Emmett J comments that
This proceeding is concerned with the ownership of Australian trade mark registration number 741047 (the Registered Mark). The Registered Mark consists of the words PEEL AWAY, shown in a particular way (the Peel Away Mark). The substantive dispute is between the applicant, Mediaquest Communications LLC (Mediaquest), and the executors of the estate of the late Michael Brailsford. Mr Brailsford died on 9 September 2008. The proceeding also raises administrative law questions involving the first respondent, the Registrar of Trade Marks (the Registrar). The proceeding began as a challenge to a decision made by the Registrar to cancel an entry made on the Register of Trade Marks (the Register) kept under the Trade Marks Act 1995 (Cth) (the Act). The entry in question recorded an assignment and transmission of the Registered Mark from Mr Brailsford to Mediaquest. It subsequently became apparent that the outcome of the substantive dispute between Mediaquest and Mr Brailsford’s estate would have a bearing on the Registrar’s decision.
The Registered Mark was registered under the provisions of the Act in the name of Mr Brailsford with a priority date of 11 August 1997. It is registered in class 3 for paint stripping preparations and other similar goods.
On 23 September 2010, the Registrar received from Mr Kenneth McInnes, a trade mark attorney, an application to record assignment of the Registered Mark to Mediaquest. The application was dated 21 September 2010. On 8 October 2010, the assignment was recorded in the Register and Mediaquest was accordingly recorded as the owner of the Registered Mark.
On 12 November 2010, the Registrar received a letter from Mr Garry Wilson, a trade mark attorney acting for the estate of Mr Brailsford. Mr Wilson’s address was Mr Brailsford’s address for service for the purposes of the Registered Mark and Mr Wilson complained about the registration of the assignment to Mediaquest without notification to him. Mr Wilson asked how the assignment had come to be recorded, and whether the Registrar was of the view that the assignment had been properly recorded. Mr Wilson requested that the assignment be “overturned”.
On 22 November 2010, the Registrar wrote to Mr McInnes, saying that the documentation received in support of the assignment was inadequate as proof of assignment. The letter of 22 November 2010 said that the Registrar was of the view that the assignment was recorded incorrectly and, therefore, intended to cancel the assignment under s 81 of the Act. Mr McInnes responded on 26 November 2010, asserting that procedural fairness required that the current status quo not be altered without the opportunity for Mediaquest to be heard, and without the reinstatement of a non-use action that Mediaquest had commenced but had then withdrawn, on the basis of the assignment.
After further exchanges of correspondence, directions were given for the representatives of both Mediaquest and the estate of Mr Brailsford to file written submissions, and a hearing was conducted by a delegate of the Registrar on 7 March 2011. At the hearing, Mr McInnes appeared on behalf of Mediaquest, and Mr Wilson appeared on behalf of the estate of Mr Brailsford. On 26 May 2011, for reasons published on that day, the delegate made a decision that, as Mediaquest did not provide any prescribed document clearly demonstrating proof of title, the assignment application was not properly made.
The delegate was not satisfied that the documentation provided by Mr McInnes supported the assignment to Mediaquest, since there is no mention of the Registered Mark in the documentation, and nothing had been put to the delegate that persuaded her to draw the inference about ownership that she was invited by Mr McInnes to draw. The delegate therefore decided that the assignment to Mediaquest should be cancelled one month after the date of the decision. She said that, if the Registrar was notified of an appeal from the decision, the cancellation would not proceed until the appeal had been discontinued, or orders were made by the Court, in which case the registration would be subject to those orders.
In its further amended originating application of 15 February 2012, Mediaquest claims a declaration that the Registrar lacked the jurisdiction or power to cancel the registration of the assignment, and an order that the decision of the Registrar’s delegate be set aside. In the alternative, Mediaquest claims a declaration that it is the owner of the Registered Mark and an order under s 85 or s 88 of the Act correcting the Register to show Mediaquest as the registered owner of the Registered Mark.
The substantial issue in the proceeding has been the question of ownership of the Registered Mark. The question of the Registrar’s powers is essentially procedural background to the substantive dispute between Mediaquest and the estate of Mr Brailsford. There is no dispute as to the essential facts that give rise to the disputes raised in the proceeding, and I shall state those facts shortly. It is convenient to deal first with the substantive dispute and then with the question as to the powers of the Registrar.In concluding Emmett J indicates that
There was no actual assignment of the Registered Mark to Mediaquest, either from Mr Brailsford or from his executors. Accordingly, the Registrar’s decision of 8 October 2010 to record the assignment in the Register was tainted by jurisdictional error and was no decision at all. It was therefore open to the Registrar to reconsider whether the duty imposed by s 110 had been enlivened, by revisiting the question of whether there was an actual assignment or transmission of the Registered Mark to Mediaquest. Having determined that there was no actual assignment or transmission, it was open to the Registrar to take steps to cancel the earlier action. There is nothing in the Act to indicate that a decision of the Registrar under Part 10 that was affected by jurisdictional error should continue to have legal effect. Indeed the considerations outlined above suggest the contrary.
Mediaquest contends that permitting the Registrar to cancel a recording of a purported assignment would remove the limits on the Registrar’s power to amend the Register that are found in Part 8. It contends that treating an actual assignment or transmission as a jurisdictional fact may lead to a situation where the purported registration of an assignment or transmission could be treated as a nullity by third parties, without a decision of the Registrar or of a court to that effect. It says that that could inject a degree of uncertainty into commercial dealings, which could be antithetical to the structure of the Act.
However, the scheme of the Act is not proprietorship by registration but registration of proprietorship. Registration under the Act is only prima facie evidence of ownership, as is provided by s 210. The registered owner is always susceptible to action being taken under Part 8 to revoke a trade mark that should never have been registered, or to substitute the true owner of the trade mark for that of a wrongful claimant. True ownership of a trade mark is a defence to infringement proceedings brought under the Act. To that extent, it is already open to third parties to ignore invalid entries in the Register. The construction of Part 10 contended for by Mediaquest would not permit the Registrar to undo invalid action purportedly taken under s 110. That would result in disconformity between the Register and reality.
The Registrar’s decision of 26 May 2011, that the record of the assignment of the Registered Mark to Mediaquest be cancelled, was not affected by any error. The decision was within the power conferred on the Registrar by s 81 of the Act. Clearly, the name of the registered owner of a trade mark is a particular in the Register. Since that particular was erroneously changed by the Registrar, purportedly acting under s 110, it is within the Registrar’s power under s 81 to correct the error made in respect of the registration of the Registered Mark.