary implication: Kioa v West (1985) 159 CLR 550 at 584; Re Minister for Immigration & Multicultural Affairs; Ex parte Miah (2001) 206 CLR 57 at 93; on "necessary implication", see B v Auckland District Law Society [2004] 1 NZLR 326 at 349;
(ii) a legislative intention to exclude the rules will not be assumed or spelled out from indirect references, uncertain inferences or equivocal considerations: Commissioner of Police v Tanos (1958) 98 CLR 383 at 396;
(iii) an intention to exclude should not be inferred merely from the presence in the statute of rights which are commensurate with some of the rules of procedural fairness: Annetts v McCann (1990) 170 CLR 596 at 598; and
(iv) while the rules may be excluded because the power in question is of its nature one to be exercised in circumstances of urgency or emergency: Marine Hull and Liability Insurance Co Ltd v Hurford (1985) 10 FCR 234 at 241; "urgency cannot generally be allowed to exclude the right to natural justice": Minister for Aboriginal and Torres Strait Islanders Affairs v State of Western Australia (1996) 67 FCR 40 at 59; although it may in the circumstances reduce its content: J Wattie Canneries Ltd v Hayes (1987) 74 ALR 202 at 214; State of Western Australia v Native Title Registrar (1999) 95 FCR 93.
45 In Plaintiff M61/2010E v The Commonwealth [2010] HCA 41; 243 CLR 319 at [75] the Court said:
It is enough to say that the references in Annetts to "prejudice", "interests" and "legitimate expectations" suggest that the contrast which the Commonwealth and the Minister sought to draw between destruction, defeat or prejudice of a right, on the one hand, and a discretionary power to confer a right, on the other, proceeds from too narrow a conception of the circumstances in which an obligation to afford procedural fairness might arise. The more comprehensive statement of principle by Mason J in FAI Insurances Ltd v Winneke sufficiently answers the submissions by the Commonwealth and the Minister. His Honour said that the obligation to afford procedural fairness is not limited to cases where the exercise of the power affects rights in the strict sense, but extends to the exercise of a power which affects an interest or a privilege. It is then important, in the present matters, to identify the rights and interests affected.
46 More recently in S10/2011 v Minister for Immigration and Citizenship [2012] HCA 31; 246 CLR 636 at [66], Gummow, Hayne, Crennan and Bell JJ said that the question is whether the exercise of a power is "apt to affect adversely what is a sufficient interest" of the party affected.
47 The Registrar accepts that Foxtel had an "interest" in the outcome of the revocation decision, but contends that it was not sufficient to lead to an obligation to afford procedural fairness. First, because the language of s 84A(5) reflects the entire scope of the obligation, which is not owed to a party in the position of Foxtel, but to the persons recorded in Part 11. Those are persons whose interests are affected by a decision to revoke the registration. Secondly, because in any event, the Registrar has no duty under s 84A(6) to consider making a decision.
48 In my view the scheme of the Act and the language of s 84A confers power on the Registrar to affect the rights of Foxtel sufficiently to warrant a finding that the rules of natural justice regulate the exercise of that power. Foxtel intended to be in the position of an opponent to the registration of the trade mark. The Act provides a scheme whereby such persons may oppose a mark, and doing so is encouraged as part of the public good that arises from the register containing only trade marks that are legitimately entitled to be registered; Health World at [22]. Whilst Foxtel is not now an opponent, the reason that it is not is because of the circumstances summarised above, in short because its agent made an error in the process of filing the notice of intention.
49 Section 84A contemplates that the Registrar may revoke a trade mark registration in circumstances where the trade mark should not have been registered. Sections 54 and 55 of the Act make plain that a trade mark must not be registered where an opposition is on foot, and where the Registrar has not given the opponent and the applicant an opportunity to be heard on the opposition. The "interest" of Foxtel is in persuading the Registrar that, in all the circumstances that existed when the trade mark was registered, the trade mark should not have been because, but for the error in filing the notice of intention to oppose there would have been an opposition on foot at the time of registration (s 84A(1)). In my view this is a form of possible adverse affectation that is sufficient to qualify as an interest to attract the protection of the rules of procedural fairness.
50 Although s 84A(5) only specifies the registered trade mark owner, and other persons recorded under Part 11, as the persons that must be given an opportunity to be heard before a decision to revoke registration, it does not in turn follow that Foxtel do not have a right to procedural fairness. The principles of procedural fairness may excluded only by "plain words of necessary intendment": Plaintiff M61 at [74]. An "intention to exclude the rules of natural justice is not to be inferred from the presence in the statute of rights which are commensurate with some of the rules of natural justice"; Annetts at [2]. No such clear expression of intention to exclude is present in s 84A.
51 Furthermore, the fact that under s 84A(6) the Registrar is not obliged to make any decision under s 84A does not serve to avoid the existence of the obligation to afford procedural fairness. Having decided to consider the exercise of power under s 84A, the obligation to ensure that the assessment conducted under that section is procedurally fair arises; Plaintiff M61 at [77].
52 The question then arises as to the content of the obligation in the present case.
53 During the course of considering the exercise of her power, the Registrar invited Unicom to make submissions on the subject. Unicom, via Gestalt, then made a 5 page submission (the Gestalt submissions) in which it contended, after setting out extracts of the Explanatory Memorandum of the Act, that it was "abundantly clear that s 84A is not intended to apply in the current situation" and that it would be contrary to the purpose of the section to revoke the trade mark. It also made detailed submissions going to the facts of the present case.
54 Foxtel submits that the Court should infer that the Registrar relied on the Gestalt submissions in making the decision; prior to the decision the Registrar indicated clearly that she intended to revoke the trade mark, and after receiving the Gestalt submissions she changed her mind, which was reflected in the decision. The only intervening event was the Gestalt submissions, which raised two substantive issues. The first concerned the factual matrix, where the submissions laid the blame for the error at the feet of Allens (see [17] above). This, Foxtel accepts, was a known fact and had been exposed to the Registrar in the course of its application for revocation. Foxtel does not rely on this submission in support of its denial of natural justice submission. The second was the submission as to the construction of s 84A having regard to the secondary materials. Foxtel submits that this was new matter that influenced the Registrar's decision, and Foxtel submits that it ought to have had an opportunity to respond to it.
55 In SZBEL v Minister for Immigration and Multicultural and Indigenous Affairs [2006] HCA 63; 228 CLR 152 at [32] the High Court (Gleeson CJ, Kirby, Hayne, Callinan and Heydon JJ) said:
In Alphaone the Full Court rightly said:
"It is a fundamental principle that where the rules of procedural fairness apply to a decision-making process, the party liable to be directly affected by the decision is to be given the opportunity of being heard. That would ordinarily require the party affected to be given the opportunity of ascertaining the relevant issues and to be informed of the nature and content of adverse material." (emphasis added)
56 In Minister for Immigration & Border Protection v SZSSJ [2016] HCA 29; 259 CLR 180 the Court said at [83] (emphasis added):
Ordinarily, affording a reasonable opportunity to be heard in the exercise of a statutory power to conduct an inquiry requires that a person whose interest is apt to be affected be put on notice of: the nature and purpose of the inquiry; the issues to be considered in conducting the inquiry; and the nature and content of information that the repository of power undertaking the inquiry might take into account as a reason for coming to a conclusion adverse to the person.
57 The relevance of the nature and content of information that the repository of power undertaking the inquiry might take into account was explained in the footnote to that proposition in SZSSJ, which included reference to the Full Court decision in Commissioner for the Australian Capital Territory Revenue v Alphaone Pty Ltd [1994] FCA 293; 49 FCR 576 at 591 - 592 (emphasis added):
Where the exercise of a statutory power attracts the requirement for procedural fairness, a person likely to be affected by the decision is entitled to put information and submissions to the decision-maker in support of an outcome that supports his or her interests. That entitlement extends to the right to rebut or qualify by further information, and comment by way of submission, upon adverse material from other sources which is put before the decision-maker. It also extends to require the decision-maker to identify to the person affected any issue critical to the decision which is not apparent from its nature or the terms of the statute under which it is made. The decision-maker is required to advise of any adverse conclusion which has been arrived at which would not obviously be open on the known material. Subject to these qualifications however, a decision-maker is not obliged to expose his or her mental processes or provisional views to comment before making the decision in question.
58 In my view, a relevant issue for consideration by the Registrar, which was known to Foxtel prior to the Gestalt submissions, was the application of s 84A of the Act to the known facts. In its submissions in support of its application under s 84A, Allens specifically addressed this point. There can have been no doubt as to the relevant "issue". The Gestalt submissions merely raised an aspect of the construction of s 84A that reflected an opposing view to that propounded by Foxtel. This was an issue that was obviously open on the known material.
59 Furthermore, were there to have been a denial of procedural fairness, one can readily conclude that it would not have deprived Foxtel of the possibility of a different outcome. The issue to which Foxtel points was a matter of statutory construction that the Registrar found in its favour. The language used in the decision indicates that the Registrar determined that she should consider the exercise of her discretion under s 84A(1). It will be recalled that the decision contains a finding that it is "not reasonable" to revoke the registration of the trade mark, and that the Registrar has "taken into account all of the circumstances and [found] that the discretionary power to revoke under s 84A should not be exercised in the present circumstances". This language indicates that the Registrar did not accept the Gestalt submission that s 84A cannot apply where the error or omission lies at the feet of a person other than the Registrar, but instead applied herself to the consideration of the exercise of discretion set out in s 84A(1). In Minister for Immigration and Border Protection v WZARH [2015] HCA 40; 256 CLR 326 at [60], Gageler and Gordon JJ said that (emphasis added):
...denial of procedural fairness is established by nothing more than that failure, and the granting of curial relief is justified unless it can be shown that the failure did not deprive the person of the possibility of a successful outcome. The practical injustice in such a case lies in the denial of an opportunity which in fairness ought to have been given.
60 See also Stead v State Government Insurance Commission [1986] HCA 54; 161 CLR 141 at 145 - 147. This conclusion is reinforced by the finding, set out in section 6 below, that Foxtel has not established an error of law on the part of the Registrar.
61 Foxtel next submits that the Court ought not to accept the Registrar's email of 31 October 2017 as reflecting the true basis for the decision. It contends that the reasons set out in the Gestalt submissions more accurately reflect the basis for the decision because of the circumstantial matters to which I have referred in [54] above, as well as the content of the conversation between Ms Evans and the Registrar of 1 November 2017. I reject that submission. Firstly, as I have noted, the email of 31 October 2017 sets out a basis for the decision that is inconsistent with the Gestalt submissions. Secondly, the acceptance by the Registrar that Gestalt's submissions "influenced" the change of position does not advance matters beyond the proposition that the submissions led to a reconsideration of the matter by the Registrar. As she said in her letter to Unicom of 28 September 2017, had Unicom not responded, the Registrar intended to revoke the trade mark. Thirdly, I am not prepared to infer that the decision does not set out, in short form, the reasons of the Registrar, in circumstances where Foxtel chose not to seek reasons from the Registrar pursuant to s 13 of the AD (JR) Act.