The submissions of the parties
24 Laminar submitted that in the period between 17 August 2001 and December 2014 many other particulars in respect of the trade marks were entered on the Register. Most importantly, an assignment of the trade marks from AES to Laminar was entered on the Register on 25 October 2005 pursuant to ss 109 and 110. Since then, Laminar had been recorded on the Register. Laminar was not involved in the submission to the Registrar of the change of name form in August 2001.
25 Laminar submitted, first, that the decision of the delegate was ultra vires. It submitted that s 81 was confined to the correction of errors or omissions made in the course of the Registrar's act of entering particulars on the Register. Here, as no error was made "in entering in the Register" the change of name, s 81 did not permit the delegate's purported exercise of power. The provision had a narrower sphere of operation than the Court's powers under s 85 and s 88(1)(b). Further, the delegate's correction of the historical change of name particular under s 81 provided no basis for the relief granted: no application was made to correct any particulars relating to Laminar's ownership of the trade marks. No application was made to correct or cancel the assignment from AES to Laminar. Mediaquest did not stand for the proposition that, having identified an erroneous historical particular, the Registrar could under s 81 then proceed to determine the legal entity that owned the mark to which that error related and, in effect, remove a subsequent owner of the mark.
26 Laminar also submitted that, if the decision of the delegate was not ultra vires, the delegate erroneously held that the discretion was qualified by ss 109 and 110. Laminar asked the delegate to consider, in the exercise of his discretion, whether the trade marks were assigned from Vokes and, further, their subsequent chain of title. Laminar's primary case was that the evidence established that Vokes was the owner of the trade marks until 1998, when they were assigned to BTR Industrial Holdings Ltd, following which they were assigned to AES. Laminar's first alternative case was that even if Vokes had remained the beneficial owner of the trade marks, it could not be entered as the registered owner of at least two of those marks because it had assigned them to a company named SPX Vokes Limited in 2007. Laminar's second alternative case was that the discretion not be exercised in favour of Vokes because of laches, estoppel and/or acquiescence.
27 In oral submissions, counsel for Laminar submitted it was not in dispute that the change of name form was the wrong form: it should have been a form recording an assignment to AES, but Laminar intended that an assignment should have been registered, and that was reflected in [7] of the Decision, in the second sentence. The change of name form was submitted by an agent of AES, Ms Jacqui Pryor.
28 Laminar submitted that the Registrar's power in s 81 was limited to the correction of errors or omissions made in the course of her act of entering particulars in the Register, and it was not a broad-ranging power to interfere with substantive trade mark rights like ownership. Rather, those disputes under the Trade Marks Act were to be dealt with by the courts.
29 Laminar distinguished Mediaquest because there was a priorities argument, and s 22 would come into play. Section 22 provided:
22 Power of registered owner to deal with trade mark
(1) The registered owner of a trade mark may, subject only to any rights appearing in the Register to be vested in another person, deal with the trade mark as its absolute owner and give in good faith discharges for any consideration for that dealing.
(2) This section does not protect a person who deals with the registered owner otherwise than:
(a) as a purchaser in good faith for value; and
(b) without notice of any fraud on the part of the owner.
Note: For registered owner see section 6.
(2A) …
(3) Equities in relation to a registered trade mark may be enforced against the registered owner, except to the prejudice of a purchaser in good faith for value.
Note: For registered owner and registered trade mark see section 6.
30 Laminar submitted that s 20 set out the rights given by registration to a registered owner and, in essence, they were in the nature of a negative right, that is, a right to exclude all others. The ancillary right to that exclusive right was set out in s 20(2), being a right to obtain relief, including injunctive and pecuniary relief. By s 20(3), the rights were taken to have accrued to the registered owner as from the date of registration of the trade mark. By s 21, a registered trade mark was personal property.
31 Laminar submitted that the phrase "error or omission made in entering in the Register" was primarily an error or omission by the officers. Laminar submitted that its construction of s 81 was within the concept in para 46.D. of the extrinsic material and [68] of the explanatory memorandum to the Trade Marks Bill 1995. The extrinsic material was a report to the Minister for Science and Technology in July 1992 "Recommended Changes to the Australian Trade Marks Legislation" which stated:
There should be provision for the Registrar to correct, of his own motion, clerical errors in entries in the Register effected by officers of the Trade Marks Office, provided that no change in the scope of the registration results from the amendment.
The explanatory memorandum referred to:
Errors or omissions made in entering particulars of a registration in the Register may be corrected on the Registrar's own initiative.
32 This was also consistent with the scheme of the Trade Marks Act. Section 81 was to be contrasted with ss 85 and 88(1)(b). Section 85 did not use the phrase "in entering" as s 81 did. Also, s 85 was invoked on an application to a court by an aggrieved person, not by the Registrar's own initiative. In prescribed courts, such as the Federal Court, there would be a right of appeal to the Full Court from a single judge's determination under that provision. Section 88(1)(b) did not use the phrase "in entering" and significantly referred to an application being made by the Registrar to a court to amend an entry wrongly made on the Register according to any of the grounds referred to in s 88(2).
33 Laminar submitted there was good reason applications to amend the Register to affect property rights were in the domain of the courts. They often involved a variety of legal and equitable principles including competing legal and equitable interests, doctrines of mistake, and estoppel, which were the domain of courts and not the domain of an administrative body and it was important to recall the restrictions of s 22(3) about enforcing equities. It was unlikely, Laminar submitted, that Parliament intended that valuable property rights could be taken away from a person by the Registrar's own initiative and without the possibility of an appeal.
34 Laminar submitted that ss 83 and 83A were the only powers given in the Trade Marks Act to the Registrar to amend particulars of a registered trade mark.
35 Laminar drew to attention the contrast in the titles. The language in s 81 used "Correction of Register": s 83 used "Amendment of particulars" and s 83A "Amendment of registered trade mark". Under s 83, the "Amendment of particulars of trade mark entered in Register", that amendment could only be done at the written request of the registered owner. The power of the Registrar was circumscribed in that it provided particular grounds for amending and they were set out in s 83(1)(a) to (c) and did not interfere with substantive rights. Under s 83(2), an appeal lay to the Federal Court or to the Federal Circuit Court. Section 83A(2) made clear that it could only be used on a written request by the registered owner of the mark. The section set out a circumscribed power, that is, it provided particular grounds for amending the mark. As made clear in s 83A(8), an appeal lay to the Federal Court, or the Federal Circuit Court, as of right. And s 83A also relevantly set out advertising and opposition procedures. None of that was found in s 81.
36 Part 6 of the Trade Marks Act dealt with the Registrar's power to amend an application for registration. An application for registration was the step before obtaining a valuable registered property right. That Part must be read with the accompanying Trade Marks Regulations. What was clear was that, again, only the applicant for registration of a trade mark may apply for amendments. If the applicant objects, the Registrar cannot amend. It also made clear that the Registrar's powers were circumscribed in a number of respects. It set out particular grounds as to when and on what grounds an amendment may be ordered. It set out particular procedures, such as oppositions and advertising. Section 67 provided that an appeal lay to the Federal Court or Federal Circuit Court from a decision of the Registrar under the Part. It was incongruous that an applicant for registration would enjoy greater safeguards in respect of amendment than a registered owner would enjoy under Pt 8. That was because a registered right was a valuable right, the subject of particular powers under the Act.
37 Laminar also relied on s 63(2) as the only other provision conferring a discretion on the Registrar, on his or her own initiative, to amend. It dealt with the amendment of applications.
38 Laminar submitted, in the alternative, that if the Registrar had power under s 81, it was ultra vires for the delegate to determine that Vokes should be substituted as the registered owner in view of the later assignment, dated 12 October 2005, between AES and Laminar of all of the trade marks presently in dispute. This assignment was recorded in the Register. Section 22 had effect. There was no application before the delegate to correct the particular as to the assignment from AES to Laminar.
39 Laminar submitted that Mediaquest was wrongly decided because it misconstrued s 81, but in any event was distinguishable so far as concerned the second ultra vires argument set out in [38] above. Unlike in the present case, Mediaquest did not deal with a situation where there was a later assignment of the registered trade marks. There was no priorities dispute. Section 22 issues were not in play. Laminar also submitted that the substantive question before the Court in Mediaquest was the ownership of the mark whereas the present case did not involve that question. Laminar submitted that s 81 was not the appropriate provision to deal with the correction of an underlying misconception of ownership.
40 In the further alternative, Laminar submitted the delegate nonetheless erred in his understanding of the discretion conferred by s 81, saying it was fettered by ss 109 and 110, and therefore misapplied that provision. Also the delegate failed to consider matters of discretion insofar as they concerned Vokes. The delegate's focus appeared to be somewhat one sided. It was directed to Laminar or perhaps even to AES. Section 81 required a correction of the Register. Vokes had itself filed evidence below suggesting that it had assigned at least two of the trade marks, to SPX Vokes Limited. The transfer date under the agreement was 1 January 2006. The agreement was dated 5 December 2007. That was some seven years before the application was made by Vokes to correct the Register and seek the remedy that it be substituted as the registered owner. Even on Vokes' case it was not the owner of at least two of the registered trade marks. So the delegate could not correct the Register by registering Vokes as the owner of those trade marks and, on any view, that would lead the delegate to create an error in the Register.
41 As to the claimed errors of fact, I have set out the competing submissions at [20]-[23] above.
42 Vokes submitted that Laminar, through its related company AES, gained title as a result of an error. Vokes was wrongly removed as the registered owner of the registrations by the filing of a false change of name form. The delegate was correct in determining that the registration should revert to Vokes in circumstances where the change away from Vokes was ultra vires. If Laminar had title from Vokes as it claimed, it should make an application under s 107 supported by the relevant documentation so that it could properly be recorded as an assignee. Where a trade mark registration had been wrongly transmitted, it may be corrected by means of s 81. The identity of the registered owner could only be properly altered by valid assignment, transmission, cancellation or "probative provisions".
43 In answer to Laminar's first contention Vokes submitted that the error corrected clearly fell within the express wording of s 81: the changes made on 17 August 2001 involved removing Vokes and wrongly entering AES (and subsequently entering Laminar) into the Register as the owner of the registrations.
44 In answer to Laminar's third contention, Vokes submitted the only application for transmission and supporting assignment filed with the Registrar showed nothing more than a purported assignment of rights as between AES and Laminar. There was never any assignment filed in support of these changes requesting transmission from Vokes to Laminar. If AES was wrongly entered as the owner it followed that AES had no right to transfer those registrations to Laminar and that assignment should not have been actioned. The same error identified by the delegate infected the basis upon which Laminar came to be entered on the Register. The only way to cancel the earlier action was to revert the registrations back to Vokes. The fact that Laminar registered an assignment from AES did not take the present case outside the scope of s 81 or preclude the delegate from exercising power under that section. Vokes referred in this respect to Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 at [45].
45 In answer to Laminar's fourth contention, Vokes submitted that Laminar raised a number of disparate arguments which appeared to boil down to the assertion that the delegate had not exercised his discretion in its favour. Vokes submitted that it was not surprising that the delegate, having determined that AES (and subsequently Laminar) was wrongly included on the Register, then directed that it be corrected. The Trade Marks Act provided a mandatory procedure for changing ownership as set out in s 107. This procedure was not followed and the Registrar acted without power in making the name change. The result of the decision was that the Register merely reverted to the position before the Registrar acted ultra vires. It was absurd to suggest that Laminar could not apply to have an assignment registered. Neither Laminar nor any other party ever filed an application to record an assignment from Vokes, the owner listed on the Register, as required by s 107. Vokes submitted it was not unreasonable for the registrations to revert to Vokes or to require the proper mandatory steps to take place. There was no error in referring to the assignment provisions as they illustrated the correct way in which the Trade Marks Act dictated title should be transferred. Laminar could still take transition of title (assuming it could provide the evidence) by following the statutory scheme in ss 107-110.
46 In oral submissions, Vokes contended the structure of the Act was to confine consideration to the documents that were filed to effect the relevant changes, and there were two relevant changes made to the particulars in this case. Vokes was the owner of a suite of registered marks. A company unrelated to Vokes, which was formerly a distributor, filed a change of name document which misrepresented the position to the Registrar that there had been a change of name. There was no change of name. The Registrar actioned that change of name, accepting the document, and entered into the Register the name of AES. That entering into the Register was precisely within the scope that s 81 envisaged. That was in error. The change to that particular away from Vokes was beyond power. The Trade Marks Act did not allow the Registrar to change the name under s 216, because there was no change of name. It was desirable that where the Registrar made a mistake she had a power to correct it. There was no stability to a Register where someone can file the wrong documentation, take ownership of someone else's mark and then say the Registrar cannot remedy that situation, the aggrieved party must make an application to the court.
47 The change of name also had ramifications for the assignment. Because the assignment was only as between AES and Laminar, if AES was not listed on the Register as the owner, then the assignment could never be registered to Laminar. There was no assignment application filed from Vokes all the way through to Laminar. There were no assignment documents as between Vokes and AES, whether at 2001 or thereafter. There was no assignment filed to take the trade marks away from Vokes and there was no accompanying documentation provided to take the trade marks away from Vokes.
48 Despite the fact that Vokes was on the Register in 2001, the change of name document under s 216 dated 15 August 2001 was not filed by it. The October 2005 application to record an assignment or transmission as between AES to Laminar was filed at the time when AES was listed on the Register as the owner but should not have been so listed because it had wrongly been put on the Register. The deed of assignment was purely between AES and Laminar.
49 If the Registrar had identified her error in recording the wrong change of name, sometime after 2001 but before 2005, the Registrar could not have validly accepted the application, because if the Registrar had discovered her error, and then decided to correct it under s 81, it would have been in error, with Vokes being the proper registered owner, to register an assignment, in circumstances where that assignment was only as between AES and Laminar. It was an error to transfer to AES, and it did not cease to be an error because Laminar, then a related company, filed an assignment.
50 Section 81 dealt with any error and was not limited to a clerical error. There was a contrast with ss 64-66 which spoke about clerical error or obvious mistake. Here the Registrar entered in the Register the name AES as the registered owner of the mark and that was in error. Subsequently the Registrar entered into the Register Laminar as the owner in circumstances where the assignment was not effective and that was an error "in entering". The words "in entering" encompassed an error that was made by the Registrar at the time the entry was made into the Register. That was narrower than s 85 but not so narrow that it did not cover the present case. In effect, what s 81 was talking about was that the Registrar, when she takes an action in respect of her administration of the Register, can undo an action which she takes which at the time was wrong. It was wrong for the Registrar to action the change of name because there was not a change of name. If the Registrar was going to take an action and amend the name, under s 216, then the Registrar must consider the documentation and made an error by actioning the documentation.
51 Section 85 provided the power to correct an error. It involved an application to a court, but it did not follow that the power of the Registrar would be narrower. The Registrar was tasked with administering the Act and with properly ensuring that the Register was kept. The mere fact that there were different provisions under s 85 did not mean that there should be a gloss placed on s 81. The Registrar was bound by the rules of natural justice to allow the parties an opportunity to be heard, and her decisions were reviewable to this Court. So it was not antithetical to the Trade Marks Act to provide for an administrative power in the present situation. In fact, it would be somewhat absurd that s 81 would not cover it.
52 Vokes submitted that Mediaquest dealt with the very issue and should be followed. As stated in Mediaquest at [56], the scheme of the Trade Marks Act was not proprietorship by registration but registration of proprietorship. The questions were how was registration properly transferred and how was the Registrar required to do that. Section 109 had not been complied with. The registered marks were transferred away from Vokes, where the only way they could be transferred away from Vokes was by virtue of the assignment provisions. This was consistent with the statutory regime. Section 81 could not be used to remove an entry from the Register in its entirety: the appropriate avenue would be s 88. But that was not what Vokes sought to do.
53 In reply, Laminar submitted that the Registrar had made no error in entering the change of name in the Register in light of s 216 which compelled the Registrar to enter the change of name. The Registrar was not required to make enquiries as to who was making the application. The Registrar advertised the change of name in the Australian Official Journal of Trade Marks (Vol. 15 No. 31) so that an aggrieved person could apply to a court under s 85 or s 88(1)(b). The courts were the bodies well equipped to deal with the priorities in terms of equities and to deal with substantive issues. Laminar referred to Edwards v Liquid Engineering 2003 Pty Ltd [2008] FCA 970; 77 IPR 115, I assume at [8]-[10], for the proposition that it was not permissible to move under the wrong provision of the Act. If Vokes wanted to agitate the correctness of the 2001 decision it should have moved under s 85 or s 88(1)(b). Further, the Trade Marks Act did not work on the basis that if an error was found in the change of name form in 2001 then that would invalidate later assignments: this was contrary to s 22 and how priorities worked under the Act.
54 Laminar submitted that to contend, as did Vokes, that the Registrar should have known that there was an error on the face of the document, was putting the Registrar in a position the Trade Marks Act did not intend, in light of the terms of s 216; the prescriptive nature of that provision; and the fact that there was no requirement on the Registrar to make that assessment.
55 As to the point of the later purported assignment from Vokes to SPX Vokes Limited, Laminar's primary case was that that assignment was ineffective as it did not assign anything, but what it did demonstrate was that by ignoring that assignment the delegate did not understand the discretion that he was exercising. The delegate could not make Vokes the registered owner because the delegate would be creating an error in the Register, as opposed to correcting it.