Trade Mark News & Information

Trademark Registration – Federal Court – Judicial Review

Laminar Air Flow Pty Ltd v Registrar of Trade Marks [2017] FCA 1447 (6 December 2017)

Laminar sought judicial review of a decision by the Registrar to correct an error in entering particulars of a trademark registration.

The Registrar’s decision was to correct the Register to enter Vokes Limited as the owner of certain trademark registrations for VOKES and UNIVEE. The Registrar had previously acted upon an application made on 15 August 2001 to change the name of the registered owner from Vokes Limited to AES Environmental Pty Ltd (and AES subsequently assigned its rights to Laminar). However, there was not, in fact, any change of name and there was no evidence of any assignment of rights and so the entry to record the change of name was in error.

However, Robertson J found no error had occurred and set aside the Registrar’s decision. His Honour found the earlier decision of the Registrar to act upon the application to record a change of name of the owner did not involve any error which could be corrected under s81. Rather, the error was on the part of the party submitting that application.

Robertson J considered it would not be conducive to the integrity of the Register to amend the owner particulars in circumstances where many years have passed and intervening dealings have occurred with the result that those subsequent dealings would fall as a consequence. Anyone aggrieved by the relevant trade marks remaining on the Register in their current ownership may apply to the court for rectification of the Register under s88.

It should be noted that the Registrar’s current practice is to not require any accompanying documentary proof to record a change of owner name and perhaps, in light of this case, that practice may be reviewed.