Trade Mark News & Information

Trademark Registration -Full Federal Court-Judicial Review

Vokes Ltd v Laminar Air Flow Pty Ltd [2018] FCAFC 109 (16 July 2018)

Unsuccessful appeal by Vokes. The Full Federal Court agreed with the primary judge that no relevant error had occurred to enliven correction of the Register under s81 of the Act.

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.

Laminar sought judicial review of the Registrar’s decision in which Robertson J found no error had occurred and set aside the Registrar’s decision. This is reported here . 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.

In the appeal, the Full Federal Court (Nicholas, Davies and Burley JJ) rejected Vokes’ argument that the Registrar’s power under s 81 of the Act was enlivened because the “error” was the entry by the Registrar of the change of name in the particulars of the trade mark registrations in the Register when, in actuality, there had been no change in the name of the registered owner which meant that s 216 of the Act, which allowed for changes of name, had no application.

Section 81 is of narrow scope and cannot be relied upon to correct any error in the particulars entered in the Register, rather the relevant error must one that is “made in entering” those particulars on the Register. Section 85 provides the broader power for the Court to correct any error in an entry in the Register.

Here, the Registrar properly acted upon the form filed to record the change of name under s216. The Registrar is not required to verify that a change of name had in fact occurred or to verify the authority of the person submitting the form. Hence, there was no error made by the Registrar in entering the change of name on the Register.

The Full Court also noted the power to correct the Register under s81 is limited and does not extend to empowering the Registrar to make consequential amendments such as removing the name of a person subsequently entered as registered owner.

The Full Court observed that the Register is only prima facie evidence of a particular or matter entered in it and does not necessarily reflect the true position. Further, s 22 confers on the registered owner of the trade mark the right to deal with the trade mark as its absolute owner and give good faith discharges for any consideration for that dealing, subject to some important exceptions. However, the right to be recorded in the Register as owner of a registered mark implicitly conferred by s 22 on a purchaser in good faith for value and without notice of any fraud on the part of the registered owner, cannot be defeated by an application under s 81 to substitute the name of the original owner in place of the name of such a purchaser. It is apparent from the language of s 81 and the broader statutory scheme that the Registrar’s power under the section does not extend this far. In such a case, the rights of the parties, including the question whether the purchaser is entitled to the protection available under s 22, are to be determined by the court in an application under s 85 or s 88 of the Act.