Case: Lomas v Winston Shire Council [2003] AIRC 91-839
Outcome: followed
The applicant seeks to meet this contention by pointing to the structure of the Act which provides in Division 2 of Part 8 for rectification proceedings on grounds which include grounds on which the registration of the mark could have been opposed. The applicant also points to the observations of a Full Court in Lomas v Winston Shire Council [2003] AIRC 91-839 (" Lomas ") at [17] [19]. 11 In Lomas it was not necessary for the Court to consider the nature of opposition proceedings or the standard of proof to be applied. However, the Court, at [18], described such proceedings as summary in nature. 12 The Full Court in Lomas went on to say at [18]:- "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." 13 Lomas was criticised by Gyles J in Clinique Laboratories Inc v Luxury Skin Care Brands Pty Limited (2003) 61 IPR 130 ( "Clinique ") at [10] [13]. His Honour pointed out at [13] that the consequence of the approach stated in Lomas is that a party can oppose registration and, even if unsuccessful on an appeal under s 56 , can then bring expungement proceedings on precisely the same ground. 21 Here the difficulty is not merely the existence of the debate between the Lomas and Clinique views. The difficulty arises from a recent decision of a Full Court in Woolworths Limited v BP plc [2006] FCAFC 52 (" Woolworths v BP "). 27 In coming to that view his Honour referred to Lomas and to the decision of Bennett J in Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901 ; (2003) 132 FCR 326 (" Torpedoes") in which her Honour applied the "should clearly not be registered" test. Cooper J also referred to the remarks of Gyles J in Clinique at [12] [13] that the question is treated as open. 34 In Clinique , Gyles J recognised that it is a consequence of the reasoning in Lomas and Torpedoes that a party can oppose the registration of a mark and, even if unsuccessful on appeal, can then bring expungement or revocation proceedings based on the same ground as was unsuccessfully relied on in the opposition proceedings. 36 Lomas and Torpedoes were followed by Lander J in Cowa Company Limited v NV Organon (2005) 223 ALR 27 although his Honour had reservations about the test to be applied; see [123] [141]. Nevertheless, he considered that he was bound to follow the decisions that had applied the test stated in Lomas. 37 The debate as to the appropriate test is but a reflection of a wider debate as to the nature of opposition proceedings. This is revealed in the description in Lomas at [18] of such proceedings as "quasi summary". 38 This debate turns upon the nature of the statutory scheme revealed in Divisions 1 and 2 of Part 4, Divisions 1 and 2 of Part 5 and Divisions 1 and 2 of Part 8 of the Act; see also ss 195 and 197 of the Act 40 Two Full Courts have stated in plain terms that if opposition proceedings fail, the validity of the trade mark can then be fully explored in revocation proceedings; see Lomas at [18] [19] and Woolworths v BP at [55]. 43 What follows from this, and from the observations in Lomas is that the decision on an appeal under s 56 does not necessarily decide the same issue and it is not a final decision. 44 Thus, in the present case, it would follow that the first two requirements for an issue estoppel have not been satisfied. 45 In my view, while recognising the force of Gyles J's remarks, it seems to me that I should follow the observations of the Full Court in Lomas. It is true that those observations were dicta, but they were clearly considered observations which I should follow, at least as a matter of judicial comity. 46 It is true as Ms Baird, for the respondent, forcefully submitted, that Cooper J's reasons for the decision did not depend upon whether the higher test of "should clearly not be registered" applies. Instead, his Honour was satisfied that the applicant failed on the balance of probabilities. 48 However, the effect of what was said in Lomas is that under the statutory scheme which relates to opposition proceedings, the decision cannot be said to be final. Because of the nature of opposition proceedings, a decision in an appeal under s 56 of the Act cannot, as a matter of law, finally determine the rights of the parties; see Carr v Finance Corporation of Australia [1981] HCA 20 ; (1980) 147 CLR 246 at 248, 253-254; Computer Edge Pty Limited v Apple Computer Inc [1984] HCA 47 ; (1984) 54 ALR 767 at 767 768.