Shekhawatia v Freshii One LLC

1. The appeal from the decision of the delegate of the Registrar of Trade Marks made on 10 June 2020 be allowed.
2. The decision of the delegate of the Registrar of Trade Marks made on 10 June 2020 be set aside.
3. Each party bear their own costs of and incidental to the proceedings.

4. Pursuant to s 23 and s 37P of the Federal Court of Australia Act 1976 (Cth), rule 1.32 and rule 1.36 of the Federal Court Rules 2011, these orders and the reasons for judgment in support of these orders are made and published from Chambers. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

GREENWOOD J: 1 These proceedings are concerned with the resolution of a notice of appeal filed by the applicant, Niraj Shekhawatia ("NS"), from a decision of a delegate of the Registrar of Trade Marks given on 10 June 2020. 2 The background is this. 3 On 20 November 2014, NS filed an application to register a trade mark in a stylised or logo form for the word "freshii". It is not necessary to illustrate the stylised or logo form of the trade mark. 4 The trade mark was lodged in Class 29 for the goods "Salads" and Class 30 for goods described as "Sandwiches; Wrap (sandwich)". The trade mark proceeded to registration and was allocated the Registered Number 1659029. 5 On 29 March 2018, an entity described as "Freshii One LLC" ("FOLLC") filed an application under s 92(4)(a) of the Trade Marks Act 1995 (Cth) (the "Act") to remove the trade mark from the Register of Trade Marks. The delegate describes the application as one "for complete removal of the trade mark". 6 On 30 May 2018, Urmila Investments Pty Ltd ("Urmila") as trustee for the Urmila Investments Trust, through its predecessor in title, NS, opposed the application to remove the trade mark by filing, under s 96 of the Act, the relevant notice supported by a statement of grounds and particulars subsequently filed on 29 June 2018. 7 In the result, the Registrar decided that Urmila/NS "has not established its opposition to removal and the Trade Mark should be removed from the Register in respect of all of the goods for which it is registered": s 101 of the Act. The delegate directed that the trade mark be removed from the Register one month from the date of the delegate's decision subject to the resolution of any appeal from the delegate's decision. 8 NS appealed to this Court under s 104 of the Act from the delegate's decision. That application, although described as an appeal, invokes the original jurisdiction of the Court and the proceeding is conducted as a de novo hearing on the body of evidence put before the Court for that purpose. 9 The parties have agreed as a result of a mediation that the appeal from the decision of the delegate made on 10 June 2020 be allowed and that the decision of the delegate to remove the trade mark from the Register be set aside. The parties have also agreed that each party bear its own costs of and incidental to the proceedings. 10 The parties have proposed consent orders. 11 However, the Court nevertheless needs to be satisfied that orders as proposed ought to be made especially since Order 1 operates to "allow" the appeal with the consequential result that the delegate's order is set aside. 12 I have been referred to a number of decisions which are said to support the proposition that the decision of the delegate of the Registrar can properly be set aside by consent. 13 The first of those decisions is Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218. In that matter, Nicholas J was concerned with an application under s 56 of the Act in relation to an opposition to registration of a particular trade mark rather than opposition to an application to remove a registered trade mark. In addition, the evidence before the Court involved a letter from the Deputy Registrar of Trade Marks indicating that the Registrar had no objection to the decision of the delegate being set aside. I am not satisfied that that decision assists me in the present circumstances. 14 The second decision is Raytheon Company v Lockheed Martin Corporation [2014] FCA 1063. This is a decision of Perram J which is also an application under s 56 of the Act in relation to opposition to registration and at [3], Perram J expressly relies upon the decision of Nicholas J which suggests that the circumstances were materially the same as the earlier decision. 15 The final decision is Hungry Spirit Pty Ltd [as trustee for] The Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277. That too was a proceeding under s 56 of the Act in relation to opposition to registration of the relevant trade mark. In addition, there was evidence about engagement with the Registrar in relation to the proposed orders. 16 The present proceeding involves an application in relation to a decision concerning a trade mark which has been registered for some years. 17 I have had the benefit of reading the affidavit material filed in the proceeding. 18 I am satisfied that the proposed orders ought to be made. 19 I am also satisfied, having exercised supervisory oversight of the material and the proposed orders, that the orders ought to be made by consent. I certify that the preceding nineteen (19) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Greenwood.