Trade marks: Appeal decision confirms limited scope of the Registrar’s power to correct the Register
In Vokes Ltd v Laminar Air Flow Pty Ltd [2018] FCAFC 109, the Full Court of the Federal Court of Australia affirmed the primary judge’s decision in Laminar Air Flow Pty Ltd v Registrar of Trade Marks [2017] FCA 1447 (6 December 2017) that the Registrar’s power to correct errors under section 81 of the Trade Marks Act 1995 (Act) is narrow and limited to errors made by the Registrar, and not those made by other persons.
My discussion of the primary decision of the Federal Court can be located here.
Section 81 of the Act provides:
“The Registrar may, on his or her own initiative, correct any error or omission made in entering in the Register, any particular in respect of the registration of the trade mark”.
The Full Court focused on the meaning of the words “correct any error… made in entering in the Register any particular” and surmised that they should be given their ordinary grammatical meaning when determining the function of section 81.
The Full Court confirmed that an erroneous recordal of a change of name in 2001 in respect of trade marks owned by Vokes Limited (Vokes) to AES Environmental Pty Ltd (AES) in circumstances where an assignment should have been recorded was not an error on the part of the Registrar in entering a particular in the Register, but an error by the party requesting the recordal of the change of name. The Registrar had, in fact, appropriately acted upon receipt of the application to record the change of name in 2001.
However, the decision of the Delegate of the Registrar in 2017 to reinstate Vokes as the registered owner, including in circumstances where intervening dealings (an assignment from AES to Laminar) had taken place, was not the sort of error rectifiable under section 81 and that court proceedings were the appropriate mechanism for correcting the Register.
The Full Court noted the Register is only prima facie evidence of a matter entered into it and may not necessarily reflect the true state of affairs in terms of ownership at law.
Section 22 of the Act, grants a registered owner of a trade mark, subject some important exceptions, the right to deal with the trade mark as its absolute owner and give in good faith discharges for any consideration for that dealing. The right to be recorded as the owner on the Register is conferred on a purchaser in good faith for value and without notice of fraud on the part of the registered owner. The Registrar’s power under section 81 does not extend to substituting the name of an owner with another so as to remove this right. In addition to noting the ordinary grammatical meaning of “made in entering in the Register”, the Full Court observed that these words are to be read in the context of Part 8 of the Act, which provides other methods for aggrieved parties to correct the Register, by way of action in the Federal Court of Australia, including to determine rights to protection under section 22.