Case: Lomas v Winton Shire Council [2002] FCAFC 413 ; (2003) AIPC 91-839
Outcome: considered
parties raised two issues concerning the onus and standard of proof. The first is whether the "presumption of registrability", as it has come to be known, applies when the relevant ground to refuse registration is s 41(2), having regard to the interrelation of s 33 and s 41(3)-(6). Assuming the presumption does apply, the second issue concerns the proper standard of proof. Relying on the Full Court decision in Lomas v Winton Shire Council [2002] FCAFC 413 ; (2003) AIPC 91-839 ( Lomas ), Guylian says that the Court should only refuse registration if it satisfied that the mark should clearly not be registered. In reliance on Lomas [2002] FCAFC 413 ; (2003) AIPC 91-839 , Guylian contends that the proper standard to be applied on an appeal under 35 of the Act in respect of a refusal to register is that the refusal should be upheld only if the Court is satisfied that the mark should clearly not be registered. Lomas was an appeal from a single judge's decision to uphold an opposition to registration. At [17], the Full Court said: No submissions were addressed to the Court concerning the standard to be applied by a single judge in considering an appeal under s 56 of the Act. The presence of s 195(2) [which imposes a leave requirement for appeals from a single judge decision] suggests that a parallel should be drawn with the scheme of appeals in opposition proceedings under the Patents Act 1990 (Cth). On that basis, on appeal under s 56 , the Court should consider whether the trade mark should clearly not be registered. Only if so satisfied should the Court decide to uphold an opposition. These observations have been followed in several first instance decisions, albeit with varying degrees of caution: see Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901 ; (2003) 59 IPR 318 ( Torpedoes ) at [16]-[22], Finn J in Austereo [2004] FCA 968 ; 61 IPR 257 at [4] - [5] and Lander J in Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 66 IPR 131 at [123] - [141] . In Austereo , Finn J considered that he ought "as a matter of comity" apply the Lomas standard as adopted by Bennett J in Torpedoes . In Kowa , Lander J expressed some doubt about the point but considered he was bound by Lomas and the Full Court decision in Woolworths [1999] FCAFC 1020 ; 93 FCR 365. Gyles J has on two occasions expressed a different view: see Clinique Laboratories v Luxury Skincare Brands Pty Ltd [2003] FCA 1517 ; (2003) 61 IPR 130 at [132] and Pfizer Products Inc v Karam [2006] FCA 1663 ; (2006) 70 IPR 599 at [6] - [26] ( Pfizer ). His Honour considered the higher Lomas standard in some detail in Pfizer . After an exhaustive review of the authorities, and noting that the observations in Lomas itself were "plainly obiter dicta without the benefit of argument", his Honour stated at [21]: The fundamental difficulty with [the respondent's] argument is that it is inconsistent with the language of s 55. Whether a ground of opposition has been "established" is a conventional concept requiring no particular elucidation. In my opinion, there is no basis upon which the section can be read as "the extent (if any) to which any ground on which the application was opposed has been clearly established", particularly where that implication changes the practical operation of the section by imposing a special high onus of proof. It is also worth noting that the construction favoured in Torpedoes is not rooted in the words of the section at all. The precise finding in that case was that the opposition "should be upheld only if the court is satisfied that the trade mark should clearly not be registered": at [22]. With all respect, that test is not to be found in the statute. I cannot find anything in the structure or content of other provisions of the 1995 Act that would point to reading s 55 other than according to its ordinary meaning. Guylian did not seek to justify in a substantive way the approach of the Full Court in Lomas . It sought to rely on the decision, and those that have followed it, but it acknowledged that other decisions run counter to it. In my view, there is nothing in the relevant provisions that supports the imposition of a higher standard, even at the acceptance stage. The "presumption of registrability" arises from s 33 of the Act: Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [24] ; Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [50] . Section 33 does not speak of being "clearly satisfied"; it mandates acceptance of an application unless the Registrar " is satisfied that ... there are grounds for rejecting it". On this point, I prefer the views expressed by Gyles J and in particular his Honour's observations that an acceptance that there is a presumption of registrability "says nothing as to the standard of proof" and does not import a higher threshold than the conventional balance of probabilities: see Pfizer [2006] FCA 1663 ; (2006) 70 IPR 599 at [18] . The presumption as it is gives effect to the general position under the Act that an applicant is not required to establish an absence of grounds to refuse or object to registration. It should also be noted that in both Woolworths [1999] FCAFC 1020 ; 93 FCR 365 and Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 (both acceptance stage cases) there is no suggestion that any special higher standard was applicable.