Case: N.V. Sumatra Tobacco Trading Company v British American Tobacco Australia Services Limited [2008] FCA 1542
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. The second application is an application by FCN as applicant for an order that TFN provide security for FCN's costs of and incidental to the appeal proceeding. That application although conceded by FCN to be novel, is made, it is said, on the footing that although FCN is the applicant in the proceeding, TFN ought to be regarded for all practical purposes as the prime mover or aggressor having initiated the application for removal of the trade mark before the Registrar. FCN says its appeal arises out of that "proceeding" and is responsive to it in the sense that FCN is exercising a right of appeal derivative of that proceeding. Therefore, it is said, s 56(5) of the Court Act in conjunction with Order 28 of the Federal Court Rules contemplates that an order for security for costs might be made against a respondent before this Court, who is (or was) an "applicant" in a proceeding before the Registrar of Trade Marks. That result is said to follow because Order 28, r 1 provides that references to an applicant (for the purposes of that Order) "extend to any person who makes a claim for relief in any proceeding" (Order 28, r 1). Secondly, FCN's application is said to be supported by the powers conferred on the Court by s 197 of the Act to make any order that in all the circumstances the Court thinks fit (s 197(e)). FCN says s 197 should be read in conjunction with s 222 of the Act which confers power upon the Registrar of Trade Marks in these terms: 222. If a person who neither resides nor carries on business in Australia: (a) ... (b) applies to the Registrar under Part 9 for a trade mark to be removed from the Register; the Registrar may require the person to give security for the costs of the proceeding and may, if security is not given, dismiss the proceeding. FCN says that the Court in hearing and determining an appeal under s 104 must be taken to have the same powers conferred upon it as those conferred under s 222 upon the Registrar or alternatively the empowering provision of s 197 confers sufficient power to enable an order to be made directing TFN to provide security for FCN's costs of and incidental to the hearing, assuming the relevant discretionary factors are made out. Principal among those for the moment are said to be that TFN ought to be characterised as the prime mover or aggressor and secondly, TFN is a partnership foreign to the jurisdiction with no assets within the jurisdiction. TFN says that FCN's application for security is misconceived because s 56 of the Court Act and Order 28 of the Federal Court Rules only contemplate orders for security for costs against an applicant or appellant or a person who "makes a claim for relief in any proceeding" (Order 28, r 1). TFN says it makes no claim for relief in this proceeding and the reference in Order 28, r 1 can only be a reference to a proceeding in the Court. Thus, there is no power to make an order against a respondent who makes no claim upon an applicant. Secondly, s 222 of the Act confers power upon the Registrar and only the Registrar, in the circumstances of the section and is not a provision which confers power on the Court. Thirdly, FCN's notice of motion is confined to an order sought under s 222 and does not, in terms, rely upon s 197. Fourthly, s 197 is directed to the powers of the Court in the hearing and determination of an appeal and does not confer power to make an order for security for costs. The power to do so in a s 104 proceeding before the Court is, it is said, determined by the Court Act and the Federal Court Rules . TFN's application for security TFN says in reliance upon an affidavit by Mr Anthony Bennett sworn 12 December 2008 that FCN is a company that operates a website described as "The Food Channel". By FCN's website material it describes itself as a company founded in 1997 that utilises the internet and television as the medium for distributing multimedia productions to promote a range of services and products in a range of regions. TFN says that FCN is a company which has one issued share of $1.00 in paid up capital and Mr Lawrence is the only shareholder. TFN says that searches fail to reveal any significant assets held by FCN. Further, TFN says that The Food Channel website does not identify the entity conducting the business nor the business premises.