In Yong Teng Hing B/S Hong Kong Trading Co v Walton International Ltd the Federal Court recently rendered a judgment in which it considered the position of the registrar of trademarks within the judiciary.
Walton, the proprietor of GIORDANO, filed opposition to Yong's application for registration of the GIORDANO mark in respect of eyewear in Class 9. Walton's application was dismissed by the registrar of trademarks and the High Court on the grounds that, among other things:
- Yong was the first user of the GIORDANO mark;
- Walton had no reputation or goodwill for Class 9 goods; and
- the goods sold by Walton, mainly clothing, were different from the appellant's eyewear.
The Court of Appeal overturned the decision and Yong appealed to the Federal Court. The preliminary objection raised before the Federal Court was whether (in hearing an appeal from the decision of the registrar) the High Court was exercising its original jurisdiction or its appellate jurisdiction.
In its preliminary objection, Walton submitted that the decision of the registrar of trademarks was akin to a decision of an inferior or subordinate court. Therefore, the High Court was exercising its appellate jurisdiction and the final appeal should rest with the Court of Appeal, in accordance with Section 96(a) of the Court of Judicature Act 1964. In contrast, Yong contended that the High Court was exercising its original jurisdiction and that the registrar was not an inferior or subordinate court.
The Federal Court dismissed the preliminary objection by Walton on four main grounds:
- The appellate jurisdiction of the High Court was only in respect of decisions of subordinate courts;
- The registrar did not fall within the meaning of a 'subordinate court';
- When hearing an appeal against a decision of the registrar, the High Court was therefore exercising its original jurisdiction; and
- The word 'appeal' in the Trademarks Act 1976 does not mean an appeal as ordinarily understood.
Section 96(a) of the act provides that where the High Court exercises its appellate jurisdiction, the matter ends at the Court of Appeal and not at the Federal Court.
In considering whether the registrar was a subordinate court, the Federal Court answered in the negative based on statutory and case law. One example raised was the express establishment of the Sessions Court, the Magistrates Court and the Penghulu Court (Native Courts) by the Subordinate Courts Act 1948. The Federal Court held that the registrar of trademarks was not a subordinate court under the act.
As the registrar did not fall within the definition of a 'subordinate court', the High Court was therefore not exercising appellate jurisdiction. Further support was found by the Federal Court in Section 67 of the Trademarks Act 1976, which states that the High Court exercises the same discretionary powers as the registrar in appeals. Thus, it is analagous to a high court judge hearing an appeal from the decision of a senior assistant registrar of the High Court.
The Federal Court referred to Australian cases on the interpretation of the word 'appeal' under procedural rules. In Committee of Direction of Fruit Marketing v Australian Postal Commission ( 25 ALR 221), the Federal Court of Australia held that the word 'appeal' does not mean an appeal process as ordinarily understood. The context of its usage must be taken into account. In Poletti v Deputy Commissioner of Taxation ( 124 ALR 373), appeals from federal administrative tribunals, though stated to be 'appeals', are held not to be appeals in the strict sense of the word.
For the reasons mentioned above, the preliminary objection raised by Walton was therefore dismissed.
For further information on this topic please contact Michael Soo or Lee Lin Li at Shook Lin & Bok Kuala Lumpur by telephone (+60 3 2031 1788), fax (+60 3 2031 1775) or email ([email protected] or [email protected]).