06 November 2009

Bombala Council Keeps its Platypus

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Case - Wilkshire v Registrar of Trade Marks [2009] FCA 1222.

I felt compelled to report this case because I often have to convince prospective clients of the dangers of self representation. This case shows what can go wrong with self-representation in an adversarial matter. Legal details and the need to check emotions at the door are often overlooked without proper representation.

This case dealt with two motions. One was an application for summary judgement against Wilkshire on his application to have Bombala Council's trade mark cancelled. The other was for Wilkshire's proceedings to be dismissed.

The court was satisfied that summary judgement should be given against Wilkshire.

I'm neither a lawyer nor a barrister, so this post focuses on the trade mark issues.

Wilkshire is the owner of a trade mark for education; providing of training; entertainment, sporting and cultural activities for people who are interested in fossicking for gold being services in class 41. The trade mark includes a platypus and has a registration date of 30 March 2001. In 2003, Bombala Council applied for registration of its mark in class 35 for tourism promotions and advertising. Wilkshire opposed the application by Notice of Opposition on 18 July 2003. He made a declaration alleging that a number of people giving evidence for the Council had colluded and fabricated evidence. Australian National Geographic had opposed registration of similar mark by the Council back in 1995. That dispute was settled and Nat Geo redesigned the Council's logo and assigned it to Council on 28 April 1997. This was disputed by Wilkshire.

In 2006, Wilkshire's opposition was dismissed and costs were ordered against him. The court noted that the Delegate found that the services performed by Wilkshire were not "the same kind of thing" as those for which Council sought registration. At that stage, the Act had not yet been amended to introduce the opposition ground of an application being made in bad faith. Wilkshire appealed to the Federal Court. In the appeal he raised lack of impartiality and collusion. Negotiations ensued. Council's solicitors made an offer of settlement. Wilkshire agreed to the terms. That appeal resulted in orders dismissing the appeal, ordering costs of $30 000 against Wilkshire. The Court then noted the undertakings made by Wilkshire.  Those undertakings were not to interfere with Council's application to register its trade mark and not to threaten the Council with any form of action (shortened).

Two days before the consent orders, Wilkshire filed five new trade mark applications. These were very similar to the trade mark referenced above.  The Council opposed the registrations. The Delegate refused to register the trade marks citing bad faith (the ground had by then been introduced). He observed that Wilkshire had previously recognised the trade marks as the property of another. In the meantime, Wilkshire had commenced proceedings to have Council's registered trade mark cancelled. Wilkshire's supporting affidavit was filled with allegations of lack of impartiality and collusion. It even raised possible corruption by extortion or bribery on the part of the Delegate.

Section 88 of the Trade Marks Act governs rectification of the register. Appositely, section 88(1)(a) sets out that rectification can be cancellation of a registration. Section 88(2) sets out that the application may be made on a number of grounds it enumerates and on no other grounds. Unfortunately for Wilkshire, his framing of the application did not include any of the grounds set out in Section 88(2). One of the grounds is that a registration can be cancelled on any of the grounds on which its registration could have been opposed. Wilkshire had attempted to rely on the bad faith provisions. At the time when the Council's application was accepted for registration, the bad faith ground was not available. As a result, it was a simple matter for the court to give a summary judgement against Wilkshire.

Clearly Wilkshire was highly emotional throughout the case. The Court made a number of pointed references to his allegations, hinting at their lack of verity. With proper counsel, Wilkshire could have avoided significant cost orders and possibly the wasted effort and emotion associated with legal proceedings. As far as the details of the case are concerned, it would have been readily apparent to legal counsel that the ground for cancellation was not available.

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