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[2012] FCA 768
Federal Court of Australia
2012-07-30
Emmett J
Original judgment source is linked above.
REASONS FOR JUDGMENT 1 This proceeding is concerned with the ownership of Australian trade mark registration number 741047 (the Registered Mark). The Registered Mark consists of the words PEEL AWAY, shown in a particular way (the Peel Away Mark). The substantive dispute is between the applicant, Mediaquest Communications LLC (Mediaquest), and the executors of the estate of the late Michael Brailsford. Mr Brailsford died on 9 September 2008. The proceeding also raises administrative law questions involving the first respondent, the Registrar of Trade Marks (the Registrar). The proceeding began as a challenge to a decision made by the Registrar to cancel an entry made on the Register of Trade Marks (the Register) kept under the Trade Marks Act 1995 (Cth) (the Act). The entry in question recorded an assignment and transmission of the Registered Mark from Mr Brailsford to Mediaquest. It subsequently became apparent that the outcome of the substantive dispute between Mediaquest and Mr Brailsford's estate would have a bearing on the Registrar's decision. 2 The Registered Mark was registered under the provisions of the Act in the name of Mr Brailsford with a priority date of 11 August 1997. It is registered in class 3 for paint stripping preparations and other similar goods. 3 On 23 September 2010, the Registrar received from Mr Kenneth McInnes, a trade mark attorney, an application to record assignment of the Registered Mark to Mediaquest. The application was dated 21 September 2010. On 8 October 2010, the assignment was recorded in the Register and Mediaquest was accordingly recorded as the owner of the Registered Mark. 4 On 12 November 2010, the Registrar received a letter from Mr Garry Wilson, a trade mark attorney acting for the estate of Mr Brailsford. Mr Wilson's address was Mr Brailsford's address for service for the purposes of the Registered Mark and Mr Wilson complained about the registration of the assignment to Mediaquest without notification to him. Mr Wilson asked how the assignment had come to be recorded, and whether the Registrar was of the view that the assignment had been properly recorded. Mr Wilson requested that the assignment be "overturned". 5 On 22 November 2010, the Registrar wrote to Mr McInnes, saying that the documentation received in support of the assignment was inadequate as proof of assignment. The letter of 22 November 2010 said that the Registrar was of the view that the assignment was recorded incorrectly and, therefore, intended to cancel the assignment under s 81 of the Act. Mr McInnes responded on 26 November 2010, asserting that procedural fairness required that the current status quo not be altered without the opportunity for Mediaquest to be heard, and without the reinstatement of a non-use action that Mediaquest had commenced but had then withdrawn, on the basis of the assignment. 6 After further exchanges of correspondence, directions were given for the representatives of both Mediaquest and the estate of Mr Brailsford to file written submissions, and a hearing was conducted by a delegate of the Registrar on 7 March 2011. At the hearing, Mr McInnes appeared on behalf of Mediaquest, and Mr Wilson appeared on behalf of the estate of Mr Brailsford. On 26 May 2011, for reasons published on that day, the delegate made a decision that, as Mediaquest did not provide any prescribed document clearly demonstrating proof of title, the assignment application was not properly made. 7 The delegate was not satisfied that the documentation provided by Mr McInnes supported the assignment to Mediaquest, since there is no mention of the Registered Mark in the documentation, and nothing had been put to the delegate that persuaded her to draw the inference about ownership that she was invited by Mr McInnes to draw. The delegate therefore decided that the assignment to Mediaquest should be cancelled one month after the date of the decision. She said that, if the Registrar was notified of an appeal from the decision, the cancellation would not proceed until the appeal had been discontinued, or orders were made by the Court, in which case the registration would be subject to those orders. 8 In its further amended originating application of 15 February 2012, Mediaquest claims a declaration that the Registrar lacked the jurisdiction or power to cancel the registration of the assignment, and an order that the decision of the Registrar's delegate be set aside. In the alternative, Mediaquest claims a declaration that it is the owner of the Registered Mark and an order under s 85 or s 88 of the Act correcting the Register to show Mediaquest as the registered owner of the Registered Mark. 9 The substantial issue in the proceeding has been the question of ownership of the Registered Mark. The question of the Registrar's powers is essentially procedural background to the substantive dispute between Mediaquest and the estate of Mr Brailsford. There is no dispute as to the essential facts that give rise to the disputes raised in the proceeding, and I shall state those facts shortly. It is convenient to deal first with the substantive dispute and then with the question as to the powers of the Registrar.
ownership of the Registered mark 10 When a director of a company acquires a commercial opportunity as a result of his engagement as director, the benefits of taking that opportunity belong, in equity, to the company, whether or not the company would or could have taken up the opportunity (see Warman International Ltd v Dwyer (1995) 182 CLR 544 at 558). A director must account to a company of which he is a director for any benefit or gain that has been obtained or received, in circumstances where a conflict or significant possibility of conflict exists between the director's fiduciary duty to the company and the director's personal interest in the present or possible receipt of such a benefit or gain (see Chan v Zacharia (1984) 154 CLR 178 at 199). 11 A director will act in breach of his fiduciary duty to a company if the director takes up an opportunity for profit where there is a sufficient temporal and causal connection between the duty and the opportunity. Whether there is a sufficient connection in any particular case may depend upon a number of factors, such as the circumstances in which the opportunity arises, the nature of the opportunity, and the nature and extent of the company's operations and anticipated future operations. It is necessary to determine the scope of the fiduciary duty owed by the director to the company in the circumstances of the particular case, and to identify the conduct or failure to act that is said to amount to a failure to discharge that duty. Having done so, the question is whether there is a sufficient temporal and causal connection between the fiduciary duty and the opportunity for profit that has been or is sought to be taken by the director (see SEA Food International Pty Ltd v Lam (1998) 16 ACLC 552 at 557). 12 Mediaquest asserts that Mr Brailsford acquired the Registered Mark on trust for Coating Removal Technology Limited (CRT), and that Mediaquest acquired CRT's beneficial ownership of the Registered Mark by transmission and assignment on the bankruptcy of CRT. The substantive question, therefore, is whether, although the Registered Mark was registered in the name of Mr Brailsford, the beneficial owner of the Registered Mark was CRT. 13 Mr Brailsford applied to register the Peel Away Mark in Australia in August 1997. Following Mr Brailsford's death, his motivation in doing so and the circumstances surrounding his decision to do so can only be the subject of inference and speculation. However, on 16 July 1999, Mr Brailsford swore an affidavit in a proceeding in a Massachusetts court between Fiberlock Technologies Inc (Fiberlock), as plaintiff, and CRT, Pilgrim Trading Limited (Pilgrim) and Mr Brailsford, as defendants (the Fiberlock Proceeding). Further, on 16 October 2001, Mr Brailsford swore an affidavit in connection with a bankruptcy application made in relation to the Fiberlock Proceeding. Some information as to the circumstances surrounding the Peel Away Mark and its ownership can be gleaned from those affidavits, as well as from other business records. The materials, however, are somewhat sparse. 14 Peel Away is the trade name of a group of patented paint stripping products combining a paint stripping paste and a laminated paper blanket. The products encompass a principle for which a patent was granted to Mr Brailsford in 1984. Under the patented method, the painted surface is covered with the paste and the blanket is placed over it. That combination causes a chemical reaction that loosens the paint from the surface. The loosened paint and paste adhere to the blanket. After the requisite waiting time, the paint is easily peeled away with the blanket. Mr Brailsford owned the intellectual property rights to that system. 15 The Peel Away Mark was first used in the United States, at the latest, in August 1981. In the early 1980s, Mr Brailsford assigned what he described as "the licence rights" to Pilgrim, a company incorporated in the United Kingdom. Mr Brailsford was the president of Pilgrim. On 5 February 1985, United States trade mark registered number 1318744 was granted to Pilgrim. On 15 February 1992, a second trade mark application was filed in respect of the Peel Away Mark, which was subsequently granted to Pilgrim, with registered number 1735957. I shall refer to those two trade marks as the US Marks. 16 On 18 December 1986, Pilgrim granted to Dumond Chemicals Inc of New York (Dumond), an exclusive licence to use and exploit, in the United States, Puerto Rico and Canada, certain trade mark rights, together with patent rights and knowhow relating to the Peel Away paint stripping system (the Dumond Licence). The trade mark rights were described as "Peel-Away I and logo", "Peel-Away II and logo" and "Patina and logo". The initial term of the licence was to expire on 31 December 1991, with automatic renewal for additional one year terms. The Dumond Licence appears to grant rights only in respect of the first of the US Marks, since the application for the second of the US Marks was not made until 1992. However, I do not understand anything to turn on that fact. 17 On 30 November 1992, Pilgrim assigned its entire interest in and the goodwill associated with the US Marks to Mr Brailsford. At that time, the second of the US Marks had not yet been granted to Pilgrim, although the application had been made. The assignment of 30 November 1992 would appear to have included the benefit and associated burden of the Dumond Licence, which was then still on foot. 18 CRT was incorporated on 7 July 1993. Mr Brailsford was its president and was a director. As at 16 October 2001, Mr Brailsford was still the president and a director of CRT. There is every reason to draw the inference that that situation persisted during 1997, when Mr Brailsford applied to register the Peel Away Mark in Australia. 19 On 30 August 1993, Mr Brailsford assigned his entire interest in and the goodwill associated with the US Marks to CRT. That assignment would also appear to have included the benefit and associated burden of the Dumond Licence, which was then still on foot. On the same day, CRT appointed Messrs Grimes and Battersby of Stamford, Connecticut, United States of America, as its representatives upon whom notices or process in proceedings affecting registration of the US Marks might be served. That appointment was signed by Mr Brailsford as president of CRT. 20 In his affidavit of 16 October 2001, Mr Brailsford said that CRT was engaged in the ownership of patents and trade marks for what was described as "an innovative paint product known as Peel Away". He said that the patents and trade marks were then licensed to Dumond, and that the revenues generated from that licensing arrangement were the sole source of income of CRT. On the basis of the presumption of continuity, it should be concluded that that position prevailed throughout the 1990s. 21 However, by the mid 1990s, there was apparently some uneasiness in the relationship between Pilgrim and Dumond, and, during 1997, Mr Brailsford began to negotiate with Fiberlock for a licence for the distribution of Peel Away products. In late 1997, Pilgrim notified Dumond of breaches of the Dumond Licence and that it intended to terminate the Dumond Licence at 31 December 1997. On 16 December 1997, Mr Brailsford, as president of CRT, wrote to Dumond, reminding Dumond of its obligations on termination of the Dumond Licence. Mr Brailsford suggested a form of letter to be sent to customers indicating that the Dumond Licence was terminated from midnight on 31 December 1997. 22 On 31 December 1997, Mr Brailsford executed a licence on behalf of CRT in favour of Fiberlock. That licence recited that CRT owned all rights and "removal knowhow" and other rights for removing paint and other coatings from surfaces marketed worldwide under the registered trade name Peel Away. The licence was for the United States for a term of five years, with an option to extend for a further term of five years. However, in the light of what was said by Mr Brailsford in his affidavit of 16 October 2001, to the effect that revenue from the Dumond Licence was CRT's only source of income, it appears that the licensing to Fiberlock did not proceed, possibly as a result of some compromise of the Fiberlock Proceeding. 23 On 28 May 1998, CRT applied to the United Kingdom Patents Office in relation to a patent for a paint stripping system. Mr Brailsford was described as the inventor, and CRT was said to have derived the right to apply for the patent by virtue of an agreement with Mr Brailsford. 24 On 20 November 1998, a declaration of use in relation to the US Marks was lodged with the United States Patent and Trademark Office. The declaration was signed by Ms Suzan Macy, who was described as the vice-president of CRT. The declaration asserted that the US Marks had been in continuous use in interstate commerce within the United States for five consecutive years from the date of registration to that time, and were still in use in interstate commerce within the United States in connection with all of the goods and services in all of the classes recited in the registration. That says nothing about use or ownership in other parts of the world. 25 On 14 November 2002, Mr Brailsford signed a declaration to the United States Patent and Trademark Office requesting renewal of the registration of the US Marks in favour of CRT. The declaration asserted that CRT was using US Marks in commerce on, or in connection with, the goods listed in the existing registration. That, again, says nothing about use in other parts of the world. 26 In July 2003, CRT entered into a further licence agreement with Dumond (the Second Dumond Licence), which recited that CRT was the owner and had the right to use, or permit the use of: the trade mark Peel Away in all international classifications covering paint removal products; US patents numbers 4579627 and 5188675, including any continuations to those patents; and the technical knowledge and expertise possessed by CRT to use the paint removal products. 27 The Second Dumond Licence was to be exclusive in the United States, Canada and Mexico. It provided that, if net sales in a calendar year in other geographic regions listed met or exceeded the amount specified, that geographic region would be exclusive for the remainder of the term of the Second Dumond Licence or any renewal term. The geographic regions listed were: Central/South America; Europe (excluding the United Kingdom and the Netherlands); Eastern Europe, including Russia, Bulgaria and Estonia; the Middle East; the Far East (including Japan, China, Korea, Taiwan, Singapore and the Philippines); and Africa. 28 The Second Dumond Licence appears to be the first time, apart from the United Kingdom patent application, to which I have already referred, when any suggestion was made that the rights of CRT in relation to the Peel Away intellectual property extended beyond the United States. In the Second Dumond Licence, however, the United Kingdom is expressly excluded, and there is no mention of Australia. By that time, of course, the Registered Mark had been granted to Mr Brailsford. 29 Mediaquest contends that the circumstances outlined give rise to an inference that, when Mr Brailsford decided to register the Peel Away Mark in Australia in his own name, he did so in circumstances where that registration may have represented a valuable opportunity for a company of which he was the president, managing director or chief executive officer. Mediaquest points to the fact that there is no evidence of any informed consent on the part of CRT that would prevent those principles from applying to Mr Brailsford's acquisition of the Registered Mark. Mediaquest contends that there is no basis for concluding that Mr Brailsford may have acquired the opportunity to register the Peel Away Mark in Australia in any private capacity. It asserts, therefore, that either Mr Brailsford obtained the Registered Mark on behalf of CRT, or he should be treated in equity as having been obliged to do so. Either way, Mediaquest says, CRT, and any assign of CRT, would be entitled to a declaration of ownership of the Registered Mark. The difficulty for those contentions of Mediaquest is the paucity of evidence concerning Mr Brailsford's activities and his relationship with Pilgrim and CRT. 30 Under s 19 of the Act, a trade mark may be registered in respect of goods, services or both goods and services. Under s 20, if a trade mark is registered, the registered owner has the exclusive right to use the trade mark and to authorise other persons to use the trade mark in respect of those goods or services. A registered trade mark is personal property, and the registered owner may deal with the trade mark as its absolute owner. 31 The Registered Mark constitutes a different item of property from the US Marks. The registration of the Registered Mark created a monopoly in Australia in favour of the registered holder. The item of property constituted by the Registered Mark is a distinct item of property from anything shown to have been dealt with by CRT. There is no reason why a particular mark might not be owned by different entities in different jurisdictions. That is to say, there is no inconsistency between CRT being the owner of the US Marks in the United States or elsewhere and Mr Brailsford being the owner of the Registered Mark in Australia. The question, however, is whether the opportunity to acquire the property that was brought into existence by the registration of the Registered Mark represented an opportunity that came to Mr Brailsford by reason of his being a director of CRT. 32 There is nothing in the materials to suggest that CRT at any time dealt with or purported to deal with rights in relation to the Peel Away Mark in Australia. The evidence demonstrates clearly enough that CRT was the owner of the Peel Away mark in the United States. While CRT is a company incorporated under the laws of Jersey in the Channel Islands, it does not appear to have engaged in any activity outside the United States or the United Kingdom. Specifically, there is no evidence that it engaged in any activity related to Australia. 33 Both Pilgrim and CRT appear to have been creatures of Mr Brailsford. There is no evidence as to Mr Brailsford's motivation or reasons for incorporating Pilgrim and assigning his rights to that company. Nor is there evidence as to Mr Brailsford's motivation or reasons for reacquiring the rights from Pilgrim and then assigning them to CRT. 34 The contention advanced on behalf of Mediaquest is that Mr Brailsford acquired the opportunity to register the Peel Away Mark in Australia by reason of his being a director of CRT. However, that can only be an inference. The circumstance that Mr Brailsford had dealings with the Peel Away mark before CRT was incorporated gives rise to a contrary inference. That is to say, it does not necessarily follow that the opportunity of registering the Peel Away mark in Australia was one that came to Mr Brailsford by reason of his being a director of CRT. Rather, an inference is at least available, and may perhaps be more easily drawn, that CRT acquired whatever opportunity it had to exploit the Peel Away Mark, and associated technology and knowhow, because Mr Brailsford chose to make it available to CRT. 35 Under s 27 of the Act, a person may apply for the registration of a trade mark if the person claims to be the owner of the trade mark and, relevantly, one of the following applies: the person intends to use the trade mark; the person intends to authorise another person to use the trade mark; or the person intends to assign the trade mark to a body corporate with a view to the use by the body corporate of the trade mark. There is no evidence to suggest that CRT ever used or intended to use the Peel Away Mark in Australia. 36 In the absence of evidence as to the circumstances surrounding the incorporation of CRT and the assignment of the US Marks by Mr Brailsford to CRT, there is no basis for concluding that the opportunity of using the Peel Away Mark in Australia was one that came to Mr Brailsford by reason of his being a director or chief executive officer of CRT. I am not persuaded that it is more likely than not that Mr Brailsford acquired the Registered Mark by reason of his position as a director and chief executive officer of CRT. 37 Even if Mr Brailsford held the Registered Mark on trust for CRT, it would still be necessary for Mediaquest to establish that it has acquired CRT's rights by way of assignment or transmissions. It claims to have done so by reason of bankruptcy proceedings in the United States. 38 On 5 May 2008, a trustee in bankruptcy was appointed to CRT, with power to realise its assets. The trustee entered into a deed of assignment and a bill of sale with Mediaquest, whereby the trustee assigned all of CRT's rights in relation to the Peel Away Mark and related rights, together with those claims that CRT may have against Mr Brailsford. Those words are clear enough to embrace any right that CRT may have had against Mr Brailsford in respect of the registration of the Registered Mark. If Mr Brailsford held the Registered Mark on trust for CRT, it would be appropriate to treat him, and his estate, as holding that property on trust for Mediaquest. 39 However, in the light of the conclusion that I have reached, there was no entitlement on the part of CRT to the Registered Mark that vested in CRT's trustee in bankruptcy. Accordingly, there was no assignment or transmission to Mediaquest of any rights in relation to the Registered Mark. It follows that Mediaquest's claim for a declaration that it is the beneficial owner of the Registered Mark should be dismissed.
the power of the registrar to cancel the record of the assignment of the Registered mark 40 In light of the conclusion that Mediaquest is not entitled to a declaration that it is the beneficial owner of the Registered Mark, it would follow that appropriate steps could be taken to rectify the Register by restoring the name of Mr Brailsford as the registered owner and transmission into the name of his executors. The first necessary step would be achieved if the decision of the Registrar's delegate of 26 May 2011 were to take effect. It is therefore desirable that the question of the validity of that decision be examined. 41 Under s 27 of the Act, as I have said, a person may apply for the registration of a trade mark if, relevantly, the person claims to be the owner of the trade mark. The Registrar must examine and report on the application and must accept the application, unless satisfied that the application has not been made in accordance with the Act or that there are grounds under the Act for rejecting the application. The grounds for rejecting an application are set out in ss 39 to 44. They do not include a ground that the applicant is not the owner of the trade mark. 42 Under s 52, a mechanism is provided by which a person may oppose the registration of a trade mark, in a case where the Registrar has accepted an application for registration. The grounds for opposing registration are set out in ss 57 to 62A. Section 57 incorporates the grounds for rejecting an application in ss 39 to 44. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. 43 Section 68 provides that, where an application for registration of a trade mark has been accepted, the Registrar must register the trade mark if there has been no opposition or, if there has been an opposition, where the Registrar has decided that the trade mark should nevertheless be registered. That is to say, the Register may decide, over a ground of opposition that the trade mark is not owned by the applicant, that the trade mark is in fact owned by the applicant, and then proceed to register the trade mark. 44 Registration is effected by entering various particulars in the Register. The particulars include the name of the applicant for registration, the relevant goods or services, and a graphical representation of the mark. 45 Part 8 of the Act, which deals with the amendment, cancellation and revocation of registration, consists of ss 81 to 91. Under s 81, the Registrar may correct any error or omission made in entering in the Register any particular in respect of the registration of a trade mark. In addition, under s 85, a prescribed court may order that the Register be rectified by entering in the Register particulars that were wrongly omitted from it, or correcting any error in an entry in the Register. 46 Part 10 of the Act deals with assignment and transmission of trade marks. Part 10 consists of ss 106 to 111. Under s 106, a registered trade mark may be assigned or transmitted in accordance with that section. The assignment or transmission may be with or without the goodwill of the business concerned in the relevant goods or services. Under s 109, if a registered trade mark is assigned or transmitted, the person registered as the owner of the trade mark, or the person to whom the trade mark has been assigned or transmitted, must apply to the Registrar for a record of the assignment or transmission to be entered in the Register. The application must be filed, together with any prescribed document, in accordance with the Trade Marks Regulations 1995 (Cth) (the Regulations). 47 For the purpose of s 109, the Regulations relevantly prescribe a document that establishes the title to a trade mark of the assignee or of the person to whom the trade mark has been transmitted. Section 110 then provides that, if the application complies with the Act, the Registrar must enter the particulars of the assignment or transmission in the Register, and register the person to whom the trade mark has been assigned or transmitted as the owner of the trade mark in relation to the goods or services in respect of which the assignment or transmission has effect. 48 Jurisdictional facts in relation to a decision are criteria the satisfaction of which enlivens the power of a decision-maker to make a decision (Enfield City Council v Developments Assessment Commission (2000) 199 CLR 135 at [28]). Where, on its proper construction, a statute requires that the absence of such criteria would invalidate the exercise of the power to make the decision, a court with judicial review jurisdiction must give effect to that intention by enquiring into the existence of the relevant criteria (see Timbarra Protection Coalition Inc v Ross Mining NL (1999) 46 NSWLR 55 at [40]). A number of considerations suggest that actual assignment or transmission is a jurisdictional fact underlying the exercise of power under s 110. That is to say, ss 109 and 110 are not engaged unless there has been an actual assignment or transmission of a trade mark. 49 First, s 106 permits a registered trade mark to be assigned or transmitted in accordance with that section. Sections 109 and 110 then provide the mechanism for an assignment or transmission to be registered. Sections 109 and 110 presuppose that there has been an actual assignment or transmission in accordance with s 106. 50 The language of ss 109 and 110 supports that conclusion. Thus, s 109 only applies if a registered trade mark is assigned or transmitted. In such a case, either the person registered as the owner of the trade mark or the person to whom the trade mark has been assigned or transmitted must apply to the Registrar. The application must, under s 109 and the Regulations, be accompanied with a document that establishes the title to the trade mark of the assignee or of the person to whom the trade mark has been transmitted. Section 110 is only enlivened if the application for a record of the assignment or transmission complies with the Act. The language of s 110 is not expressed in a way that involves the mental state of the Registrar, such as by including a reference to the Registrar's opinion, belief or satisfaction. Rather, it speaks in terms of what has actually occurred. 51 The language of s 109 might be contrasted with that of s 27. Section 27 requires that an application for the registration of the trade mark be made by a person who claims to be the owner of the trade mark. The fact that the claimant is not the true owner of the trade mark is not a ground for rejecting an application, although it is a ground of opposition. That is to say, the Registrar cannot, at that stage, enquire as to whether the applicant is in fact the owner. 52 The absence of any procedure in Part 10 for opposing the recording of an assignment or transmission, on the basis that there was no actual assignment or transmission, supports the view that Part 10 is predicated upon an actual assignment or transmission. Further, the absence of any appeal process relating to action taken under Part 10 would also support that conclusion. 53 I consider that the existence of an effective assignment or transmission is a necessary precondition to the making of a valid application under s 109 and the subsequent exercise of power by the Registrar under s 110. The absence of a valid assignment or transmission means that any purported exercise by the Registrar of the power conferred by s 110 would be affected by jurisdictional error. There is no reason in principle why the general law should treat administrative decisions involving jurisdictional error as binding or having legal effect unless and until set aside. A decision that involves jurisdictional error lacks legal foundation and is properly regarded, in law, as no decision at all (see Plaintiff S157/2002 v Commonwealth (2003) 211 CLR 476 at [76]). 54 There was no actual assignment of the Registered Mark to Mediaquest, either from Mr Brailsford or from his executors. Accordingly, the Registrar's decision of 8 October 2010 to record the assignment in the Register was tainted by jurisdictional error and was no decision at all. It was therefore open to the Registrar to reconsider whether the duty imposed by s 110 had been enlivened, by revisiting the question of whether there was an actual assignment or transmission of the Registered Mark to Mediaquest. Having determined that there was no actual assignment or transmission, it was open to the Registrar to take steps to cancel the earlier action. There is nothing in the Act to indicate that a decision of the Registrar under Part 10 that was affected by jurisdictional error should continue to have legal effect. Indeed the considerations outlined above suggest the contrary. 55 Mediaquest contends that permitting the Registrar to cancel a recording of a purported assignment would remove the limits on the Registrar's power to amend the Register that are found in Part 8. It contends that treating an actual assignment or transmission as a jurisdictional fact may lead to a situation where the purported registration of an assignment or transmission could be treated as a nullity by third parties, without a decision of the Registrar or of a court to that effect. It says that that could inject a degree of uncertainty into commercial dealings, which could be antithetical to the structure of the Act. 56 However, the scheme of the Act is not proprietorship by registration but registration of proprietorship. Registration under the Act is only prima facie evidence of ownership, as is provided by s 210. The registered owner is always susceptible to action being taken under Part 8 to revoke a trade mark that should never have been registered, or to substitute the true owner of the trade mark for that of a wrongful claimant. True ownership of a trade mark is a defence to infringement proceedings brought under the Act. To that extent, it is already open to third parties to ignore invalid entries in the Register. The construction of Part 10 contended for by Mediaquest would not permit the Registrar to undo invalid action purportedly taken under s 110. That would result in disconformity between the Register and reality. 57 The Registrar's decision of 26 May 2011, that the record of the assignment of the Registered Mark to Mediaquest be cancelled, was not affected by any error. The decision was within the power conferred on the Registrar by s 81 of the Act. Clearly, the name of the registered owner of a trade mark is a particular in the Register. Since that particular was erroneously changed by the Registrar, purportedly acting under s 110, it is within the Registrar's power under s 81 to correct the error made in respect of the registration of the Registered Mark.
Conclusion 58 The application should be dismissed. There is no reason why the decision of the Registrar's delegate made on 26 May 2011 should not be given effect. Mediaquest should pay the costs of the Registrar, as well as the costs of the executors of the estate of Mr Brailsford. I certify that the preceding fifty-eight (58) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.
Mediaquest Communications LLC
Registrar of Trade Marks
(1984) 154 CLR 178
(2000) 199 CLR 135
(2003) 211 CLR 476
(1999) 46 NSWLR 55
(1995) 182 CLR 544