Philmac Pty Limited v Registrar of Trade Marks

REASONS FOR JUDGMENT 1 On 13 December 2002 I published reasons for judgment in this matter. I found that the colour terracotta as applied to inserts in certain of the applicant's polypipe irrigation fittings is capable of distinguishing, and does distinguish, certain of its fittings from the corresponding polypipe irrigation fittings of other persons. 2 The applicant had applied at the hearing to amend its trade mark application to apply to the connecting inserts and split rings of the particular fittings. I did not allow the proposed amendment, as I did not consider the split rings component of the fittings should attract trade mark protection. The respondent had also expressed concern that the colour to be registered, if the trade mark application were to be granted, should be more precisely described. I adjourned the application for the parties to consider my reasons, and to address the issue of costs. 3 The applicant now seeks leave to amend its trade mark application No.796 572 so the description of the trade mark is in the following terms: "The Trade Mark consists of the colour TERRACOTTA (PMS 484c +/- 10% *Lab, when observed under a controlled D65 illuminant), applied to the connecting inserts of the goods, as shown in the representation attached to the application. 4 The respondent does not oppose that amendment. I give leave to the applicant to amend the trade mark application in the terms sought. 5 It follows from my reasons for judgment of 13 December 2002 that the trade mark application as amended should then be registered. 6 The remaining issues are as to whether the present appeal should be allowed, and as to the costs of the proceedings. 7 In my view, it is appropriate to allow the application. That is simply because the application is by way of appeal to the Court under s 35 of the Trade Marks Act 1995 (Cth), and the application has resulted in the registration of the trade mark, albeit amended in form a little different from that which was considered by a delegate of the respondent. The allowing of the appeal in those circumstances does not routinely mean the applicant is entitled to costs of the application. 8 The applicant seeks its costs of the application. The respondent contends that, in the particular circumstances of this matter, there should be no order for costs. 9 The Court's discretion to award costs is contained in s 43 of the Federal Court of Australia Act 1976 (Cth). 10 Counsel drew my attention to the remarks of Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 (Pioneer). His Honour at 691-692 expressed the view that costs should be awarded against the Registrar only in special circumstances. 11 In Sports Café v Registrar of Trade Marks (1999) 42 IPR 552 at 559, the Full Court of this Court (Wilcox, Heerey and Lindgren JJ) considered Pioneer, and held that the Registrar should pay two-thirds the costs of the appellant on the appeal and at first instance. Their Honours said at 559-560: "… today government in one form or another is an every day litigant in the courts and should, generally speaking, be treated like all other litigants. If government wins it should ordinarily recover costs. If government loses it should pay notwithstanding that the case has been brought or defended (as in the present case) reasonably and properly. The reduction in the costs award recognises the fact that the appellant was unsuccessful in relation to its word mark. However, that issue took up very little of the hearing time of the appeal. The appellant succeeded on the main issue" In Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30 the Full Court of this Court also awarded costs of an appeal and at first instance against the Registrar where the Registrar had sought to uphold the decision of the delegate. 12 On the other hand, counsel for the respondent referred to Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24; [2001] FCA 683. It recognised that there are cases where it is appropriate that the Registrar appear in the public interest, and that in such circumstances costs not be awarded against the Registrar. Madgwick J said at 32 [31]-[32]: "The applicant submits that, if the registrar had not intervened in the proceedings, it would have incurred less costs. The applicant relies on the judgment of a Full Court of this court in Sports Café Ltd v Registrar of Trade Marks (1999) 42 IPR 552 at 559-560, in which the court held that 'today government in one form or another is an everyday litigant in the courts and should, generally speaking, be treated like all other litigants'. However, the registrar has appeared to assist the court in circumstances where the first respondent who sought the registration has chosen not to appear. Counsel for the registrar has provided the court with thorough and thoughtful submissions that have been of assistance. The registrar has also adopted an impartial position and not sought to defend the delegate's primary decision but rather to deal with general questions of importance thought to be raised by the applicant's submissions. This is different from the circumstances of the Sports Café case, where the decision of the registrar to refuse registration was challenged and the registrar was involved in the proceedings to defend his decision..." 13 In this matter, I propose to make no order for costs. In my view, there were substantial reasons why the respondent should have taken an active role in the proceedings, beyond simply seeking to uphold the decision of a delegate. They arise from the acknowledgment that this case raised for the first time the circumstances in which a colour trade mark might be registered. Whilst it is plain enough, in one sense, that the resolution of the application involved the application of commonly understood and established principles, the relative novelty of the present application in my view warranted the respondent's role in seeking to ensure that its resolution was made in the light of relevant material and in the light of a consideration of all potentially significant considerations. The material I found to be relevant extended beyond that introduced by the applicant, and there was no contradictor of the applicant's material or of its case. Consequently, the respondent's role in the proceedings both in relation to the evidence adduced and the submissions, was of considerable benefit to the final resolution of the issues. I referred briefly to the respondent's role in [5] of my earlier reasons for judgment. See generally Perrett v Commissioner for Superannuation (1991) 23 ALD 257 at 269; Ruddock v Vadarlis (2002) 188 ALR 43: [2002] FCA 1865 at [13] and [17]. 14 I have also had regard to the fact that the trade mark application as expressed in the proposed amendment would have been unsuccessful. It is consistent with the respondent's attitude that, in the light of the reasons for judgment, further amendment of the trade mark application was not opposed. It is true that the issue as to the distinctiveness of the colour of the split rings occupied but a short part of the hearing. But it was, as presented, an integral part of the proposed trade mark application. It is appropriate to have regard to that matter in determining whether the applicant should have its costs of the application. 15 In my judgment, in the special circumstances of this case, there should be no order for costs in favour of the applicant. I certify that the preceding fifteen (15) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Mansfield J.