Wilson Parking Australia 1992 Pty Ltd (ACN 052 475 911) v Leda Holdings Pty Ltd (ACN 001 404 557) & Ors [1997] FCA 121 (28 February 1997)

CATCHWORDS

RECTIFICATION OF REGISTER - Trade Marks Act 1995 transitional provisions - meaning of proceedings "pending" under s.250 of the 1995 Act - ordinary meaning applies.

Norcal Pty Limited v. D'Amato (1988) 15 NSWLR 376

National Bank of New Zealand Limited v. Chapman (1975) 1 NZLR 480

Wardley Australia Limited v. State of Western Australia [1992] HCA 55; (1992) 175 CLR 514

State of Western Australia v. Wardley Australia Limited (1991) 30 FCR 245

Fernance v. Nominal Defendant (1989) 17 NSWLR 710

Leond Maritime Inc. v. McAmethyst Shipping ("the Anna L") (1994) 2 LLR 379

N.V. Philips Gloeilampenfabrieken v. Mirabella International Pty Limited (1993) 44 FLR 239

Re Smerdon & Growdon; Ex parte Bowden (1929) 1 ABC 72

Regan & Blackburn Limited v. Rogers (1985) 1 WLR 870

MELHERO PTY LIMITED & ANOR v. CLUB X PTY LIMITED & ORS

No. NG963 of 1995

BEAUMONT J.

SYDNEY

20 JANUARY 1997

IN THE FEDERAL COURT OF AUSTRALIA )

)

NEW SOUTH WALES DISTRICT REGISTRY ) No. NG963 of 1995

)

GENERAL DIVISION )

BETWEEN: MELHERO PTY LIMITED

First applicant

MITCHELL PRODUCTS PTY LIMITED

Second applicant

AND CLUB X PTY LIMITED

First respondent

WALTER DELL PTY LIMITED

Second respondent

ASHWOOD WAY PTY LIMITED

Third respondent

SHAFT THEATRES PTY LIMITED

Fourth respondent

SILKEN HALL PTY LIMITED

Fifth respondent

TEXAS PARK PTY LIMITED

Sixth respondent

AND BETWEEN: WALTER DELL PTY LIMITED

First cross-claimant

ASHWOOD WAY PTY LIMITED

Second cross-claimant

AND MELHERO PTY LIMITED

First cross-respondent

MITCHELL PRODUCTS PTY LIMITED

Second cross-respondent

CORAM: BEAUMONT J.

DATE: 20 JANUARY 1997

MINUTES OF ORDER

THE COURT ORDERS:

1. Declare that the provisions of the Trade Marks Act 1995 , and not those of the Trade Marks Act 1955 , apply to the applicants' claim in these proceedings for rectification of the Register of Trade Marks.

2. Costs of this question reserved.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA )

)

NEW SOUTH WALES DISTRICT REGISTRY ) No. NG963 of 1995

)

GENERAL DIVISION )

BETWEEN: MELHERO PTY LIMITED

First applicant

MITCHELL PRODUCTS PTY LIMITED

Second applicant

AND CLUB X PTY LIMITED

First respondent

WALTER DELL PTY LIMITED

Second respondent

ASHWOOD WAY PTY LIMITED

Third respondent

SHAFT THEATRES PTY LIMITED

Fourth respondent

SILKEN HALL PTY LIMITED

Fifth respondent

TEXAS PARK PTY LIMITED

Sixth respondent

AND BETWEEN: WALTER DELL PTY LIMITED

First cross-claimant

ASHWOOD WAY PTY LIMITED

Second cross-claimant

AND MELHERO PTY LIMITED

First cross-respondent

MITCHELL PRODUCTS PTY LIMITED

Second cross-respondent

CORAM: BEAUMONT J.

DATE: 20 JANUARY 1997

REASONS FOR JUDGMENT (No. 2) (ON QUESTION WHETHER 1955 OR 1995 ACT APPLIES TO RECTIFICATION CLAIM)

INTRODUCTION

In my principal reasons in this matter, I indicated my conclusion that the provisions of the Trade Marks Act 1995 , rather than those of the 1955 Act, applied to the applicants' claim for rectification. These are the reasons for that conclusion.

THE SEQUENCE OF EVENTS AND THE RELEVANT LEGISLATIVE SCHEME

In the principal reasons, it was noted that these proceedings were commenced by the applicants by filing an application on 21 December 1995 which alleged a contravention of Part V of the Trade Practices Act 1995 and passing off, and claimed injunctive relief and damages in that connection; and that on 27 February 1996, the applicants amended their original application by adding a claim for rectification of the Register.

The Trade Marks Act ("the 1995 Act") was assented to on 17 October 1995.

Part 1 of the 1995 Act (ss.1-5) deals with "Preliminary Matters" relevantly as follows:

By s.2(1), it is provided that Part 1 commences on the day on which the 1995 Act receives Royal assent.

By s.2(2), it is provided that the 1995 Act, other than Part 1, commences on 1 January 1996.

Part 22 of the 1995 Act deals with "Repeal & Transitional" matters relevantly as follows:

By s.232 (in Division 1 of Part 22) it is provided that the Trade Marks Act 1955 ("the 1955 Act") is repealed.

Automatic registration under the 1995 Act of marks registered under the 1955 Act is provided by s.233 (in Division 2 of Part 22).

Division 3 of Part 22 deals with "Matters Pending Immediately before the Repealed Act".

By s.16 of the 1995 Act, the "repealed Act" means the 1955 Act.

Relevantly, Division 3 provides, by s.250, as follows:

"250. If proceedings arising from an application to a court under section 22 (Rectification of Register) of the repealed Act were pending immediately before 1 January 1996, the matter is to be decided under the repealed Act as if the old register were to be rectified, but any order made by the Court may only be in respect of the rectification of the Register."

By s.6, the "old register" means the Register kept under the 1955 Act; and "Register" means that kept under the 1995 Act.

Section 22 of the 1955 Act empowers a prescribed court to order the rectification of the old register.

The question arises as to the meaning, in the context of s.250, of the term "pending" in connection with the description of the contingency -

"If proceedings arising from an application under s.22... of the [1955] Act were pending [my emphasis] immediately before 1 January 1996...."

The only definition of "pending" is in s.6 and this is in relation to an application for registration of a trade mark. It is there provided that, for this purpose, "pending" is to have the meaning given to it by s.11.

Section 11(1) provides:

"11 (1) An application for the registration of a trade mark under this Act is "pending" from the time it is filed until:

(a) it lapses (see section 37), is withdrawn (see section 214) or is rejected (see section 33); or

(b) if the Registrar refuses (under section 55) to register the trade mark and there is no appeal against the decision - the end of the period allowed for the appeal; or

(c) if the Registrar refuses (under section 55) to register the trade mark and:

(i) there is an appeal against the decision; and

(ii) the decision is confirmed on appeal;

- the day on which the decision is confirmed on appeal; or

(c) the trade mark is registered under section 68."

By s.11(2) it is provided:

"(2) An application for the registration of a trade mark under the repealed Act was "pending" immediately before 1 January 1996 if before that day:

(a) the application had not lapsed (see subsection 48(1)), been withdrawn (see subsection 40A(1)) or refused (see subsection 44(1)); and

(b) the Registrar had not refused (under section 50) to register the trade mark or if he or she had refused to register the trade mark:

(i) the period allowed for appealing against the decision had not yet ended; or

(ii) an appeal had been made against the decision but had not yet been decided; and

(c) the trade mark had not been registered under section 53)"

The definitions in s.11 are plainly special definitions designed to meet the particular situations there addressed.

In the absence of any special definition of "pending" for present purposes, it should be assumed, I think, that it was intended to have its ordinary meaning.

The dictionary meanings (Macquarie 2nd Ed.) of the preposition "pending" are:

"1. While awaiting; until: pending his return. 2. In the period before the decision or conclusion of; during: pending the negotiations."

The dictionary definitions of the adjective "pending" are:

"3. Remaining undecided; awaiting decision. 4. Hanging; impending."

According to Stroud's Judicial Dictionary (5th Ed.) at 1980, "(a) legal proceeding is `pending' as soon as commenced... until it is concluded, i.e. so long as the court having original cognizance of it can make an order on the matters in issue, or to be dealt with, therein". (See Norcal Pty Limited v. D'Amato (1988) 15 NSWLR 376 at 385-6, 393; National Bank of New Zealand Limited v. Chapman (1975) 1 NZLR 480 at 482).

The question here is whether a particular kind of proceedings, that is, one "arising from" an application for rectification of the old register under s.22 of the 1955 Act, was "pending" immediately before 1 January 1996.

In my opinion, immediately before 1 January 1996, the only proceedings that were then "pending" were the applicants' claims for injunctive relief and damages in respect of the respondents' alleged contraventions of Part V of the Trade Practices Act 1995 and the alleged passing off. No application for rectification was then pending, nor were any proceedings "arising from" any such application.

This conclusion follows, I think, from the application of the ordinary meaning of the words used in s.250. In my opinion, there is no reason, of logic or of justice, to depart from that meaning here.

It is true that in other contexts, and for other purposes, for instance in the limitation area, an amendment to a pleading may have a retrospective effect to the time of institution of the original proceedings (see Wardley Australia Limited v. Western Australia [1992] HCA 55; (1992) 175 CLR 514 at 545, 559-561; State of Western Australia v. Wardley Australia Limited (1991) 30 FCR 245 at 265-8; Fernance v. Nominal Defendant (1989) 17 NSWLR 710 at 718, 720-1,732-3; Leond Maritime Inc. v. McAmethyst Shipping ("the Anna L") (1994) 2 LLR 379 at 389-390). But that is a different area from the present special context, and the policy considerations in favour of a "relation back" or other theory there have, in my view, no proper analogy here. In my opinion, s.250 did not, literally or as a matter of policy, permit, after 1 January 1996, the retrospective creation of an application under the repealed s.22 by its subsequent introduction into proceedings for other relief, even if those other proceedings were commenced before 1 January 1996. To achieve this legal fiction, in terms of a deemed retrospective timing, would require explicit language which is not, I think, to be found in the terms of s.250.

Nor, in my view, is the plain meaning of s.250 to be restricted or altered by a consideration of possible differences in the grounds for rectification available under the 1955 and 1995 Act respectively (cf. N.V. Philips Gloeilampenfabrieken v. Mirabella International Pty Limited (1993) 44 FLR 239 at 253-4).

The identification of the kind of proceedings that are to survive in the present connection is defined with sufficient precision as to enable their description to be given its full literal meaning (see Re Smerdon & Growdon; Ex parte Bowden (1929) 1 ABC 72). This may be contrasted with the approach taken in Regan & Blackburn Limited v. Rogers (1985) 1 WLR 870 at 873 where the "broad" words of description of "pending land claim" were not able to be given their full literal meaning.

I propose to declare that the provisions of the 1995 Act, rather than those of the 1955 Act, apply to the applicants' claim for rectification.

ORDERS

1. Declare that the provisions of the Trade Marks Act, and not those of the Trade Marks Act 1955 , apply to the applicants' claim in these proceedings for rectification of the Register of Trade Marks.

2. Costs of this question reserved.

I certify that this and the preceding eleven (11) pages are a true copy of the Reasons for Judgment herein of the Court.

Associate

Dated: 20 January 1997

Counsel and Solicitors Mr. J. Ireland Q.C.

for applicants: Instructed by Hunt & Hunt

Counsel and Solicitors Mr A. Bannon

for respondents: Instructed by Rockliffs

Dates of hearing: 10, 11, 12 April 1996, 22 August 1996

Date Judgment delivered: 20 January 1997