Wilkshire v Registrar of Trade Marks

5 By application lodged on 7 February 2003 the Council applied for registration of its mark in Class 35 for "Tourism promotions, advertising". Mr Wilkinson opposed the application by Notice of opposition dated 18 July 2003. He made a declaration for the purposes of the opposition in which he alleged that a number of the people who had given evidence for the Council had colluded and fabricated evidence for the purposes of the application. 6 Copies of both registered marks are an attachment to these reasons. Both had been used for some years prior to their respective registrations. I would simply note that the Registrar's Delegate in the opposition proceedings commented of the two trade marks (at [20] of his Reasons) that: To my mind, it defies belief and credulity that two unconnected parties could arrive at such similar designs for trade marks by coincidence.

7 Both trade marks contain the image of an arch bearing the words "Platypus Country". Emerging from the arch is a platypus with its tail swept up to the right. The arch sits on a rectangular panel about twice the length of the diameter of the arch. In this panel in Mr Wilkshire's mark, are enscribed the words "Gold Fossicking"; in the Council's, "Bombala Council". 8 I should add by way of background that the evidence of the provenance of the Council's mark as it is recounted in the above opposition decision, as well as in a subsequent opposition, was that in 1995 a similar mark, though with a differently configured platypus, was sought to be registered. Registration of it was opposed by Australian Geographic Pty Ltd which had its own "platypus" trade mark. That dispute was settled, and the evidence before me is that Australian Geographic redesigned the Council's logo which it assigned to the Council on 28 April 1997. Mr Wilkshire disputes this provenance. 9 On 27 February 2006 the Delegate dismissed Mr Wilkshire's opposition and ordered costs against him. The Delegate considered that the grounds of opposition related to sections 41, 43, 44, 58 and 60 of the Trade Marks Act. He rejected all of the grounds on the material that was before him. The one matter I would note is that, in relation to the s 58 ground of opposition (ie that "the applicant is not the owner of the trade mark"), the Delegate found that the services performed by the opponent were not "the same kind of thing" as those for which the Council sought registration. 10 It is important to notice that when this decision was given, the Act had not then been amended to include s 62A. That provision, which became operative on 23 October 2006, provides: S 62A The Registration of a trade mark may be opposed on the ground the application was made in bad faith. It will be necessary to refer to this provision below. 11 Mr Wilkshire appealed to the Federal Court against the Delegate's decision on 17 March 2006. In his notice of appeal Mr Wilkshire impugned the impartiality of the Delegate and again made allegations that the declarants in the Council's case colluded to provide false evidence. He then engaged solicitors and an amended notice of appeal was filed on 30 May 2006. It only challenged the decision on the grounds specified in sections 43, 44 and 58 of the Act. I would again note that both the notice and amended notice of appeal were filed prior to the enactment of s 62A. 12 There were negotiations between the then parties' legal representatives seeking to settle the appeal. Importantly for present purposes, the Council's solicitors made an offer of settlement to Mr Wilkshire (via his solicitors) on 27 February 2007. On 9 March Mr Wilkshire agreed to the terms so proposed and reiterated to his solicitor by email on 12 March 2007 that: The conditions I agreed to were those of the Mallesons letter of 27 February 2007. The genesis of the 12 March email was Mr Wilkshire's becoming aware of a new clause to which he objected being added to the 27 February terms. That clause is not presently relevant. It purported to impose a non-disclosure obligation about which he said: "I reiterate I do not accept any non-disclosure clauses especially one that was snuck in after I had accepted the terms of 27 February 2007."

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.

THE STATUTORY SETTING 23 Section 88 of the Trade Marks Act, insofar as presently relevant, provides: 88 (1) Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by: (a) cancelling the registration of a trade mark; or (b) removing or amending an entry wrongly made or remaining on the Register; … (2) An application may be made on any of the following grounds, and on no other grounds: (a) any of the grounds on which the registration of the trade mark could have been opposed under this Act; (b) an amendment of the application for the registration of the trade mark was obtained as a result of fraud, false suggestion or misrepresentation; … (e) if the application is in respect of an entry in the Register - the entry was made, or has been previously amended, as a result of fraud, false suggestion or misrepresentation. (Emphasis added.) 24 Mr Wilkshire's application as framed does not fall within the provisions of the section. While it seeks cancellation of the registration of the Council's trade marks it does so on grounds unsuited to that purpose. There is no question of any amendment of the registration having been obtained: cf s 88(2)(b); nor is the application one to remove or amend an entry made or amended: cf s 88(2)(e). 25 The application in terms does not, pursuant to s 88(2)(a), purport to invoke: … any of the grounds on which the registration of the trade mark could have been opposed under this Act.

26 I have earlier referred to the terms of s 62A which became an available ground of objection under the Act on 23 October 2006.

THE FEDERAL COURT ACT AND RULES 27 Section 31A of the Federal Court of Australia Act 1976 (Cth) provides, for present purposes, that: (2) The Court may give judgment for one party against another in relation to the whole or any part of a proceeding if: (a) the first party is defending the proceeding or that part of the proceeding; and (b) the Court is satisfied that the other party has no reasonable prospect of successfully prosecuting the proceeding or that part of the proceeding. (3) For the purposes of this section, a defence or a proceeding or part of a proceeding need not be: (a) hopeless; or (b) bound to fail; for it to have no reasonable prospect of success. 28 While its burden has been the subject of controversies of recent times: see Kowalski v MMAL Staff Superannuation Fund Pty Ltd [2009] FCAFC 117; it is unnecessary that I enter upon them. It is sufficient for me to note that: (i) the effect of s 31A was to soften the test for a successful application for summary judgment as stated by the High Court in General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125; see Kowalski at [25]-[26]; (ii) As to what is signified by having "no reasonable prospect of successfully prosecuting a proceeding", in light of what was said in Kowalski at [29]-[30], I am content to adopt what was said by Rares J in Boston Commercial Services Pty Ltd v G E Capital Finance Australasia Pty Ltd (2006) 236 ALR 720 at [43]-[45]: The concept of a party having "no reasonable prospect of successfully prosecuting a proceeding" has some similarity to the test at common law for determining whether a jury properly instructed could reach a verdict for the plaintiff. That test was authoritatively stated by the Judicial Committee in Hocking v Bell (1947) 75 CLR 125 at 130-1 ; [1948] 1 ALR 85 at 87-8 (Hocking (1947)), approving the following statement from the dissenting judgment of Latham CJ (Hocking v Bell (1945) 71 CLR 430 at 441-2 (Hocking (1945))): If there is evidence upon which a jury could reasonably find for the plaintiff, unless that evidence is so negligible in character as to amount only to a scintilla, the judge should not direct the jury to find a verdict for the defendant, nor should the Full Court direct the entry of such a verdict. The principle upon which the section is based is that it is for the jury to decide all questions of fact, and therefore to determine which witnesses should be believed in case of a conflict of testimony. But there must be a real issue of fact to be decided, and if the evidence is all one way, so that only one conclusion can be said to be reasonable, there is no function left for the jury to perform, so that the court may properly take the matter into its own hands as being a matter of law, and direct a verdict to be entered in accordance with the only evidence which is really presented in the case. [Emphasis added] … In a case to which s 31A applies, where there is a real issue of fact to be decided in the sense identified in the above principle, and, possibly, where there is a real issue of law of a similar kind, it is obviously appropriate that the matter goes to trial. … I am of opinion that in assessing what reasonable prospects of success are for the purposes of s 31A, the court must be very cautious not to do a party an injustice by summarily dismissing the proceedings where, in accordance with the principles in Hocking (1947), contested evidence might reasonably be believed one way or the other so as to enable one side or the other to succeed. As soon as the evidence may have such an ambivalent character prior to a final determination, I am of opinion that then, as a matter of law, at that point there are reasonable prospects of success within the meaning of s 31A.

29 Because of their present relevance, I will refer to the observations of French J in Fortron Automotive Treatments Pty Ltd v Jones (No 2) [2006] FCA 1401 at [20] where his Honour said that that judgment may be made: … by reference to evidence put on in support of an application under s31A which reasonably excludes the possibility that facts essential to the success of the claim or defence will be able to be established.

30 Order 20 r 5 of the Federal Court Rules empowers the Court (inter alia) to order that a proceeding be dismissed if satisfied that it is frivolous, vexatious or an abuse of process.

THE MOTION FOR SUMMARY DISMISSAL 31 The Council's grounds for summary dismissal are, as I have said, layered. The first two grounds relate to the competence of the purported s 88 application. The first ground is that Mr Wilkshire is not a "person aggrieved"; the second, that his application has not enlivened any of the grounds specified in s 88(2) which are the only grounds available for making an order under s 88(1).

(a) "A person aggrieved" 32 Mr Wilkshire has not addressed this matter explicitly. The only basis discernible in his evidence he seemingly could rely upon to bring himself within the concept is that stated in his first affidavit: "… consider the damage the five declarants inflicted by providing false declarations to enable the Bombala Council to falsely obtain my intellectual property.

33 There was no requirement that Mr Wilkshire be an "aggrieved person" in order to be able to oppose the registration of the Council's mark or to appeal against the dismissal of that opposition. It is required by s 88. 34 The concept of "an aggrieved person" in this context has been considered in many cases: see the discussion by Sackville J in Kraft Foods Inc v Gaines Pet Food Corporation (1996) 65 FCR 104 at 111-114. For present purposes it is sufficient for me to refer, as others have done, to McLelland J's comment on it in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193: … the expression would embrace any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.

35 The Council's contention that Mr Wilkshire is not so aggrieved relies (a) on the differences in the field of activity for which the respective marks are registered and in which they are used, this being the basis of rejection of Mr Wilkshire's s 58 objection in the first opposition proceeding (the challenge to the Delegate's findings were not pursued on appeal); (b) the Council's mark features prominently the words "Bombala Council" such that it is difficult to see how registration and use could prejudice him (and he does not identify any such prejudice) and (c) the undertaking noted by Bennett J included provision for Mr Wilkshire to continue to use his trade mark in relation to the services for which it was registered, hence preserving his legitimate commercial interests. 36 The opacity of Mr Wilkshire's claim and the lack of relevant focus in his affidavit material make it particularly difficult to ascertain whether there is a reasonable possibility of his being appreciably disadvantaged in a legal or practical sense by the Register being left unrectified. He has an obvious sense of proprietorship of the mark - but could not establish, for the purposes of s 58, that the Council was not the owner of the trade mark it sought to have registered. By consenting to the dismissal of its appeal from the Delegate's decision he forsook the opportunity to revisit that question. His sense of grievance and hostility in the manner, which are palpable, does not of itself satisfy s 88's standing requirement. He has not pointed to possible disadvantage other than to suggest in submissions before me (without substantiation) that licensing of its mark by the Council to tour operators "was open to abuse". 37 While the standing requirement is to be interpreted liberally, Mr Wilkshire simply has not attempted to demonstrate, and it is not otherwise apparent, how he satisfies it. The proceeding could be dismissed summarily for this reason. However lack of demonstrated standing is not my principal reason for taking that course.

(b) Section 88 not enlivened 38 I earlier indicated that Mr Wilkshire's application does not on its face invoke a ground upon which the Court could order rectification by cancellation of the registration of the Council's trade mark. In that I agree with the Council's submission. 39 I have on a number of occasions indicated that at the time both of Mr Wilkshire's opposition to the Council's application to register and of the appeal which was dismissed by consent, the now s 62A ground of opposition was not then available. To reiterate, the section permits opposition to the registration of a trade mark on the ground that "the application was made in bad faith". 40 While it may seem a short step to permit the application to be amended so transmuting it from one alleging "fraud, false suggestion and misrepresentation" to one alleging "bad faith" - the more so because the applicant lacks legal representation - this is not a course I am prepared to take. My reason for this relates to the substance of the present application. 41 Mr Wilkshire's affidavits are replete with speculations about, and assertions and allegations of, impropriety, be it of the Delegate, the Council's witnesses, or both parties' lawyers. While accepting he may be able to point to inconsistencies in evidence relating to events long prior to the preparation of the declarations of witnesses for the Council, or to the non-production of documents created over a decade earlier, he has provided no plausible justification at all for the regularly made and, at first flush, seemingly preposterous consequential allegations of impropriety. I note in passing the standard of proof s 140 of the Evidence Act 1995 (Cth) provides for such allegations: see Qantas Airways Ltd v Gama [2008] FCAFC 69 at [123]-[139]. 42 Importantly there is nothing at all to suggest that the very specific matters which were central to his case - and in particular the discrepancies in the evidence on the Council's use of its mark as between April and June 1997 - were themselves material, or of any causative significance, in the Council obtaining registration of that mark. The supposedly tainted evidence had no bearing on the Delegate's decision. 43 I refer to these matters because what would be involved in allowing Mr Wilkshire to amend his application would be the articulation of an, as yet, indiscernible claim (possibly under s 62A) and a claim, moreover, which there is no reason to believe on the material before me will have any substance, legal or factual. 44 As I have indicated, I am not prepared to take that course. I will give summary judgment on the basis that the application has not invoked a ground upon which the Court can order rectification by cancellation under s 88(1)(a) of the Trade Marks Act.

(c) Other grounds 45 The third ground relied upon in support of the motion was foreshadowed in what I said above. It is that even if there was dishonesty in the evidence (which is strenuously denied), it is apparent from the Delegate's decision that it had no bearing on the decision to allow the mark to proceed to registration. It was neither material in, nor causative of, the decision. 46 It is apparent from what I have said that this contention accords with my own view of the material before me. As I am not ordering summary dismissal on this basis, I need not enlarge upon it. 47 The fourth ground is that the dismissal of Mr Wilkshire's appeal from the decision of the Delegate precludes him from agitating the question of the validity of the registration of the Council's mark by reason of any alleged collusion or perjury on the part of the Council's witnesses or any alleged bias on the part of the Delegate. This raises a number of potentially controversial issues especially in relation to the Anshun doctrine and abuse of process.

Anshun and abuse of process 48 It is the case generally that the dismissal of a proceeding in this Court by consent can found res judicata and issue estoppels and attract the Anshun doctrine: see generally Maiden, "Recent steps in the evolution of res judicata, cause of action estoppel and the Anshun doctrine in Australia" (2004) 25 Australian Bar Review 130 esp at 138. As was said in Re South American and Mexican Co [1895] 1 Ch 37 at 50: … a judgment by consent is intended to put a stop to litigation between the parties, just as much as is a judgment which results from the decision of the court after the matter has been fought out to the end. See also Australian Competition and Consumer Commission v Australian Safeway Stores Pty Ltd (No 3) (2002) 119 FCR 1 at [1148]; Chamberlain v Deputy Commissioner of Taxation (ACT) (1988) 164 CLR 502 at 508. This said, there is real controversy as to the extent to which decisions on appeal in opposition proceedings (whether by consent or otherwise) can found an issue estoppel or attract the Anshun doctrine in s 88 applications given the view of the Full Court in Lomas v Winton Shire Council [2002] FCAFC 413 at [18] that an opposition proceeding had a "quasi summary nature". The Court went on (at [18]) to say that: An unsuccessful opponent would always have the opportunity to bring an expungement proceeding if the opposition proceeding fails. In an expungement proceeding, the validity of a trade mark can be fully explored. That is a reason for concluding that there should not be a full exploration of the prospective validity of a trade mark on an appeal in an opposition proceeding. See also Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2003) 61 IPR 130 at [13]; Health World Ltd v Shin-Sun Australia Pty Ltd (2006) 68 IPR 557 at [31]-[48]. 49 The Council has sought to outflank these decisions by contending that Mr Wilkshire's proceeding can, in the circumstances, properly be characterised as an abuse of process. The power of the Court to prevent such abuses extends beyond "the strict limits" of res judicata, issue estoppel and the Anshun doctrine: SZAJB v Minister for Immigration and Citizenship (2008) 168 FCR 410 at [37]-[38]. A considerable body of material was put on to support the contention that Mr Wilkshire was engaging in "unjust harassment of the Council … with respect to the subject matter of this litigation". 50 Given the view I have already taken of the prospects of this application, I do not intend to enter upon the controversies raised above.

The undertakings 51 The final ground, which only came into sharp focus at the hearing of the motion, is a foreshadowed defence to Mr Wilkshire's application. It is founded on the consent undertakings noted with the consent orders. It is appropriate to reiterate their terms at this point: 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. 52 As I will indicate below, the undertakings are contractual in character and, no less so than the Court orders, they are binding on the parties. In construing the consent orders and the undertakings, like principles are applied and in particular, evidence of the surrounding circumstances, or context, is admissible: see Nokia Corporation v Liu [2008] FCAFC 138 at [29]-[31]. 53 I earlier noted that Mr Wilkshire's legal advisers accepted an offer of compromise made by the Council's solicitors on 9 March 2007. While there may be an outstanding question whether that compromise included a non-disclosure undertaking, there is no doubt that it included the above two undertakings. Whether or not Mr Wilkshire's advisers exceeded their authority in acting as they did is not presently relevant. There can be no doubt that, in the circumstances, they acted within their ostensible authority to compromise the action. Equally there is no doubt that Mr Wilkshire was prepared to accept the compromise in the form offered in the letter of 27 February 2007 from the Council's lawyers. It was, in substance, what is contained in the consent orders and undertakings. Both the evidence and legal principle point in one direction. Whatever grounds for complaint (if any) Mr Wilkshire has against his advisers, he was bound by the consent orders and he remains bound by his contractual undertaking. 54 The remaining question is whether, by the undertakings given, he contractually bound himself not to initiate the present proceedings. 55 On its face cl 4(b) only refers to threatening the Council "with any form of action … in relation to the use of the Respondent's mark". Considered against the backdrop of s 129 of the Trade Marks Act, it might well be thought that the sub-clause was intended to be no more than a contractual adaptation of that provision. Section 129(1) and (2) provide: 129 (1) If a person threatens to bring an action against another person ("threatened person") on the ground that the threatened person has infringed: (a) a registered trade mark; or (b) a trade mark alleged by the person to be registered; any person aggrieved by the threat ("plaintiff") may bring an action (either in a prescribed court or in any other court having jurisdiction) against the person making the threat ("defendant"). (2) The purpose of the action is to obtain from the court: (a) a declaration that the defendant has no grounds for making the threat; and (b) an injunction restraining the defendant from continuing to make the threat. The plaintiff may also recover any damages that he or she has sustained because of the defendant's conduct. 56 It equally could be said that a cancellation application under s 88 was not one in relation to "the use of" the Council's mark. 57 It, doubtless is the case, that both s 88 and s 129 could be said to be part of the context in which the parties entered into their contractual arrangement. More important though are the circumstances of the action itself and of the orders agreed to and undertakings given. 58 The Council contends that cl 4(b) created an estoppel by convention which barred Mr Wilkshire for instituting the present proceeding. I have some difficulty in understanding how this species of estoppel (on which see generally Handley, Estoppel by Conduct and Election, Ch 8 (2006)) in this setting assists the Council beyond the assistance which it properly can derive from the construction of the undertakings themselves in their setting. The context does provide quite clear indications as to how the language of the undertakings should be interpreted but that conclusion is arrived at by well accepted processes of interpretation. It does not in this matter seem to suggest that the parties adopted some assumption as the "conventional basis" upon which they entered into their compromise and from which Mr Wilkshire should not now be allowed to depart: Grundt v Great Boulder Pty Gold Mines Ltd (1937) 59 CLR 641 at 657. 59 As Allsop P indicated in Masterton Homes Pty Ltd v Palm Assets Pty Ltd [2009] NSWCA 234 at [3]: … the identification of ambiguity is not a precondition for examining contextual and background material otherwise legitimate to examine in furtherance of the construction and interpretation of a written contract.

60 It is in my view quite clear that considered together with the consent orders (which, unfavourably to Mr Wilkshire, brought to an end the proceeding that was then on foot), the manifest intent of the two undertakings was to (a) secure that Mr Wilkshire would not interfere with the Council's obtaining registration of its mark (cl 4(a)); and (b) thereafter he would not interfere with the Council's use and enjoyment of its registered mark, directly or indirectly (cl 4 (b)). Likewise the manifest intent of the consent orders, when considered in the context of the undertakings, was not simply to bring to an end a proceeding of "a quasi summary nature". Put shortly, the combined effect of the orders and undertaking was that their dispute over the mark was to be at an end then and thereafter. Order 1 and Undertaking 4(a) were to secure for the Council its registered mark vis-à-vis Mr Wilkshire; Undertaking 4(b) was to secure the use and enjoyment of that registered mark undisturbed by actions, threatened or initiated, by Mr Wilkshire. In aggregate the parties' compromise agreement was more than the bare compromise on an opposition appeal. In this setting "not to threaten … with any form of action" manifestly was intended to comprehend "the initiation" of an action. Similarly any action in relation "to the use of" the registered mark encompassed an action in relation to its use as a registered mark. 61 In its setting cl 4(b) is not in my view to be construed as some adaptation of the s 129 "threat action". Rather, it can, and should be, interpreted as I have indicated above. As such, it could be relied upon as a complete defence to the prosecution of the present application. It provides yet another basis for summary judgment against him under s 31A of the Federal Court of Australia Act.

CONCLUSION 62 As I am satisfied on a number of grounds that Mr Wilkshire has no reasonable prospects of successfully prosecuting his proceeding in ACD6/2009, I will order that the application be dismissed with costs including the second respondent's costs of the motion of 19 June 2009. 63 In these circumstances it is unnecessary for me to consider the Council's later motion for security for costs. I certify that the preceding sixty-three (63) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Finn.

Associate: Dated: 30 October 2009 Counsel for the Applicant: The Applicant appeared in person.

Counsel for the First Respondent: The First Respondent did not appear.

Counsel for the Second Respondent: Mr N R Murray

Solicitor for the Second Respondent: Mallesons Stephen Jaques