Austbar Pty Ltd v ABA Australian Bar Association Ltd (No.2)  FCCA 2091 (31 July 2018)
In the Federal Circuit Court, the Australian Bar Association (ABA) was successful in its application for summary dismissal under s17A of Austbar’s appeal from a decision by the Registrar of Trade Marks rejecting its oppositions to trade mark registration by ABA of AUSTBAR and AUST BAR.
Summary dismissal was based on pleas of res judicata, issue estoppel and Anshun estoppel arising by virtue of the decision by the Federal Court of Australia in Selth v Australasian Barrister Chambers Pty Ltd (No 3)  FCA 649 (8 June 2017).
In the earlier Federal Court decision, Greenwood J found Austbar’s conduct in registering and intending to use the Australian Bar Association and Australian Barristers Association business names infringed ABA’s trade mark registration for AUSTRALIAN BAR ASSOCIATION. Also, use of AUSTBAR, (including as part of a domain name, in a Twitter handle, and in the name Austbar Chambers by itself and in combination with a Scales of Justice Design element) and use of Australian Barrister with a Scales of Justice Design element also infringed ABA’s trade mark registrations. His Honour, however, did not regard use of the name Australasian Barrister Chambers (by itself or with a Scales of Justice Design element) to infringe, but the problem was due to the austbar.com.au domain name being used to access to this online business. The use of this domain name and the austbaradr.com.au domain name, as well as the @AustBar Twitter handle, and the various names containing or consisting of Australian Bar Association, Australian Barristers Association, AustBar, AustBar Chambers and AustBar ADR was also conduct which was misleading or deceptive under the Australian Consumer Law because this conduct involved a misrepresentation as to an affiliation with, or approval by, the ABA.
Greenwood J also found that the individual members of the Council of the ABA validly applied for registration of the relevant trade marks as trustees for the ABA and the subsequent assignment of rights to other incoming members of the Council and then to Mr Selth and ultimately to ABA were also valid and there was no defect in title to the trade mark registrations.
The various forms of disclaimer on the AustBar Chambers website were also ineffective. Persons engaging with the relevant website, including ordinary consumers, had already been taken there by the infringing conduct and misrepresentation arising from use of the austbar domain name and hence any disclaimer needed to clearly and obviously cure an existing problem (which is difficult and rare to achieve).
Judge Dowdy of The Federal Circuit Court noted the previous orders and the reasons for judgment of Greenwood J finally determined that Austbar has no right, title or interest in or to the use of the trade marks or names, AUSTBAR and AUST BAR. Austbar is not entitled to impeach or attack the decision of the Registrar of Trade Marks, because that decision is in accord with the findings and the previous orders of Greenwood J, which quelled the controversy about the use and ownership of the words comprising the two trade marks the subject of the Registrar of Trade Marks’ decision adversely to Austbar.
In Judge Dowdy’s view, the appropriate legal bases for this conclusion are those of issue estoppel and Anshun estoppel, rather than res judicata or cause of action estoppel in the strict sense. This is because the two proceedings are not strictly identical and strict identity appears to be a prerequisite for the application of res judicata in its strict sense. While the Court should be careful when invoking the power under s.17A to summarily dismiss a proceeding, ABA has established that Austbar has no reasonable prospect of successfully prosecuting the whole of the present proceeding.