Contrary To Law Finding Is Contrary To Law.

In Neumann v Sons of the Desert SL [2008] FCA 1183 (11 August 2008) , the applicant invoked the Federal Court's jurisdiction to hear and determine appeals against decisions, directions or orders of the Registrar of Trade Marks pursuant to s 191 of the Trade Marks Act 1995 (Cth ) (Act). The Honourable Ryan J pointed out:

"Although referred to as an "appeal", this proceeding is by way of an application for the exercise of the Court's original jurisdiction and is conducted as a rehearing. There is no presumption of the correctness of the Registrar's decision but due weight is to be given to his opinion as that of a person expert in the evaluation of the relevant facts and the application to those facts of the principles which can be derived from the Act."

Ryan J held that the applicant before the court and the applicant for the trade marks were joint owners and, therefore the Delegate's decision should be over-turned for any one of the following three reasons:

under s 58, the applicant for the trade mark was not the true owner of the mark (accepting evidence that the trade marks had been applied for and registered overseas in the names of joint proprietors);

under ss 42 and 57, that use of the marks would be contrary to law (in this case, Spanish law);

the Delegate erred in relying upon regulation 21.15(8), (which provides that the Registrar is not bound by the rules of evidence) to admit statements that were not in the form of declarations: an express requirement of regulation 21.17(1)

Orders made The appeal was allowed, the decision of the Delegate was set aside, the opposition to the registration of the trade mark upheld, the registration of the mark refused and respondent ordered to pay the applicant's costs of the appeal and of the opposition proceedings before the Registrar of Trade Marks.

Comment I am a bit surprised by His Honour's decision that the term "contrary to law" can include foreign law. Generally, the phrase means legislation, regulations, ordinances, and common law cases. In Re Application by Slaney (1985) 6 IPR 307 at 309 a trade mark was found to be in breach of the Health Legislation Amendment Act 1983 (Cth). In Re Application by Athol Thomas Kelly (1987) 8 IPR 667 at 672 it was found that the trade mark would infringe the Advance Australia Logo Act 1984 (Cth).

The point was considered in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd  [2001] FCA 683), which held (at para 25) that " "contrary to law" in the context of judicial proceedings means contrary to all laws" (but in the context appears to refer to Australian laws) and found that the trade mark would infringe the Copyright Act 1968 (Cth).

In an analogous case, I acted for the successful plaintiffs in having an arbitration award set aside in the Supreme Court of Victoria a few years ago (on the grounds of bias and misconduct) and the court affirmed that even though the arbitration in that case had been conducted under a recognised system of law (Jewish law): "the arbitration agreement, the requirements of an award and the enforcement of the award, are governed by, and must conform to, the law of Victoria": Mond v Berger (2004) 10 VR 534; [2004] VSC 45 .

When a Court opines that something would be contrary to law, it is simply expressing a view upon a hypothesis, and the opinion does not amount to a finding of any actual breach of the relevant law involved. However, it seems anomalous (yes, that's right dear, the famous poet) that the fate of an Australian trade mark may rest on the law of Spain or Zimbabwe or Palau.

Respectfully, I think that Justice Ryan got it wrong on that aspect of the s 42 point, not that the outcome would be affected.

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Mr Nick Weston

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