Robertson J has overturned the Registrar’s decision to cancel a number of trade mark registrations for VOKES as errors wrongly made in the Register and ruled they were properly registered in Laminar’s name.
Until 2001, Vokes was the registered owner of the trade marks.
On 15 August 2001, it applied to the Registrar under s 216 to have the name of the registered owner changed to AES Environmental Pty Ltd.
On 12 October 2005, Laminar submitted to the Registrar an assignment of the trade marks from AES to it and Laminar became the registered owner.
In December 2014, Vokes applied to the Registrar under s 81 to have the registration in the name of Laminar cancelled and the registrations restored into Vokes’ name.
The application under s 216 in 2001 had not been made because Vokes changed its name to AES. Rather, it seems Vokes had assigned the trade marks to BTR in 1998 and BTR wanted to assign them in 2001 to AES. There were no assignment documents, or at least none were submitted to the Registrar. So, it seems Vokes / BTR / AES were trying to use s 216 as a kind of short cut. AES subsequently assigned the trade marks to Laminar.
The Registrar pointed out that there was authority that s 216 could not be used to register transfers by assignment , it was only for situations where there had been a change in the name of the entity on the Register. Accordingly, the Registrar held that the registration of the trade marks in the name of AES had been wrongly made and so ordered that change of name of the registered owner to be rectified.
Robertson J clearly thought it a bit rich for Vokes to be coming back to correct the Register some 13 years after its own ruse.
HIs Honour held that the power to correct “errors or omissions” under s 81 was not triggered by the events in 2001. On the basis of the information then before the Registrar, there had been no error.
At , his Honour said:
There was no finding by the delegate that in August 2001, and by reference to what the Registrar then knew, there had been an error made by the Registrar. The error was on the part of the person submitting the form in circumstances where there had not, in truth, been a change of name and address: as found by the delegate, Vokes had not changed its name. This was not brought to the Registrar’s attention, so far as the delegate found, before December 2014 when Vokes made its application under s 81.
And then, by way of further explanation, at :
Contrary to the conclusion of the delegate in the present case at , in my opinion there was no jurisdictional error on the part of the Registrar in 2001. It is true that there was not a change in the name of the registered owner of the registered trade marks but the Registrar did not know that nor should she have known it: the submission was not pressed before me that it was plain on the face of the form that there was no change of name in the registered owner. If there were no jurisdictional error then it follows that the decisions to record changes of the owner’s name on the Register were not decisions which “had no legal foundation and are no decisions at all” as found by the delegate as a consequence of his conclusion that the decisions were tainted by jurisdictional error.
Therefore, the power under s 81 was not enlivened.
In any event, Robertson J ruled that, if he were wrong in that conclusion, the intervening events (i.e., the assignment from AES to Laminar) meant that the Registrar’s power under s 81 was no longer available. A “person aggrieved” had other remedies they could pursue.
The decision in Mediaquest, which had been relied on by the Registrar, was distinguished. That case involved an application to record an assignment where the objection to the registration of the assignment was made within one month of the assignment being recorded.
Laminar Air Flow Pty Ltd v Registrar of Trade Marks  FCA 1447