Application for cancellation of platypus mark dismissed

Application for cancellation of platypus mark dismissed

Application for cancellation of platypus mark dismissed

This article first appeared in the World Trademark Review Daily. The original article can be downloaded via the link to the right.

In Wilkshire v The Registrar of Trademarks ([2009] FCA 1222, October 30 2009), the Federal Court of Australia has dismissed an application for the cancellation of a trademark owned by Bombala Council. The serenity of the scenic Platypus Country in the New South Wales shire of Bombala and adjacent Victorian shire of Delegate has been disturbed by the long-running battle between Bombala Council and Peter Wilkshire in relation to a trademark containing the image of a platypus and the words ‘Platypus Country’.

The saga appears to have its origins in mid-1995 when the council applied for, and obtained acceptance of, a mark comprising a semi-annulus surmounting a horizontal bar and enclosing a picture of a platypus in respect of “tourism, promotion and advertising” in Class 35 of the Nice Classification. The annulus contained the words ‘Platypus Country’ and the bar contained the words ‘Bombala Region’. The application was accepted but subsequently withdrawn in the face of an opposition by the publishers of Australian Geographic on the grounds of alleged similarity between the platypus device in the council’s mark and that in the magazine’s trademark.

The matter was settled amicably on the basis of a changed depiction of the platypus device (prepared for the council by the magazine’s graphic designer). For some reason the council did not apply to register the new mark until early February 2003. In the meantime, in August 2000, Wilkshire applied for registration of a substantially identical mark (save that the words ‘Bombala Region’ were replaced by the words ‘Gold Fossicking’) in Class 41 for education and training for persons interested in gold fossicking.

The council’s application was opposed by Wilkshire, but the opposition was dismissed principally on the basis that the council’s Class 35 services were not services of the same description as the education and training services in respect of which Wilkshire’s mark had been registered.

Wilkshire appealed to the Federal Court and the matter was settled on the basis of consent orders and undertakings, to the effect that:

  • Wilkshire would not interfere in any way with the council’s application for registration; and
  • Wilkshire would not threaten the council or any of its licensees with any form of action in relation to the use of the council’s mark.

Two days prior to the consent orders, Wilkshire filed five further applications for substantially the same marks in Class 35 in respect of retailing services. Those applications were opposed by the council. The opposition was successful on the grounds – under Section 62A of the Trademarks Act – that the application had been made in bad faith. The delegate held that Wilkshire had “applied to register a mark which he ha[d] previously recognized as the property of another with whom [he] ha[d] a course of dealing or some other relationship”.

Wilkshire then filed an application for removal of the council’s mark. The council brought an application for summary judgment in the Federal Court pursuant to Section 31A of the Federal Court of Australia Act. Section 31A provides that the court may give judgment for one party against another in relation to any proceeding if it is satisfied that the party has no reasonable prospect of successfully prosecuting the proceeding. The section further provides that the proceeding need not be hopeless or bound to fail for it to have no reasonable prospect of success. The court noted that these principles were similar to those applicable at common law in determining whether a jury, properly instructed, could reach a verdict for the plaintiff, and that judgment may be made:

“by reference to evidence put on in support of an application under Section 38A which reasonably excludes the possibility that facts essential to the success of a claim or defence will be able to be established”.

The council pleaded in the alternative that Wilkshire’s application should be dismissed under Order 20, Rule 5 of the Federal Court Rules on the grounds that it was frivolous, vexatious or an abuse of process.

Throughout the proceedings, Wilkshire had been self-represented. In statutory declarations and affidavits filed in the proceedings, he had made repeated allegations of impropriety by the council, its witnesses, its lawyers and the registrar’s delegate. The court said of an affidavit filed by Wilkshire in the proceedings that:

“it regularly moves from surmise about a matter to an allegation concerning it (invariably involving impropriety by a person or persons considered to be acting adversely to his interests) and then, on occasion, to a statement of fact about the allegation. The major portion of this affidavit is directed to what is said to be collusion and fabrication of evidence by witnesses of the council.”

The court further stated that the affidavit, “having asserted the delegate’s lack of impartiality, raised the scandalous suggestion of the potential corruption of the delegate in the first opposition hearing (either by extortion or bribery)”. In a further affidavit, Wilkshire asserted that he had never agreed to the undertakings made by the court in the orders given in the previous proceedings and that his then solicitor acted “in full knowledge that he did not agree to any undertakings whatsoever”.

The council’s grounds for summary dismissal were described by the court as ‘layered’. The first was that Wilkshire was not a ‘person aggrieved’ for the purposes of Section 88 of the Trademarks Act. The second was that the application did not fall within any of the grounds specified in that section. A further ground was that the dismissal of the previous proceedings by consent gave rise to issues of res judicata and issue estoppel. The court discussed, but did not decide, what it described as the “real controversy” as to the extent to which decisions on appeal in opposition proceedings (whether by consent or otherwise) can found an issue estoppel in Section 88 applications, given the view that an opposition proceeding has a “quasi summary nature”.

Finally, the court considered the undertakings noted in the consent orders and construed those undertakings as manifesting an intent that Wilkshire would not interfere with:

  • the council’s obtaining registration of its mark; and
  • the council’s use and enjoyment of its mark.

The court held that the combined effect of the orders and undertaking was that the dispute between the parties was to be at an end, and could be relied upon as a complete defence to the prosecution of Wilkshire’s present application.

Wilkshire has applied for leave to appeal to the Full Court of the Federal Court. The rather sorry tale of this conflict illustrates the great trouble and expenditure of time and effort that can arise in proceedings involving a self-represented litigant driven by an apparently unjustified sense of grievance.

Des Ryan, Davies Collison Cave Solicitors, Melbourne