Case: Blount Inc. v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50 at 58-9; [1998] FCA 440 ; 40 IPR 498
Outcome: cited
application before this Court under s 104 is an application in the original jurisdiction of the Court. Having regard to the powers conferred upon the Court under s 197 of the Act, it is plain that it is not necessary on appeal under s 104 to determine whether the decision of the Registrar was correct when made. In that sense, the appeal proceeding is a hearing conducted "afresh" or de novo (like an appeal proceeding under s 56 of the Act: N.V. Sumatra Tobacco Trading Company v British American Tobacco Australia Services Limited [2008] FCA 1542) on material properly placed before the Court ( Blount Inc. v Registrar of Trade Marks [1998] FCA 440 ; (1998) 83 FCR 50 at 58-9; [1998] FCA 440 ; 40 IPR 498 at 506; Soncini v Registrar of Trade Marks [2001] FCA 333 ; (2001) 109 FCR 548 ; 51 IPR 411 ; Ostrowski-Meissner v Registrar of Trade Marks (2006) 69 IPR 291 at [7] and [8]). Section 197 is in these terms: On hearing an appeal against a decision or direction of the Registrar, the Federal Court may do any one or more of the following: (a) admit further evidence orally, or on affidavit or otherwise; (b) permit the examination and cross-examination of witnesses, including witnesses who give evidence before the Registrar; (c) order an issue of fact to be tried as it directs; (d) affirm, reverse or vary the Registrar's decision or direction; (e) give any judgment, or make any order, that, in all the circumstances, it thinks fit; (f) order a party to pay costs to another party. Section 197 of the Act is framed in broad terms. The terms of that enabling provision are directed to conferring broad powers of rehearing in the disposition of an appeal from the particular decision of the Registrar ( Blount Inc. v Registrar of Trade Marks (supra)), that is: admit further evidence; permit examination and cross-examination of witnesses; permit an issue of fact to be tried as directed; affirm, reverse or vary the primary decision; give any judgment or make any order the Court thinks fit; and make an order as to costs. That which is to be reheard on the application (appeal) of FCN is whether FCN can make out, on all the evidence, its opposition to removal of the mark having failed to make out that position before the Registrar's delegate. The decision from which the appeal lies did not involve any element of security for costs. Nevertheless, s 197(e) of the Act confers broad power to "... give any judgment, or make any order , that, in all the circumstances, it thinks fit on hearing an appeal against a decision or direction of the Registrar" [emphasis added]. The conferral of power upon the Court to make any order on hearing an appeal is sufficiently broad to confer a power to make any order in the course of an appeal proceeding including any interlocutory order. That power may extend in a given case to a security for costs order. In the ordinary course however, an applicant for security would find the source of the power for such an order in s 56 of the Court Act and Order 28, r 1 of the Federal Court Rules . The conferral of an express power on the Court to order security under the Trade Marks Act was probably not thought necessary having regard to the powers conferred upon the Court by the Court Act and the Federal Court Rules . In principle, the scope of s 197(e) is broad enough to confer power on the Court to make an order against any party in all the circumstances in any given case, if the relevant discretionary factors are satisfied. In this case, it is not necessary to consider any further the scope of the power particularly as it relates to a potential order that might be made against a respondent (if at all) as no order ought to be made in the exercise of discretion for these reasons. First, no claim for relief is made by the respondent other than to affirm the decision of the respondent's delegate challenged by the applicant by way of rehearing. Secondly, although the respondent initiated the proceeding before the Registrar and sought to remove the trade mark from the Register, the present applicant seeks the rehearing and could have put on before the Registrar all of the evidence that it now proposes to put on in the appeal. If all the evidence bearing on the question is as compelling as FCN contends, the Court proceeding and the attendant costs would not have been necessary. Thirdly, the applicant bore the rebuttal burden as a matter of law under s 100 of the Act before the Registrar in relation to any allegation made by TFN under s 92(4)(b) of the Act and failed to put on all the evidence that might have discharged that burden. Fourthly, the evidence as to the amount of costs which might be the subject of an order is scant. Accordingly, FCN's application for security is to be dismissed, with costs. I certify that the preceding twenty-seven (27) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood. Associate: Dated: 11 February 2009 Counsel for the Applicant: Mr Stephens Solicitor for the Applicant: Potts &amp; Co, Lawyers Counsel for the Respondent: Respondent represented by its solicitors Solicitor for the Respondent: Bennett &amp; Philp Lawyers Date of Hearing: 5 February 2009 Date of Judgment: 11 February 2009 AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback URL: http://www.austlii.edu.au/au/cases/cth/FCA/2009/68.html