13 Negotiations for consent orders were held on 11 and 12 March 2007. The hearing of the appeal was scheduled for the following week and, according to a note from Mr Wilkshire's solicitor, counsel had advised the appeal was unlikely to succeed. By that time s 62A had been enacted and was a ground able to be raised in the Federal Court proceeding: see s 197 of the Act.
14 On 13 March 2007 the following orders were made by Bennett J and undertakings noted:
BY CONSENT, THE COURT ORDERS THAT:
1. The appeal be dismissed.
2. Subject to Order 3, the Applicant pay the Respondent's costs of the opposition heard by a Delegate of the Registrar of Trade Marks and of the appeal to this Court as follows:
(a) $10,000 within 28 days of the date of this Order;
(b) $10,000 within 6 months of the date of this Order; and
(c) $10,000 within 12 months of the date of this Order save that, if Orders 2(a) and (b) have been complied with an $5,000 of the final instalment in this Order 2(c) is paid by its due date, the Applicant will be taken to have satisfied his obligation under this Order 2.
3. If the Applicant is in fault of the performance of any of his obligations under Order 2, all amounts specified in Order 2 remaining unpaid, notwithstanding the timeframes provided therein, will become immediately payable in full.
AND THE COURT NOTES THAT:
4. The Applicant undertakes to the Respondent as follows:
(a) not to interfere in any way with the Respondent's application to register trade mark number 942740 (the "Respondent's mark"); and
(b) not to threaten the Respondent, any of the Respondent's licenses (whether current or future) or any other person with any form of action (including action for trade mark infringement under the Trade Marks Act 1995, passing off, breach of section 52 or 53 of the Trade Practices Act 1974 or related State and Territory Fair Trading Legislation and/or a breach of copyright) in relation to the use of the Respondent's mark. This undertaking applies to existing and future use of the Respondent's mark in relation to all goods and services. For the avoidance of doubt, nothing in this undertaking restricts the Applicant's right to use trade mark no. 847,229 in relation to the services for which he is registered.
15 I would emphasise the two undertakings noted. The second of them is relied upon by the Council by way of prospective defence to the present proceeding.
16 Two days before the consent orders, Mr Wilkshire filed five new trade mark applications. All that differentiated four of these from his original marks were the words inserted in the rectangular panel below the arch and platypus. In the fifth, no words were inserted in the panel.
17 The Council became aware of these applications on 21 March 2007. On 25 September 2007 it opposed registration of the applications. A hearing date for the opposition was set for 26 February 2009.
18 On 4 February 2009 Mr Wilkshire commenced the present proceeding. The Council only became aware of it when joined as a party on 23 February 2009.
19 The opposition was heard on the day scheduled. A Delegate gave his decision on 26 May 2009 refusing to register the applications and in so doing accepted that, for the purposes of s 62A of the Trade Marks Act, the application was made in bad faith. In so doing he observed that Mr Wilkshire clearly had applied to register a mark which he had previously recognised as "the property of another with which he had had a course of dealing".
20 Mr Wilkshire has filed two substantial affidavits in this proceeding, one of which related directly to the summary judgment motion.
21 A striking feature of the first (which relates to the substantive proceeding) is that, in relation to the particular matters it narrates, it regularly moves from surmise about a matter, to an allegation concerning it (invariably involving impropriety by a person or persons considered to be acting adversely to his interests and then, on occasion, to a statement of fact about the allegation. The major portion of this affidavit is directed at what is said to be collusion and fabrication of evidence by witnesses of the Council relating to its alleged use of its mark from April 1997 when other evidence showed use from June or July 1997. This matter was, in fact, ventilated at some length at the second opposition hearing. It seems not at all to have been considered by Mr Wilkshire that such differences may have had innocent explanations, the more so as the evidence related to events occurring almost a decade before the various impugned declarations were made. Consistent with its tenor, this affidavit, having asserted the Delegate's lack of impartiality raised the scandalous suggestion of the potential for corruption of the Delegate in the first opposition hearing (either by extortion or bribery), though he acknowledged "I cannot say that this occurred". It closed with the request:
68. The court is asked to consider the damage the five declarants have inflicted by providing false declarations to enable Bombala Council to falsely obtain my intellectual property along with the contamination of those five declarations by Stewart and Cash.
22 The second affidavit, for present purposes, has two themes. The first is the assertion that he never agreed to the undertakings noted by Bennett J. The second is that his then solicitor acted "in the full knowledge that he did not agree to any undertakings whatsoever", but together with the Council's solicitors (who also had that knowledge) allowed the orders to be made. In consequence, it is said, it sprung "to his mind that possibly [his solicitor] was assisting the respondent to present a fraudulent agreement in proceedings". In this affidavit he also states (at [51]):
51. Right from the outset of the opposition of trade mark 942740 I was aware of Section 88 of the Trade Mark Act 1995 in relation to a trade marks obtained by way of fraud, false suggestion or misrepresentation and therefore in the knowledge that Bombala Council had provided evidence that met those grounds I would never agreed to undertakings that would prevent or jeopardise me from taking an action under Section 88 of the Trade Marks Act 1995.