Wilkshire v Registrar of Trade Marks

Federal Court of Australia|2010-02-04|Before: Finn J, Before Finn J, Bennett J, Stone J

REASONS FOR JUDGMENT 1 This is an application for leave to appeal from a judgment of Finn J, summarily dismissing an application for an order under s 88(1) of the Trade Marks Act 1995 (Cth): [2009] FCA 1222; 83 IPR 71. The application was dismissed with costs, however Finn J subsequently varied the order for costs, and, for reasons given on 15 December 2009, his Honour ordered that the applicant pay the second respondent's costs on an indemnity basis; Wilkshire v Registrar of Trade Marks (No.2) [2009] FCA 1505.

2 Before Finn J, the applicant sought to have the Trade Marks Register rectified pursuant to s 88(1)(a) by cancelling the registration of the Council's trade mark, number 942740. The ground of the application, which Finn J described as "quite inappropriate", was that the registration had been obtained as a result of fraud, false suggestion and misrepresentation. The applicant for leave, Mr Wilkshire, is the registered owner of trade mark number 847229. In [7] of his reasons Finn J described the trade marks as follows: 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 inscribed the words "Gold Fossicking"; in the Council's, "Bombala Council". 3 Mr Wilkshire's trade mark is registered for education, providing of training, entertainment, sporting and cultural activities for people who are interested in fossicking for gold, being services in class 41. The Council sought registration of its trade mark in class 35, for tourism, promotion, and advertising. Mr Wilkshire opposed the Council's application for registration of its trade mark. His opposition was dismissed by hearing officer Mr Ian Thompson on 26 February 2009. Mr Wilkshire's appeal to this Court against Mr Thompson's decision was dismissed by consent. The orders were made by Bennett J on 13 March 2007. They required Mr Wilkshire to pay specific costs and noted the applicants undertaking to the respondent.

4 The terms of the undertaking, which were quoted by Finn J at [14] of his reasons, were: (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, or 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.

5 Shortly before the consent orders were made, Mr Wilkshire filed five new trade mark applications. The Council successfully opposed these applications on 26 May 2009. In the meantime, on 4 February 2009, Mr Wilkshire sought cancellation of the registration of the Council's trademark 942740.

6 As previously mentioned, Finn J summarily dismissed this application. His Honour's principal reason for dismissing the application was that the applicant did not invoke a ground on which the court could order rectification of the cancellation under s 88(1)(a) of the Trade Marks Act. The Council's written submissions at the hearing before Finn J make the point as follows: Mr Wilkshire's amended application provides, "Under sect 88 of the Trade Marks Act 1995 an order is sought from the Court for the cancelling [sic] the registration of the trade mark 942740 in that it was obtained as a fraud, false suggestion and misrepresentation by Bombala Council and the delegate of the registrar of trade marks". Mr Wilkshire has clearly invoked s 88(1)(a) in seeking cancellation of registration. The candidates for the grounds under s 88(2) would appear to be s 88(2)(b) or (e). Paragraph (b) is not engaged because there has been no amendment of the application. Paragraph (e) is not engaged because it is limited to an application "in respect of an entry in the Register" which only arises in an application under s 88(1)(b), not (a). His Honour expressly accepted this submission.

7 Finn J discussed the possibility of permitting Mr Wilkshire to amend his application but stated that he was not prepared to take this course because of the numerous and unsubstantiated allegations and speculations about the impropriety of persons dealing with his complaints, "be it of the Delegate, the Council's witnesses, or both parties' lawyers". I might add that at the hearing of Mr Wilkshire's application for leave, these entirely unsubstantiated allegations were extended to Finn J. His Honour added at [42] of his reasons: 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.

8 Finn J also referred to other grounds that could, in themselves, have supported an order for summary dismissal. Finn J held that Mr Wilkshire was not "an aggrieved person" within the meaning of s 88(1) of the Trade Marks Act. At [36]-[37] of his reasons his Honour said: 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 matter, 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". 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.

9 Finally, Finn J referred to the dismissal of Mr Wilkshire's appeal from the decision of the delegate pursuant to the consent orders made by Bennett J on 13 March 2007; see quote at [2] above. The application before his Honour was inconsistent with the undertakings noted by Bennett J in the orders made on 13 March 2007. Mr Wilkshire contended in relation to those undertakings that his solicitor had exceeded his authority. In relation to this, Finn J said, at [53]: 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.

10 His Honour added at [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.

Leave to appeal 11 Section 24(1A) of the Federal Court of Australia Act 1976 (Cth) requires that an appeal from an interlocutory judgment of the Court may only be brought with leave. The summary dismissal of Mr Wilkshire's application was interlocutory because it did not finally dispose of the rights of the parties in the sense explained in Carr v Finance Corporation of Australia Limited (1981) 147 CLR 246 at 248 per Gibbs CJ, 253-4 per Mason J. Although the question of leave is for the unfettered discretion of the Court, the principles that inform the exercise of the discretion are clear; Décor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397. In short, the Court needs to satisfied that the decision is attended by sufficient doubt to warrant reconsideration and that, supposing the decision to be wrong, a substantial injustice would result if leave were refused. 12 In his submissions made today in support of his application for leave to appeal, Mr Wilkshire has persisted in numerous allegations of fraud and improper behaviour, not only on the part of those dealing with earlier aspects of the dispute, but extended to, among others, Finn J. There is no evidence to justify these allegations. The fact that, as Finn J noted, there may be inconsistencies and gaps in evidence does not necessarily lead to the conclusion that this is the result of fraud. Although the point has been made to Mr Wilkshire on a number of occasions, he has persisted in these unsubstantiated allegations. This is relevant to the question of costs discussed at [15]-[16] below. 13 In relation to whether an appeal from his Honour's decision has any prospect of success, there are a number of points to be made. I do not propose, however, to consider point-by-point every reason advanced by his Honour and every conclusion to which he has come. In an application for leave to appeal this is neither necessary nor appropriate. In itself, the fact that Mr Wilkshire consented to the orders made by Bennett J in March 2007, and in particular, the undertakings that were given at that time, are sufficient to indicate to me that an appeal in this matter would have no prospect of success. Finn J was entirely correct in his observation that whether or not the applicant's representatives were actually authorised to make those undertakings on his behalf, those undertakings were well within their ostensible authority, and the Council was entirely within its rights to accept them and to rely on them. 14 As I say, that would be sufficient to conclude that an appeal in this matter has no prospect of success. I have considered the other reasons for Finn J's decision, and I can find no error in his Honour's reasoning, much less an error that would warrant reconsideration on appeal. For that reason, the application for leave to appeal is dismissed.

15 The second respondent has sought indemnity costs and referred me to the comments made by Finn J in his reasons of 15 December 2009 for awarding indemnity costs in relation to the proceedings before him. In those reasons, Finn J considered whether there were unusual circumstances that would justify an award of indemnity costs, and was satisfied that this was the case. His Honour said, at [12]-[13]: Notwithstanding the considerable latitude to be given to a lay litigant, I consider Mr Wilkshire has transgressed the borders of indulgence. He has without restraint, over quite some period of time made allegations of impropriety against all who appear to support the Council or whose actions or advice stand in the way of his securing his ends. Further, as I have indicated above, he has provided no plausible justification at all for seemingly preposterous allegations of impropriety. He has been unprepared to honour the undertaking he gave to the Council not to initiate litigation in respect of its use of its registered mark. It is difficult to resist the conclusion that he will continue to vex the Council unless the Court's disapproval of his conduct of litigation such as the present is brought home to him. In the circumstances I consider that an award of indemnity costs is appropriate accordingly.

16 Mr Wilkshire's conduct, to which Finn J referred, has continued at the hearing before me today. It is important that, once and for all, the Court bring these proceedings to an end, not only by refusing leave to appeal, but by signifying that it will not tolerate unsubstantiated allegations of such gravity to be made in this Court. In my view, substantially for the reasons that Finn J gave, indemnity costs are in order. I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Stone.

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