Stafford v Automotive Distributors Limited

Appeal to Federal Circuit Court 10 Mr Stafford was represented at the time of filing the appeal in the Federal Circuit Court. His notice of appeal reads: 1. The Mark should remain registered on the grounds that: (a) the Mark had been previously used by the Applicant during the prescribed three year period set out in Section 92(4)(b) of the Trade Marks Act 1995; and (b) the Applicant is the legitimate and proper owner of the Mark pursuant to Sections 27 and 58 of the Trade Marks Act 1995. 2. The Delegate erred in deciding that the Mark: (a) was not used by the Applicant at all; and (b) was not in use by the Applicant within the prescribed three year period set out in Section 92(4)(b) of the Trade Marks Act 1995. 11 Mr Stafford otherwise represented himself before the Federal Circuit Court and also represented himself before this Court. 12 The first hearing before the primary judge was on 10 August 2015. On that date programming orders were made. Relevantly, the primary judge ordered that Mr Stafford file and serve his points of claim on or before 10 September 2015, made directions as to the hearing of a preliminary issue and fixed a hearing date, being 11 March 2016. 13 Mr Stafford failed to file or serve any points of claim by the date ordered. 14 On 5 January 2016 the respondent filed an application seeking summary dismissal pursuant to r 13.03B(1)(a) (non-compliance with orders) of the Federal Circuit Court Rules 2001 (Cth) (FCC Rules) based on Mr Stafford's failure to comply with the orders of 10 August 2015. 15 On 26 February 2016 the primary judge relevantly extended the time for compliance with the order to file points of claim to 25 March 2016, required Mr Stafford to file an address for service by 4 March 2016 and adjourned the hearing of the summary dismissal application to 9 May 2016. 16 On 29 March 2016 Mr Stafford filed his points of claim. 17 The respondent filed an amended dismissal application on 2 May 2016 seeking dismissal on multiple bases: namely non-compliance with orders, the pleading should be struck out (r 16.21(1) of the Federal Court Rules 2011 (Cth) as applicable by r 1.05 of the FCC Rules) and summary judgment (s 17A of the Federal Circuit Court of Australia Act 1999 (Cth) and r 13.10 of the FCC Rules). 18 The primary judge described Mr Stafford's points of claim as follows: [15] In the Points of Claim Mr Stafford makes the following substantive claims: a) alleges that the Registrar's Decision was made in the absence of Mr Stafford personally at the hearing giving rise to the Registrar's Decision (that is, the hearing on 21 November 2014), in contravention of a condition of the adjournment of an earlier hearing on 22 August 2014 ('Claim One'); b) asserts that the Trade Mark had remained registered and in use for almost 20 years, and was also registered in New Zealand, but was 'removed incorrectly … due to non-communication of a request for removal' ('Claim Two'); c) asserts that ADL were 'successful in obtaining registration as neither IP Australia examiner, Myself or Lord & Co were aware nor had any idea that IP Australia's examiner would have allowed such registration while it is clear that a hearing and subsequent appeal was ongoing' and that he had 'lodged a request for revocation of that registration with IP Australia' ('Claim Three'); d) repeats the two grounds set out in the Appeal (as set out at [5] above) ('Claim Four' and 'Claim Five' respectively); and e) refers to the contents of three letters to the Registrar and asks that they be considered as Points of Claim ('Claim Six'). Each of the letters is dealt with further below: i) a letter dated 26 May 2015 ('May 2015 Letter') being a request addressed to the Registrar for internal review of the Registrar's Decision by IP Australia, on grounds including: A. complaints about the Registrar's hearing; B. complaints about the format of the statutory declarations submitted to the Registrar; C. an assertion that no evidence proving non-use had been received; and D. material about the process of registering the trade mark and a complaint about ADL's registered trade mark; ii) a letter dated 14 July 2015 ('July 2015 Letter') which purports to be an application to the Registrar for revocation of ADL's Trade Mark and which makes complaints and allegations of 'deception and underhanded professional practice'; and iii) a letter dated 17 November 2015 ('November 2015 Letter') which purports to be a further application to the Registrar for revocation of ADL's Trade Mark, and which is based upon the following grounds: 1. The application for registration was made during the time of a hearing relative to an application for removal for non use of my Trade Mark 713318. 2. The examiner erred in that the application should not have been accepted in line with the original examiners decision when they first applied [through] another attorney, and under another name. The original application was made by Automotive Parts Distributors at the same address under International number 906157 Aust number 1397382 represented by Chrysiliou IP and was rejected by the examiner Brian Hollingworth because of the association between class 7 and class 12. In all our evidence provided we have asserted a claim to use in class 12 for automotive parts in Australia. I don't have the name of the other examiner but I consider the examiners handling of this to be most inconsistent with both applications and the fact that at the time it was clearly evident that my Trade Mark was still registered. I also add that I consider this ploy of using another Attorney and another name was an attempt to deceive and highly un - ethical by all parties. Please check your records and you will see that all are now in the name of Bilstein Ltd and different attorneys. 3. I have had numerous conversations with Mr Gavin Lovie and spoken to Gavin in Examiners about this inconsistency and a formal complaint will follow. 4. I assert that the registration of this Trade Mark has created confusion in the market place and has had me spend time fending off enquires for their products. 5. I also point out that a considerable number of the products mentioned in the description of goods are normally confused by the consumers as products sold by my business. In fact we have been selling many of these products for 20+ years, hence our claim under class 12. 6. I have communicated my disappointment in how the hearings and evidence was handled during the application for removal including the convenient loss of a recording of the first hearing. I further advise that evidence I provided was used by the other parties to aggressively pursue their agenda, I would request that you personally view the files. 7. confirm that [the] removal of TM 713318 is now the subject of a Federal Appeal. 19 The primary judge dealt firstly with the summary judgment application, accurately collating the principles (at [26]-[29]) and referring in particular to Spencer v Commonwealth of Australia [2010] HCA 28; (2010) 241 CLR 118 at [58]-[60] (Hayne, Crennan, Kiefel and Bell JJ). 20 The primary judge then determined as follows: [30] To be successful in the Appeal Mr Stafford must satisfy the Court that there was 'use', as prescribed in s 92(4)(b) of the TM Act, of the Trade Mark in the relevant period, and pursuant to s 100(1) of the TM Act it is Mr Stafford who bears the onus of proof of use (or rebuttal of non-use). This assumes that Mr Stafford is the registered owner of the Trade Mark (as defined in s 6(1) of the TM Act), which itself is a question of some debate. Assuming Mr Stafford is the registered owner, the case for Mr Stafford to meet and rebut is that there had been no use, or no use in good faith, in the three-year period extending up to one month before the application for removal of the Trade Mark by ADL: TM Act, s 92(4)(b). As set out below: see [31]-[36] below, the claims made in substantive paragraphs of the Points of Claim do not grapple with this issue. [31] Claim One mistakes the nature of the de novo review in this Court. Because the Court is considering the matter afresh any denial of procedural fairness by the Registrar, or a delegate of the Registrar, is irrelevant: it is not necessary to decide whether the Registrar's Decision is correct, procedurally or otherwise: Malibu Boats at [6] per Finkelstein J. The Court is to determine the Appeal on the merits of the original application under the TM Act, 'and not whether an administrative officer [the Registrar] has lawfully discharged his duties': Jafferjee at 126 per Dixon J. Even if it were an appeal proper, Claim One would not succeed. The allegation is that the Registrar's Decision should be set aside because it was made after a hearing at which Mr Stafford was not present. That allegation is plainly untenable. The Registrar's Decision at [3] records that Mr Stafford delivered submissions in person at a hearing on 22 August 2014. Mr Stafford was then given, at his request, the opportunity to make further submissions via lawyers at a reconvened hearing on 21 November 2014. At hearing on 21 November 2014, Mr Stafford was represented by Mr Kelvin Lord of Lord & Co (by telephone), who had also filed written submissions. Both Mr Lord and the firm are recognised as experienced in intellectual property matters. The Registrar thus gave Mr Stafford ample opportunity to make submissions on his own behalf and through his lawyers. Mr Stafford took those opportunities. Mr Stafford has filed no evidence, as he was entitled to do on the Appeal: Woolworths at [14] per Black CJ, and there is, therefore, no evidence to support Mr Stafford's contention that it was a condition of the adjournment of the hearing to 21 November 2014 that he be personally present. [32] In Claim Two the statements made fail to articulate any claim or factual matter of relevance to the Appeal. [33] Claim Three sets out a series of assertions extraneous to the Appeal. [34] In relation to Claims Four and Five the reason for ordering the filing of the Points of Claim was because the Appeal did not sufficiently disclose or particularise the basis for the Appeal, and to then simply copy and paste the grounds of the Appeal is embarrassing, and the unparticularised assertions add nothing to the substance of the Appeal. [35] In Claim Six, and the three annexed letters, the assertions made are irrelevant, vague, discursive, and some are scandalous. [36] Mr Stafford's Points of Claim fail to plead the basic elements he must establish. What is in the Points of Claim, namely the conduct of the hearing before the Registrar, contextual information and a repeat of the Appeal grounds, are all matters that are irrelevant to a de novo review. Nothing is pleaded in respect of the use of the Trade Mark, or the intention to use the Trade Mark, which is the basal element Mr Stafford is required to satisfy. There is no evidence from Mr Stafford before the Court relevant to the Appeal, or at all. Mr Stafford has not established an identifiable or valid claim on the Appeal, and there are not factual materials before the Court which would support an identifiable or valid claim on the Appeal, and given the Registrar's Decision, the factual foundation for which the Court accepts, there would appear to be no prospect of Mr Stafford establishing a factual foundation which would give rise to a claim on the Appeal that has a reasonable prospect of success. [37] It follows from the foregoing that the Appeal enjoys no reasonable prospect of success, and indeed, in the Court's view, no prospect of success at all, and in the circumstances the Appeal must be dismissed under r.13.10(a) of the FCC Rules. 21 Whilst the central outcome of the appeal for the purpose of the leave application before me is the grant of summary judgment, the primary judge also dealt with the respondent's alternative strike out claim. His Honour struck out the points of claim under various heads of r 16.21(1) of the Federal Court Rules, including on the basis that they contained scandalous material, that they were likely to cause prejudice, embarrassment or delay in the proceedings and that they failed to disclose a reasonable cause of action: [39] of the primary judge's reasons. 22 The primary judge also refused to grant leave to re-plead. His Honour took into account, in particular, the fact that having filed an originating process Mr Stafford had the benefit of two further opportunities to properly enunciate points of claim but had failed to do so, and had made it apparent during the hearing that he did not in fact seek to prosecute the appeal but rather to pursue a hearing as to ownership. 23 Finally, the primary judge also dealt with the respondent's alternative argument based on non-compliance with orders of the Court. His Honour referred to appropriate authority, being the decision of the Full Court in Professional Administration Service Centres Pty Ltd v Federal Commissioner of Taxation [2012] FCAFC 180 at [44], where a list of non-exhaustive relevant factors that guide the court in the exercise of its power is provided. Those factors include the nature of the default, the circumstances in which it has occurred, the attitude of the applicant to the default and delay and prejudice caused to other parties. 24 The primary judge referred to, amongst other things, Mr Stafford's default in filing his points of claim by the date first directed; the failure to serve a notice of address for service as ordered; an ongoing failure to serve points of claim on the respondent that indicated an unwillingness to cooperate with the respondent for the purpose of the proceedings; a delay of some five months caused by Mr Stafford's default; and the fact that a hearing was vacated as a result of his non-compliance.

Principles 25 The Court has jurisdiction to hear and determine an appeal from the primary judge's decision granting an application for summary judgment: s 24(1)(d) of the Federal Court of Australia Act 1976 (Cth). 26 An order for summary judgment under s 17A of the Federal Circuit Court of Australia Act is taken to be an interlocutory judgment for the purpose of s 24(1A) of the Federal Court of Australia Act: Dennis v Commonwealth Bank of Australia [2018] FCA 1908 at [9]. 27 Therefore, an applicant may not appeal from the primary judge's decision to dismiss an application by summary judgment unless the Court grants leave to appeal: s 24(1A) of the Federal Court of Australia Act. 28 In the proposed appeal, the appellant would be required to demonstrate some legal, factual or discretionary error on the part of the primary judge: Dennis at [11] and cases cited therein. 29 The Court has a discretion as to whether to grant leave to appeal from an interlocutory judgment, but generally leave will not be granted unless the decision in question is attended with sufficient doubt to warrant the grant of leave and substantial injustice would result from a refusal of leave to appeal: Decor Corporation Pty Ltd v Dart Industries Inc [1991] FCA 844; (1991) 33 FCR 397 at 398-399; Minogue v Williams [2000] FCA 125 at [19]. 30 The principles are not to be applied as if they represent some 'hard and fast rule': Samsung Electronics Co Limited v Apple Inc [2011] FCAFC 156; (2011) 217 FCR 238 at [29]. Each case must be considered on its merits. A 'sufficient doubt' must mean a doubt that is sufficient in the circumstances. Interlocutory orders cover a spectrum from those concerned solely with mechanical orders (such as case management orders and practice and procedure orders) to those which may, for one reason or another, have a significant impact upon the scope and outcome of proceedings and which ought to be given consideration on appeal: Johnson Tiles Pty Ltd v Esso Australia Pty Ltd [2000] FCA 1572; (2000) 104 FCR 564 at [43]-[44]. 31 In this case, it cannot be disputed that the summary dismissal, whilst interlocutory, has a significant effect: it means that Mr Stafford is denied the ability to further pursue a challenge to the decision of the Registrar under s 101(1) of the Trade Marks Act.

The proposed grounds of appeal before this Court 32 Mr Stafford seeks to rely on proposed grounds of appeal that he has set out as follows: 1. No determination within a reasonable time frame was made to my request at the first hearing in 2015 regarding the ownership of the Trade Mark. This was delivered three and a half years later and incurred unnecessary further costs and an unreasonable delay. 2. No Bill Of Costs was served on me by either the Court, the Respondents or IP Australia. 3. No opportunity to present further evidence or witnesses was given to me. Due to the excessive time taken by the Delegate of IP Australia and the Court my access to witnesses has been considerably diminished. 4. No mediation was offered. 5. IP Australia failed to advise me of the Application for registration by Bilstein made during their hearing and the Appeal made to the Court, also that such acceptance should not have taken place and should be seen as illegal. 6. That IP Australia knowingly took the renewal fees at each ten year period and recognised me as the owner of the Mark should have been enough proof of ownership. 7. There is no previous precedent that is fully relevant to this case. 8. Both the decision of the Delegate of IP Australia and Judge Lucev should be set aside as the judgement mirrors the scant evidence requested of me by IP Australia and neither party gave me the opportunity to present further evidence to prove my case. 9. I hear by reaffirm my claim that my constitutional and common law rights were not recognised by either party, yet I have been able to be pursued and paid for legal fees for the mistakes present in the Trade Marks Act and the actions of people that are either corrupt or not qualified for the positions they hold. 10. I request that the judgement made by Judge Lucev be set aside and that the original decision of the IP Australia Delegate be set aside on the terms herein and the statements made previously by me in a number a Affidavits. 11. I also request that an adjournment be made to await the decision of complaints I am now making to the Minister, the Attorney General, the Commonwealth Ombudsman, the Prime Minister and to Professional Standards. 33 It is readily apparent that the notice of appeal and stated grounds do not comply with r 36.01(2)(a) of the Federal Court Rules. Mr Stafford has not attempted to explain which findings of the primary judge are impugned. He has failed to indicate whether he requests leave to appeal against the dismissal on the basis that there was appealable error with respect to each or any of the three bases relied upon by the respondent before the primary judge. He does not identify whether the whole of the reasons or part only reveal any error, nor the nature of any error. 34 However, having regard to the fact that Mr Stafford is unrepresented, I have considered carefully the primary judge's reasons, each of the matters in the proposed notice of appeal, the content of three affidavits that Mr Stafford has filed in this application and his submissions.

Consideration 35 As to the grounds in the notice of appeal, ground 1 does not assert error on the part of the primary judge. There was no evidence as to the manner in which the proceedings before the Registrar progressed, whether there was any unreasonable delay or whether or how any prejudice arose through any delay, such that the appeal before the primary judge was in any way compromised. It appears from the primary judge's reasons that the only matter relied upon by Mr Stafford as to delay was alleged delay on the part of the respondent and an assertion that it had not complied with orders: [21] of reasons. There was no evidence evinced in that regard and it is not at all clear that the reference is to alleged non-compliance before the Registrar or the primary judge. 36 Ground 2 is not relevant to any appeal from the decision of the primary judge. 37 Ground 3 is not supported by any evidence. Mr Stafford asserts generally that he was not provided with the opportunity to provide evidence, but that is not the case. He clearly had an opportunity to provide evidence before the Registrar. The fact that evidence may have been rejected does not disclose an absence of opportunity to provide it. The primary judge noted that although Mr Stafford was entitled to adduce evidence on the appeal in that Court he did not do so. Rather, according to the primary judge: [51] … Mr Stafford made it apparent at hearing that what he seeks to do is not argue the Appeal, but to have an initial hearing to determine ownership of the Trade Mark … Mr Stafford has therefore evinced an ongoing intention not to prosecute, either at all or with due diligence, the actual case before the Court for determination … 38 Mr Stafford has not suggested he would seek leave to rely on new evidence on any appeal and has not identified or produced any such proposed relevant new evidence. He was granted the opportunity to file affidavits in support of his application for leave in this Court. 39 In my view, there is no foundation to Mr Stafford's contention that he was not given time to put on evidence relevant to the appeal. Relevant evidence would have been evidence that would have assisted him in rebutting the respondent's allegation that the trade mark had not, at any time during the three year period, been used by Mr Stafford, as referred to in s 100(1)(c) of the Trade Marks Act. 40 Ground 4 is not relevant to any appeal from the decision of the primary judge. 41 Ground 5 lacks any clarity and in any event does not appear to have been a matter raised before the primary judge. To the extent it is a reference to matters being undertaken in the name of Bilstein Ltd, then the assertion was addressed as part of 'claim 6' as enumerated by the primary judge, and there is no error disclosed in the primary judge's description of that claim (as a whole) as 'irrelevant, vague, discursive …'. 42 Ground 6 does not advance Mr Stafford's case. Any payment does not establish ownership. It does not rebut the matters relevant under s 100(1)(c) or address any finding of the primary judge. 43 Ground 7 is not relevant to any appeal from the decision of the primary judge. 44 Ground 8 repeats the allegation as to an alleged lack of opportunity to evince evidence: that matter has already been addressed. 45 Ground 9 is scandalous and would be struck out as an appeal ground. 46 Ground 10 is no more than a statement of the relief sought. 47 Ground 11 does not disclose any valid basis for an adjournment and I would refuse an adjournment. 48 Furthermore, the affidavits filed by Mr Stafford do not assist him. In the main their content is inadmissible statements of opinion that do not support any valid appeal ground, but I will allow some leeway to Mr Stafford in that regard and have considered the affidavits. In any event the content of the affidavits does not advance his case. 49 The affidavits contain assertions that he owns the trade mark and that he was recognised as the owner without evidence in support of the contention, save for an unsupported allegation that he paid registration fees. As already noted, even assuming he did pay registration fees, such a step without more does not establish ownership or use. 50 In the affidavits Mr Stafford also makes unsupported allegations against third parties, including lawyers, that are scandalous and do not advance his case in any manner. They are not relevant to the merits of his claim. 51 Mr Stafford makes generalised complaints in the affidavits about delay but no nexus is shown between any delay on the part of others and the merits of any appeal. Nor does any allegation of delay disclose appealable error. 52 One of Mr Stafford's affidavits deals with his financial position and appears to have been filed in response to the anticipation by the respondent of an application for security for costs of the application in this Court. No application was pursued. In any event, nothing in that affidavit assists Mr Stafford with respect to this application for leave to appeal. 53 In his written submissions Mr Stafford also alleged he was deprived of the opportunity to receive legal advice before the Registrar. As noted above, the primary judge recorded (at [4]) that the hearing before the Registrar was adjourned so that Mr Stafford could obtain legal advice, that Mr Stafford was represented at the adjourned hearing by a lawyer by telephone, and that written submissions were filed on his behalf. There is no substance to the submission. 54 I have also taken into account Mr Stafford's oral submissions before me today. He continues to complain about the hearing before the Registrar and continues to complain about an alleged lack of opportunity to provide evidence. He made it abundantly clear that he wants a fresh hearing before a Registrar. He seeks to have the judgment of the primary judge set aside to facilitate that course. Nothing that he said during the course of the hearing was directed at the substance of the primary judge's reasons or principles relevant to an application for leave to appeal or on any appeal. 55 Other submissions were directed at his personal attributes and experience, or comprised scandalous allegation about third parties. Those matters were of no relevance to the proposed appeal. 56 I have also considered closely the primary judge's reasons for granting summary judgment. The primary judge's reasons are detailed and, with respect, correct. I do not discern any reasonable basis upon which it could be said that his Honour erred in granting summary judgment. 57 In accordance with the principles noted above, on an appeal Mr Stafford would be required to demonstrate some legal, factual or discretionary error on the part of the primary judge. He has not pointed to any such error and has not persuaded me that the decision is attended with sufficient doubt to warrant the grant of leave. In circumstances where there is no reasonable basis upon which it can be said that the primary judge erred in granting summary judgment, I am not satisfied that the refusal of leave to appeal from that decision would lead to any substantial injustice. 58 At its highest, Mr Stafford's case on this application was directed at the question of summary judgment. No real challenge was made to the other bases upon which the appeal before the primary judge was dismissed. 59 However, as to those other bases: (a) having regard to the points of claim as described by the primary judge and his Honour's conclusion on the summary judgment application, the view that the points of claim should be struck out was to my mind undoubtedly correct; (b) similarly, I do not consider there is any prospect of error being established with respect to the primary judge's refusal to grant leave to re-plead. His Honour dealt with this argument in the alternative. The matters his Honour took into account were clearly relevant and, to my mind, persuasive; and (c) the matters taken into account by the primary judge in dismissing the claim on the alternative basis of non-compliance were also relevant and appropriate, and no error in his decision is disclosed. 60 To my mind the decision of the primary judge was correct with respect to each of the three bases, and there is no real prospect of Mr Stafford's proposed appeal succeeding.

Determination 61 It follows that I decline to grant leave to Mr Stafford to appeal from the decision of the primary judge. Costs should follow the event. I certify that the preceding sixty-one (61) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Banks-Smith.