I want to deviate from the dogma that is ‘separation of powers’.

Separation of powers is the division of power between the legislative, the executive and the judiciary. It is a system of checks and balances that is fundamental to democratic government. Why then, would anyone wish to deviate from this?

The concept of separation of powers was first coined by of Montesquieu in The Spirit of the Laws. Montesquieu did not write about separation of powers as an isolated concept however. He also emphasised other important political theories, including that political institutions ought to reflect the social and geographical aspects of each community. It is sometimes the case that these other important political theories are at odds with the concept of separation of powers. When this happens, we must consider the merits of deviating from the dogma of separation of powers to achieve the greater social good.

In this post, I suggest that the greater social good would be achieved by a delegation of powers from the courts (the judiciary) to the Trade Marks Office (the executive).

As mentioned in my recent post, trade mark rights are so costly to enforce that enforcement is out of reach for most SMEs.

The inability to enforce trade mark rights:

  • Devalues the rights;
  • May affect the nation’s economic growth; and
  • May erode public confidence in the trade mark system.

We need a cheaper system for enforcement of trade mark rights.

Currently, trade mark oppositions are heard by the Trade Marks Office at a fraction of the cost of infringement actions heard by the courts. Why not thus allow the Trade Marks Office to be the arbiter of trade mark infringement actions?

The procedures are already in place. Objective Connect is set up to handle oppositions and could easily handle infringement actions as well. The opposition proceedings involving the submission of evidence in support, evidence in answer, evidence in reply, followed by written submissions or a hearing, and the timeline for these could be followed in just the same way for infringement actions. Hearings officers, who are already trained to deal with adversarial matters, could preside. IP Australia has access to suitable accommodation both within Canberra and in the interstate capitals to house the hearings officers if they need to travel to preside. Trade mark owners are already familiar with IP Australia through the processing of their trade mark applications, and many trade mark owners already have a perception that IP Australia will be involved when they want to enforce their trade mark rights. Finally, IP solicitors and trade marks attorneys who are specialised in trade mark infringement matters could lead, instead of handing the matters off to litigation solicitors who are not as familiar with the intricate area of trade mark law.

Admittedly, this would require a delegation of powers from the courts (the judiciary) to the Trade Marks Office (the executive). But delegation of powers from one branch to another is not new. The legislative regularly delegates to the executive (after all, that is how regulations are written). Indeed, sections 44, 62 and 64 of the Australian Constitution effectively unite the legislature and the executive under the guise of achieving responsible government. But the judiciary has fiercely guarded its separation as sacred. Perhaps the courts could ease up a little. The delegation need not be too much of a divestiture of the judiciaries’ power. Appeals from Trade Marks Office decisions could still be heard by the courts, similar to how current trade mark opposition decisions are appealed to the courts.

This is not a new idea. In August 2009, the Advisory Council on Intellectual Property (ACIP) published an Options Paper which addressed a number of proposals, including that IP Australia establish a Patent Tribunal. But, hitting the same constitutional road block in the form of separation of powers, they watered down the proposal to the extent that the Patent Tribunal would have no enforceable jurisdiction. It could produce an advisory determination on disputes between private parties. The result of such a determination would not be formally binding on the parties (in the sense that a failure to comply with the determination would not amount to a contempt of court). Any subsequent litigation of the same matters in court would be a de novo review. Not surprisingly, the proposal to establish such a ‘toothless tiger’ of a tribunal has never been implemented.

I am not proposing a toothless tiger. I am proposing a practical solution to a legitimate and ongoing problem. The only thing standing in the way is an admittedly important legal concept that has unfortunately become so rigidly applied that it has become a dogma.

If we want to implement this practical solution, what will need to be done?

  • Amendment to the Trade Marks Act;
  • More staff/funding to IP Australia; and
  • Last, but not least, a brilliant constitutional lawyer to find a way to circumvent the dogma that is separation of powers, to pare it back to what it was intended to be (a checks and balances) from what it has become (something so entrenched that it has come to prevent the implementation of practical solutions to social and geographical aspects of the community).

I put the challenge to all Australian constitutional lawyers, can you identify a way to circumvent the dogma that is separation of powers?