decision
14 The appellant's argument, in short compass, was that the Registrar's power under s 81 of the Act was enlivened because the "error" was the entry by the Registrar of the change of name in the particulars of the trade mark registrations in the Register when, in actuality, there had been no change in the name of the registered owner which meant that s 216 of the Act, which allowed for changes of name, had no application.
15 Section 216 provides as follows:
(1) If there is a change in the name of a person who has filed an application, notice or request, the person must notify the Registrar in writing of the change.
(2) If there is a change in the name of:
(a) the registered owner of a registered trade mark; or
(b) a person whose claim to an interest in, or to a right in respect of, a trade mark is recorded in the Register;
the registered owner or the person must notify the Registrar in writing of the change and the Registrar must amend the Register accordingly.
16 It was submitted that s 216, by its language, confers power on the Registrar to enter a change of name in the Register only if two conditions are met and not otherwise: first, a change of name notification from the registered owner, and, secondly, a change of name. It was argued that neither condition was met on the facts of this case. Thus, the argument went, as the Registrar is required by s 207(2)(b) of the Act to "enter [particulars of trade marks] in the Register in accordance with the Act" the Registrar made the error because the Act did not provide for that action.
17 The appellant's argument cannot be accepted.
18 The starting point is the language of s 81 and, in construing the language, the section is to be read as a whole in the context of Part 8 of the Act. The first point to make as a matter of language is that the word "error" in s 81 forms part of the composite phrase "correct any error…made in entering in the Register any particular". Where a word forms part of a composite phrase, the words in the composite phrase must be considered together, not as individual words in isolation from the other words in the phrase: Sea Shepherd Australia Limited v Commissioner of Taxation [2013] FCAFC 68 at [34] per Gordon J (with whom Besanko J agreed). Furthermore, it is a well-established canon of statutory construction that all words should be given meaning and effect: Project Blue Sky v Australian Broadcasting Authority [1998] HCA 28 at [71]. Vokes' submissions, however, give the words "made in entering" no meaning or work to do. That is to say, the section does not simply prescribe that an error in the particulars entered in the Register may be corrected by the Registrar. Rather, the relevant error must be one that is "made in entering" those particulars. In ordinary grammatical meaning the phrase "made in entering in … any particular" connotes an error made in the act of "entering in" (that is, an error in the act of recording) a particular in the Register. Secondly, the prescription in s 81 that the Registrar can exercise the power of correction "of his or her initiative" assists in fixing that meaning in the context where the legislation itself differentiates between errors made in entering particulars in the Register, which are amenable to correction by the Registrar "of his or her initiative" (s 81) and errors "in an entry in the Register" which are amenable to correction by order of the Court, on the application of an aggrieved person (s 85 of the Act). The latter draws attention to "any error" regardless of how it was brought about. In the present case, the error was in the particular recorded, not in the act of recording of that particular.
19 This construction accords with the scheme of the Act and the evident policy considerations underlying it. Division 2 of Part 8 provides for action to be taken by a court in relation to alterations to the Register. In each of ss 85 - 88, the court may act to alter the Register on application of an aggrieved person. Only in respect of applications under ss 86 - 88 may the Registrar apply to the court, and then only if she considers that the application is desirable in the public interest: s 88A. The role of the Registrar in s 81 may be contrasted with that of the court in Division 2 of Part 8. In the former, the Registrar exercises administrative power that may be reviewed only on judicial review pursuant to the terms of the Administrative Decisions (Judicial Review) Act 1977 (Cth). The Registrar may act on her own initiative, and there is no entitlement of a third party to commence an action. Indeed there is no provision or procedure in the Act for interested parties to present evidence, file submissions or to be heard. By contrast, for applications made under Division 2 of Part 8, the action is conducted before the court exercising judicial power with a right of appeal to the Full Court. Those proceedings may, as in the present proceeding, involve the consideration of complex and competing issues between parties whose rights may be affected by giving effect to any correction in an entry on the Register. These differences indicate that the scope of s 81 is intended to be relatively narrow, as evinced by the words "of his or her initiative" and "made in entering" that we have emphasised. Such an approach reflects a parliamentary intention that the courts remain the primary forum for the determination of disputes as to the correctness of entries in the Register.
20 Vokes' argument based on s 216(2)(b) of the Act does not advance the proposition that the error was made by the Registrar. In the present case the form filed pursuant to s 216 notified the Registrar in writing of a change in name. Nothing on its face suggested that the form was not properly completed or submitted by the appropriate person. In those circumstances, as the primary judge found at [60], there was no error made in entering in the Register any particular. The Registrar entered the change of name in the Register as required by s 216 upon receipt of a change of name form. There is nothing in s 216 which required the Registrar first to verify that a change of name had in fact been made or to verify the authority of the person submitting the form.
21 We are unable to accept the submission of Vokes that the primary judge was incorrect to distinguish Mediaquest. We doubt that a valid assignment under s 106 is a jurisdictional fact, the existence of which is a precondition to the valid entry of an assignment under s 110 (Mediaquest at [53]). The "application" that must comply with the Act under s 110(1) is identified in s 109(2), which refers to the approved form that must be filed, together with any prescribed documents, in accordance with the regulations. Upon receipt of that application, the Registrar is then obliged to record the assignment or transmission in the Register: s 110(1). This process ensures the maintenance of the Register, but it is to be recalled that the Register is only prima facie evidence of a particular or matter entered in it: s 210(1). An entry in the Register does not necessarily reflect the true position which, in the context of trade mark ownership, is determined having regard to the general law of personal property (s 22 of the Act) and the particular rights identified in s 23 of the Act.
22 These factors suggest that there is considerable force in the submission advanced by Laminar that Mediaquest was incorrect insofar as it found that the Registrar had power under s 81 to amend the Register because a jurisdictional fact that formed the basis of the entry on the Register was absent. However, it is not necessary for us to decide this point. As we have noted, the language of s 216(2) provides no basis upon which it may be concluded that the fact of a valid change of name is a jurisdictional fact. The learned primary judge was correct in the circumstances to distinguish Mediaquest.
23 There is another reason for rejecting Vokes' argument that s 81 permits the Registrar to amend the Register to record Vokes as the registered owner. In the present case s 81 was invoked not merely to correct what was said to be an error made in entering a relevant particular, but to remove from the Register the name of Laminar as registered owner. The power conferred on the Registrar by s 81 is a relatively narrow one. Although it permits the Registrar to correct an error made in entering a particular, it does not permit the making of what might be considered consequential amendments to the Register by, as occurred here, removing from the Register the name of a subsequent registered owner who attained registration following an assignment of the registered mark by a person whose name was previously entered in the Register as registered owner. The fact that the latter's name may have been entered by the Registrar in error does not mean that the particulars of ownership entered following the assignment are also susceptible to correction by the Registrar under s 81.
24 Section 22 of the Act confers on the registered owner of the trade mark the right to deal with the trade mark as its absolute owner and give good faith discharges for any consideration for that dealing, subject to some important exceptions. However, the right to be recorded in the Register as owner of a registered mark implicitly conferred by s 22 on a purchaser in good faith for value and without notice of any fraud on the part of the registered owner, cannot be defeated by an application under s 81 to substitute the name of the original owner in place of the name of such a purchaser. It is apparent from the language of s 81 and the broader statutory scheme that the Registrar's power under the section does not extend this far. In such a case, the rights of the parties, including the question whether the purchaser is entitled to the protection available under s 22, are to be determined by the Court in an application under s 85 or s 88 of the Act.
25 In view of our conclusion the appeal must be dismissed. Accordingly it unnecessary to consider the Laminar's Notice of Contention.
I certify that the preceding twenty-five (25) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Nicholas, Davies and Burley.