Google LLC v Interactive Engineering Pty Ltd

1. The respondent's application pursuant to r 1.34 of the Federal Court Rules 2011 (Cth) to dispense with the requirements of r 4.01(2) is dismissed.
2. The respondent is to pay the appellant's costs of the application.
3. By 4 pm on 2 May 2024 the respondent, by a lawyer, is to file a notice of acting pursuant to r 4.03 of the Rules, in accordance with Form 4.
4. The proceeding be listed for case management hearing on 8 May 2024 at 9.30 am AEST. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

MARKOVIC J: 1 On 23 January 2024 Google LLC commenced this proceeding against Interactive Engineering Pty Ltd appealing the decision of the delegate of the Registrar of Trade Marks given on 11 December 2023 in Google LLC v Interactive Engineering Pty Ltd [2023] ATMO 204. The Registrar's decision was in relation to an application by Google under s 92(4)(b) of the Trade Marks Act 1995 (Cth) (TM Act) to remove Interactive Engineering's Australian trade mark registered number 539355 for ORION for non-use during the three year period from 14 January 2019 to 14 January 2022. Google was unsuccessful before the Registrar. 2 Interactive Engineering now applies pursuant to r 1.34 of the Federal Court Rules 2011 (Cth) for dispensation with compliance with r 4.01(2) of the Rules which provides that a corporation must not proceed in the Court other than by a lawyer. Interactive Engineering seeks to appear by its sole director James Brander. I granted leave to Mr Brander to appear on the application for dispensation with r 4.01(2) of the Rules. Google opposes the application. 3 In support of the application Interactive Engineering relied on written submissions which had been provided to the Court as well as oral submissions made by Mr Brander. It did not file any evidence. Google relied on an affidavit sworn by Annabelle Eliza Klimt, a solicitor in the employ of its solicitors, Gilbert and Tobin, on 11 March 2024, and its written and oral submissions. Before addressing those submissions it is convenient to set out the relevant principles. 4 In Termi-Mesh Australia Pty Ltd v Josu Manufacturing Pty Ltd [1999] FCA 1241 at [12]-[13] French J in considering a like application, albeit under Order 4 r 14(2) of the former Federal Court Rules, said: 12 The position under the Federal Court Rules however is not as restrictive as that under the English Rules and various of the State Supreme Court Rules. In this respect I refer to what I said in Simto Resources Limited v Normandy Capital Limited (1993) 11 ACLC 856. Although the rationale for the restriction is basically the same in all jurisdictions, the power of the Federal Court to grant leave to a corporation to carry on a proceeding, otherwise than by a solicitor, is conferred as an integral part of the Rules in O 4 r 14 and O 9 r 1. There is no threshold requirement of special or exceptional circumstances. As Smithers J said of O 4 r 14(2) and O 9 r 3 in Molnar Engineering Pty Ltd v Burns (1984) 3 FCR 68 at 73: "Those rules proceed on the basis that there is a discretion in the court to permit a company to commence and carry on any proceedings other than by a solicitor and to enter an appearance or defend any proceeding without a solicitor and, it would seem, it is a discretion to be exercised by reference to all relevant considerations." 13 Nevertheless the policy of the rule is clear that ordinarily a corporation will be required to be represented by a solicitor. Relevant factors for dispensing with that requirement include the financial capacity or lack of capacity of the corporation and those standing behind it, the effect of diverting company resources to paying legal expenses, the nature of the company's undertaking, its financial structure, its ability to retain and pay its staff and the identity and spread of its shareholders. The factual complexities of the case and the capacity of the proposed representative to conduct it effectively are also relevant - VN International Video Pty Ltd v West End HK TVB Video & Others (1996) 14 ACLC 1308. 5 In Basetec Services Pty Ltd v CPB Contractors Pty Ltd (formerly Leighton Contractors Pty Ltd) [2017] FCA 510 White J considered an application to dispense with compliance with r 4.01(2) of the Rules. At [8] his Honour provided a non-exhaustive list of the matters which may bear upon the exercise of the discretion: 8 The exercise of the Court's discretion pursuant to r 1.34 in relation to r 4.01(2), is to be exercised by reference to "all relevant considerations": Pharm-a-Care Laboratories Pty Ltd v The Commonwealth (No 12) [2012] FCA 289 at [18]. The authorities indicate the variety of matters which may bear upon the exercise of the discretion in a given case. These include: (a) the financial capacity of the company and those standing behind it and whether a lack of financial capacity would inhibit a company from obtaining legal representation: Deputy Commissioner of Taxation v Compumark Pty Ltd [2012] FCA 583 at [19]-[20]; Termi-Mesh Australia Pty Ltd v Josu Manufacturing Pty Ltd [1999] FCA 1241 at [13]; Worldwide Enterprises Pty Ltd v Silberman [2009] VSC 165 at [20]; (b) the factual complexities of the case and the capacity of the proposed representative to conduct it effectively having regard to the skills, training, qualifications and experience of that representative: Damjanovic v Maley (2002) 55 NSWLR 149 at [77]; Compumark at [19], Termi-Mesh at [13]; (c) the overarching purpose of the civil practice and procedure provisions specified in s 37M of the Federal Court of Australia Act 1976 (Cth) (the FCA Act) and the effect on the achievement of that purpose if the company proceeds with, or without, legal representation: Australian Competition and Consumer Commission v Adata (Vic) Pty Ltd (No 2) [2015] FCA 272; Compumark at [20]; Silberman at [20]; (d) the ability of the proposed representative to exercise the objectivity expected of a legal practitioner: Pacific Air Freighters (Qld) Pty Ltd v Toller [2000] FCA 0343; (2000) 171 ALR 519 at [11]; (e) whether a lack of available disciplinary measures in relation to the persons seeking to represent the company will affect the administration of justice: Compumark at [20]; Damjanovic at [76]; (f) the manner in which the case has progressed to date and the manner in which it may progress without the party having legal representation: Compumark at [20]; Silberman at [20]; (g) when the company in question is a respondent, a more liberal approach to the exercise of the discretion may be warranted: Termi-Mesh at [14]. 6 I turn then to consider the matters relevant to the exercise of the discretion in this case having regard to the parties' respective submissions. 7 First, financial capacity. Interactive Engineering submitted that it is a small software company that does not have a lot of money. In its written submissions it noted that it did "not wish to spend an estimated $90,000 on a barrister (much more if they were trained up in what we do so that their words were not empty)". From the bar table, Mr Brander submitted that Interactive Engineering did not have the funds to pay for legal representation. However, there was no evidence before the Court beyond Mr Brander's assertion. At the close of argument earlier today, Mr Brander sought time to file further evidence. But, given the timetable ordered by the Court for the filing of evidence and the fact that Interactive Engineering had been on notice of the types of matters that the Court could take into account on an application of this nature, including financial capacity, since at least 5 March 2024, that application was refused. 8 There is no evidence of Interactive Engineering's financial capacity or of the financial capacity of its shareholders who are recorded in a recent search undertaken by Google's solicitors of the database maintained by the Australian Securities and Investments Commission. Mr Brander indicated that a number of the shareholders disclosed in that search were deceased and that he was unaware of others. That does not assist in establishing the true financial status of Interactive Engineering. Financial capacity of a party is a key consideration in an application of this nature, albeit not determinative: see Avetmiss Easy Pty Ltd v Australian Skills Qualifications Authority [2014] FCA 46 at [12]. 9 Secondly, whilst Interactive Engineering is the respondent in the proceeding given the nature of the proceeding it bears the onus of establishing use of the trade mark during the alleged non-use period: see s 100 of the TM Act. It is therefore not a respondent in the ordinary sense. 10 Thirdly, the factual complexities of the case and Mr Brander's capacity to conduct it, having regard to his skills, training and qualifications. Mr Brander submitted that the case was not a complex one at one level and that he could engage sufficiently with the factual and legal issues. However, he also suggested that if the case became a complex one, as it could, precedent would not apply and he would not be able to identify a barrister who could address its complexities. As to its simplicity Mr Brander referred to a screenshot taken from the Wayback Machine of Interactive Engineering's website and suggested reliance on that would, in effect, be the end of the case. 11 Mr Brander's submissions oversimplify the nature of the case. As Google submitted trade mark law and, in particular, the concept of use of a trade mark is not straightforward. There is a developed and large body of case law and a party must consider how to apply it to nuanced factual situations. Further, factual matters need to be established by admissible evidence. Without intending any disrespect to Mr Brander who I am sure is well qualified in his own area of expertise, there is no evidence and I am not confident that he is in a position to deal with the factual and legal issues that will arise in this case. While Mr Brander said that he started looking at the law in 2010, apparently in the context of his research and development activities, there was no evidence that he has any experience in trade mark law or any legal qualifications. 12 Fourthly, as Google submitted, Mr Brander is likely to be a principal witness at trial. Mr Brander is the sole director of Interactive Engineering. He appeared as the principal witness before the Registrar and I accept that he is likely to be the principal witness in this appeal. That makes Interactive Engineering's representation by Mr Brander even more difficult as he would be both witness and advocate which raises a range of issues for its representation. 13 Finally, the manner in which the proceeding has progressed to date and the manner in which it may proceed if Interactive Engineering is not represented by a lawyer. Mr Brander has to date represented Interactive Engineering. He has been the author of material filed with the Court and appeared today to make submissions. As I have already observed, Mr Brander is not legally trained and, again without intending any disrespect, it is clear that given his lack of understanding of Court processes and the applicable legal principles and based on the material he has provided to date, his continued representation of Interactive Engineering will add to the likely length of time it will take for the matter to proceed to hearing and the hearing itself. It is not in the interests of the efficient disposition of the proceeding to permit that to continue. 14 Having regard to these factors I refuse leave to Interactive Engineering to be represented by Mr Brander in the proceeding. Interactive Engineering's application to dispense with the requirements of r 4.01(2) of the Rules should be dismissed with costs. I certify that the preceding fourteen (14) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Markovic.