Foxtel Management Pty Limited v Registrar of Trade Marks  FCA 605 (1 May 2019)
Foxtel was unsuccessful in its application for judicial review of a decision by the Registrar to not revoke a trade mark registration.
Foxtel had intended to oppose registration of an application for trade mark registration of CUniQ filed by China Unicom Global Limited (Applicant). Foxtel attempted to file a Notice of Intention to Oppose on the last day of the opposition period, but the electronic filing went awry and was not received in time. Consequently, the CUniQ trade mark proceeded to registration. Foxtel then asked the Registrar to revoke the registration, but the Registrar declined to do so.
The problem arose because Foxtel’s lawyers submitted a Notice of Intention to Oppose, but payment of the fee was not received. There was an error on the part of Foxtel’s lawyers. The Registrar’s delegate initially intended to revoke the registration and notified the Applicant of this. The Applicant’s attorneys filed submissions against revocation. These submissions were not made available to Foxtel, but the delegate found them influential and declined to revoke the registration.
Foxtel contended that the Registrar breached the rules of natural justice, particularly procedural fairness, by failing to give it an opportunity to respond to the submissions filed on behalf of the Applicant. Burley J found that the Registrar was obliged to afford procedural fairness to Foxtel, but Foxtel had not established that the failure to provide it with a copy of the Applicant’s submissions amounted to a material breach of the requirements of procedural fairness.
His Honour considered the scheme of the Act and the language of s 84A confers power on the Registrar to affect the rights of Foxtel sufficiently to warrant a finding that the rules of natural justice regulate the exercise of that power. Although s 84A(5) only specifies the registered trade mark owner and other persons recorded under Part 11 as the persons that must be given an opportunity to be heard before a decision to revoke registration, and s84A(6) provides that the Registrar is not obliged to make any decision under s84A, it does not in turn follow that Foxtel do not have a right to procedural fairness.
Foxtel’s primary grievance was that the Applicant’s submissions referred to secondary materials (the Explanatory Memorandum) as an aid to the construction of s84A. However, Burley J considered the Registrar properly considered her discretion under s84A and did not just accept the Applicant’s submission that s84A cannot apply where the error or omission lies with someone other than the Registrar. The Applicant’s submissions led to a reconsideration of the matter by the Registrar, but it did not follow that that the Registrar’s reasons for not revoking registration reflected an endorsement of the Applicant’s submissions.
Foxtel also contended that the making of the decision was an improper exercise of the power conferred by s 84A of the Act because it was so unreasonable that no reasonable person could have so exercised the power. Burley J considered the decision of the Registrar to decline to revoke registration fell within the decisional freedom to exercise her discretion granted by the terms of the Act and the factual context of the decision, and was not unreasonable in the sense contended by Foxtel.
Finally, Foxtel considered the Registrar’s decision to not revoke registration involved an error of law by construing s84A too narrowly. This was premised on the Registrar having followed the construction of s84A propounded in the Applicant’s submissions, but Burley J had already found that it was apparent the Registrar did not accept this construction. Consequently, his Honour found this ground for review was also not established.