Case: Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365
Outcome: applied
nature of an "appeal" to the Federal Court under s 35 (and in respect of a decision in an opposition proceeding under s 56) has been discussed at length in several cases: see Blount 83 FCR at 58D-59A (Branson J); Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 at [21] - [22] (French J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365 ( Woolworths ) at [32]-[34] (French J). In hearing an appeal pursuant to s 35, the Court exercises its original jurisdiction and conducts a hearing de novo. It is to determine on the merits the same question that was before the Registrar namely, whether or not the trade mark should be accepted and in doing so, it is to apply the same legal criteria that the Registrar is required to adopt under the Act. The Registrar's decision is not to be presumed correct but the Court is entitled to have regard to the Registrar's opinion as that of a skilled and experienced person in the field of trade mark registrations: Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [33] (French J). Presumption of registrability and standard of proof Dealing firstly with the issue of onus, it is now well understood that s 33 of the Act had the effect of reversing the previous position on onus under the 1955 Act. Whereas under that Act an applicant had to satisfy the Registrar that there were no grounds to object to registration, the position now is that an application must be registered, unless the Registrar is satisfied that there is a ground for rejecting it: see s 33 and reg 17A.24; see also the discussion by French J in Woolworths [1999] FCAFC 1020 ; 93 FCR 365 at [15] and [20]-[24]. An applicant is thus said to have the benefit of a "presumption of registrability" under the Act. In other words, a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists. In Kenman Kandy [2002] FCAFC 273 ; 122 FCR 494 , the Full Court considered an application for registration of a shape mark where the only ground of possible rejection was s 41(2). The applicant adduced no evidence of use of the mark and did not rely on either s 41(5) or (6). As a result the case turned on the sole question whether the mark was inherently adapted to distinguish the applicant's goods under s 41(3). In discussing the nature of appeals against decisions of the Registrar, French J stated at [22]: Since the enactment of the 1995 Act the onus is no longer on the applicant to establish registrability as it was under the 1955 Act: Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 ; (1999) 93 FCR 365 at 372 3 ... The application must be accepted unless the court is satisfied that it has not been made in accordance with the Act or that there are grounds for rejecting it. If the matter is in doubt then the application should be accepted. The possibility of refusal after a contested opposition with evidence and closer scrutiny remains open. The acceptance stage is not the time for detailed adversarial examination of the application that might be involved in an opposition: Registrar of Trade Marks v Woolworths at FCR 377 .... Acceptance for registration involves an initial screening process albeit it requires the application of statutory criteria and evaluative judgments by the Registrar and the Registrar's delegates. (Emphasis added.) Later, in addressing whether the mark was inherently adapted to distinguish, his Honour said at [50]: [I]t is necessary to bear in mind that this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s 33. To the extent that critical criteria upon which registration might be rejected are in doubt, the application should be accepted. Closer adversarial scrutiny may occur in opposition: Registrar of Trade Marks v Woolworths at FCR 377 .... There is a tension between the operation of the presumption and the text and structure of s 41. Section 41(3) requires the Registrar to "take into account" the extent to which a mark is inherently adapted to distinguish in deciding whether or not it is "capable of distinguishing" the applicant's goods. Section 41(4) then directs the decision-maker to subs 41(5) and subs 41(6), if they are "still unable to decide the question". Section 41(5) will be applicable if there is a finding that the mark is to some extent inherently adapted, but the Registrar is "unable to decide, on that basis alone, that the mark is capable of ... distinguishing". Accordingly, where there remains some doubt after considering s 41(3) about a mark's capability to distinguish, rather than resolving that doubt in favour of an applicant (by operation of a presumption), the statute expressly directs the decision-maker to consider the criteria in subs 41(5) or subs 41(6) (whichever is applicable). 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. 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.