Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd [1998] FCA 1209

BLACK CJ: Nettlefold Signs Pty Ltd ("Nettlefold Signs") is the respondent to an application by Nettlefold Advertising Pty Ltd ("Nettlefold Advertising") for leave to appeal from a judgment of Heerey J. The judgment from which Nettlefold Advertising seeks leave to appeal is a judgment dismissing its application to set aside a decision of a delegate of the Registrar of Trade Marks. The delegate dismissed Nettlefold Advertising's objection to a trade mark application lodged by Nettlefold Signs, and directed that the application proceed to registration. Before the Registrar and Heerey J, Nettlefold Signs relied on ss 28(a) and (d) of the Trade Marks Act 1955 (Cth), which provide: "A mark: (a) the use of which would be likely to deceive or cause confusion; ….. or (d) which would otherwise not be entitled to protection in a court of justice; shall not be registered as a trade mark." The application by Nettlefold Signs that is before me today is for an order that the application by Nettlefold Advertising for leave to appeal be heard and determined as a matter separate from, and prior to, the hearing of the appeal in the event that leave to appeal was granted. Nettlefold Advertising needs leave to appeal by reason of s 114(2) of the Trade Marks Act which provides: "Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court from a judgment or order of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals from decisions, directions or orders of the Registrar." Mr Berglund, who appears for Nettlefold Signs, argued that the policy underlying s 114(2) is that there should be a filter upon appeals from a decision of the Registrar of Trade Marks. He referred in particular to observations of members of the High Court in Coulter v The Queen (1987) 164 CLR 350 at 359. He argued that in the present case there are no circumstances that warrant leave to appeal being granted and he says that an order that the application for leave to appeal be heard as a separate matter would further the policy of s 114(2) and the requirements of the efficient administration of justice. He submitted, too, that the decision of Heerey J was plainly correct and that the proposed appeal was without merit. Mr Caine, who appears for Nettlefold Advertising, argued in substance that however one looks at the matter the merits of the appeal are inextricably bound up with the success or otherwise of the application for leave to appeal. He strongly contested Mr Berglund's submission that the proposed appeal was without prospects of success. Perhaps more importantly for present purposes, he drew attention to the essential nature of the motion now before me and its effect. He submitted that a decision by me now that the application for leave to appeal should be heard separately from any appeal would, as a practical matter, fetter the discretion of the judges hearing the application for leave to appeal to the extent that even if, having heard the submissions of the parties on the question of leave to appeal they had formed the opinion that leave should probably be granted, the Full Court as then constituted could not proceed to hear and determine the merits of the appeal. It could not do so even if it considered that it would thereby make the most efficient use of the time so far expended on the case and make the most efficient use also of the assistance already received from counsel in the course of argument on the application for leave to appeal. In intermediate appellate courts there often seems to be a tension between the policy that underlies the requirements for leave to appeal in certain types of case and the legitimate need to go into the merits in support of an argument that leave to appeal should be granted. Nevertheless there obviously will be cases under the registration provisions of the Trade Marks Act where it would indeed be desirable, in furtherance of the policy of s 114(2), to hear an application for leave to appeal separately from any appeal that might result from the application. In my view, however, this is not such a case. What the applicant for leave seeks to argue here is that decisions that the learned primary judge considered were binding upon him did not in fact bind him and were not decisive of the outcome. That argument would of course be central to the success of any appeal if leave were granted but it will also be important to the success of the application for leave to appeal, since it will doubtless be argued that if the argument has strength that fact in itself points to leave to appeal being granted. Mr Caine also drew attention to the fact that the observations of Deane and Gaudron JJ in Coulter v The Queen were directed to considerations arising in applications for special leave to appeal to the High Court, whereas I am concerned here with an application for leave to appeal from a decision made in the original jurisdiction of this Court. In my view the application by Nettlefold Signs should be rejected. The decisive circumstance is that the argument on the application for leave to appeal would necessarily be quite complicated and lengthy and would cover ground that would inevitably have to be covered again on the hearing of the appeal if leave to appeal were granted. I consider that it would be a wrong exercise of discretion to deprive the Full Court that will hear the application for leave, and the appeal itself if leave is granted, of the capacity to proceed in the way that it considers to be most efficient, appropriate and just in all the circumstances. In my view, the course that should be followed here is that the application for leave to appeal should be listed in a way that will enable the Full Court hearing the matter, if it considers it appropriate to do so, to hear and determine any appeal at the same time as, or immediately following, the hearing of the application for leave to appeal.