The Statutory Context
1. It is important to place appeals from decisions of officers of IP Australia in the full context of the review rights provided under
relevant legislation. The place of a Register in the relevant statutory schemes means that important consequences flow from decisions
that deal with the Register. The accuracy and integrity of the Register are matters of public interest and importance.
2. The scheme provided for under the Trade Marks Act 1995 (Cth)(the “TM Act”) and pursuant to other available avenues is as follows:
(a) decisions by the Registrar
(b) appeals to the Federal Court from such decisions of the Registrar
(c) s 75(v) of the Constitution – judicial review by Constitutional writ or injunction – founded on “jurisdictional error”. See also the identically framed s 39B(1) of the Judiciary Act 1903 (Cth) in respect of the Federal Court.
(d) s 39B(1A)(c) of the Judiciary Act
(e) proceedings that can be brought in a “prescribed court”: the Federal Court and the Supreme Courts of the States and Territories;
eg infringement or revocation proceedings: ss 190 – 192 of the TM Act
(f) appeals from proceedings in prescribed courts lie exclusively (s 195(4) of the TM Act) in the appellate jurisdiction of the Federal Court: s 195 of the TM Act
(g) an appeal to the Full Court of the Federal Court against a judgment or order of a single judge of the Federal Court on appeal
from the Registrar (only by leave: s 195(2) of the TM Act)
(h) review by the Administrative Appeals Tribunal of certain decisions of the Registrar, in respect of which there is an “appeal”
on a question of law to the Federal Court
(i) review under the Administrative Decisions (Judicial Review) Act 1979 (Cth) (the “AD(JR) Act”) in the nature of administrative review
3. Similarly structured schemes exist under the Patents Act 1990 (Cth) and the Designs Act 2003 (Cth).
4. This paper is concerned principally with the procedure referred to in [2(b)] above. It is important, however, to appreciate the
variety of methods available for “review” of decisions. It is also important to understand the fundamental distinction between administrative
and judicial power. This distinction lies at the heart of the topic. Once grasped, it assists in retaining one’s calm and equanimity
in the face of these apparently multifarious grounds of review. It is because of the importance of understanding this distinction
that I begin with the Constitution.
5. I will return to the variety of means of review, after I have dealt with appeals to the Federal Court from the decision of officers
of IP Australia.
6. For ease of explanation, I will limit the discussion to patents and trade marks.
The Constitutional Framework
7. In order to understand the nature of, and so the provisions concerning, an “appeal” from a Registrar or Commissioner to the Federal
Court of Australia, one must have a grasp of the basis elements of power at work. Through this understanding, one can then appreciate the important Constitutional considerations underpinning the “appeal”
structure.
8. There are clear distinctions drawn by the Australian Constitution between legislative, executive and judicial power: chapters I, II and III of the Constitution. Each is a separate and distinct area of government. Each embodies a species of power; and as such has its attributes and limits.
9. There is often an overlap between the first two – Ministers (executive) sit in, and are responsible to, Parliament. Parliament
often enacts legislation which delegates to the executive the power to make law by regulation. Judicial power is, however, seen as
distinct from both. The separation of judicial power from these other two types of power is viewed by the High Court as an important
structural constitutional guarantee. It is an element of the independence of the judiciary.
10. Executive power and judicial power, as species of power, can affect the individual or the group. It is important to understand
the nature of the each, because non-judicial power (other than such power ancillary or incidental to the exercise of judicial power)
cannot be conferred on a federal court or a state court exercising federal jurisdiction; and judicial power cannot be conferred on
a body which is not a court (federal or state) within the meaning of s 71 of the Constitution.
11. Section 61 of the Constitution provides as follows:
The executive power of the Commonwealth is vested in the Queen and is exercisable by the Governor-General as the Queen's representative,
and extends to the execution and maintenance of this Constitution, and of the laws of the Commonwealth.
12. Executive power can simply be seen as power, other than legislative and judicial power, conferred by law This tripartite division
of governmental authority is one upon which, in important respects, the Australian Constitution and system of government is founded[2].
13. Executive power derives from the Constitution, from statute, and from the prerogative of the Crown. The vesting of all executive power in the Sovereign[3] as constitutional monarch, leads to the exercise of almost all executive power by the executive government, through a minister responsible to Parliament[4].
14. The executive power relevant for present purposes is the power exercised by officers of the Commonwealth who are authorised by
Commonwealth legislation, the TM Act or the Patents Act, to make decisions under those Acts.
15. Judicial power is a concept not easily defined. Indeed cases of the highest authority warn against attempts at exhaustive definition.[5] No single simple encapsulation is possible. Central to the notion, however, is the adjudication and conclusive settlement of controversies
or disputes between parties as to their rights and duties under law. Griffiths CJ in Huddart, Parker & Co Pty Ltd v Moorehead[6]:
[T]hat the words “judicial power” as used in sec. 71 of the Constitution mean the power which every sovereign authority must of necessity have to decide controversies between its subjects, or between itself
and its subjects, whether the rights relate to life, liberty or property. The exercise of this power does not begin until some tribunal
which has power to give a binding and authoritative decision (whether subject to appeal or not) is called upon to take action.
16. The notion of “controversy” is central: In re Judiciary and Navigation Acts [1921] HCA 20; (1921) 29 CLR 257. Courts do not advise Parliament or the executive. Yet, this is not the determinant of judicial power. Administrators sometimes deal
with controversies, as is well illustrated by the kinds of application decided by the Commissioner or Registrar in respect of which
there is an appeal to the Court.
17. The notion of rights is central. This means existing rights: Waterside Workers’ Federation of Australia v J W Alexander Ltd [1918] HCA 56; (1918) 25 CLR 434. Again, this is not the determinant of judicial power. Administrators sometimes deal with people’s rights.
18. The notion of binding and authoritative refers to conclusiveness, even if subject to appeal. It means not open to collateral review:
Shell Co of Australia Ltd v Federal Commissioner of Taxation (1930) 44 CLR 530 (the Shell case). This is closer to a determining factor. Administrators generally do not decide matters in a way that is not open to collateral
attack, especially if a method of compulsory enforcement is given to the decision. A decision settling a controversy, about present
rights, which is not open to collateral challenge, and which can be enforced by order of the Tribunal, will generally reflect the
exercise of judicial power.
19. The paradigms of power belonging to the three arms of government are easy to recognise. Take these hypothetical examples:
(a) Parliament’s exercise of power to enact legislation – for instance creating a right with certain characteristics.
(b) The executive’s power granted by statute that if in all the circumstances, in the national interest and in accordance with prevailing
government policy it is satisfied that the statutory privilege be granted for three years. The executive makes that decision and
grants that right.
(c) The courts’ power to declare that as a matter of statutory construction non-citizens cannot seek the statutory privilege in question
or that the right purported to be granted by the executive is in fact outside the terms of the statute and so is unauthorised.
(d) Only courts, with or without juries, can adjudicate criminal guilt or innocence.
(e) The executive, not the courts, can dispense the prerogative of mercy.
20. These are fairly clear examples. Often the characterisation of the power is not so straightforward. Section 61 of the Constitution, in describing the executive function, refers to the execution and maintenance of the Constitution and of the laws of the Commonwealth. In carrying out that function, the executive (officers of the public service) must, every day,
make decisions about legal rights. If a customs official decides to levy duty at X% on your imported goods, he or she is not usurping
the courts’ exercise of judicial power of the Commonwealth. Yet he or she has, as between you and the Crown, decided that the law
is such as to lead to the conclusion that you must pay duty of $Y. There may be an “appeal” to a reviewing officer who may have the
function of examining or even remaking the decision. There may be an “appeal” to the Administrative Appeals Tribunal. In all this,
there may be an element of a controversy; there may be an element of someone making a decision about rights, about the meaning of
a statute and about the consequences of such. There will, however, be no conclusiveness. In part, this is by reason of who is deciding
it – by definition it cannot be conclusive, meaning that the decision is always open to collateral challenge because the customs
officer is not a judge. One may detect a degree of circularity in this. There is an element of the asserted or agreed characterisation
of the type of power being exercised affecting the content of the power being exercised. So, if we are all agreed that the decision
is being made by a clerk behind the counter at Customs, we know that he or she cannot make a decision settling a controversy about
present rights according to law in a way that is immune from challenge.
21. Another way of looking at the issue is to say the customs officer has not decided any rights, he or she has merely purported to
apply or execute the law which either does or does not provide for that result.
22. Sometimes, administrators can be seen to be creating, or doing acts as part of the creation of, rights or liabilities. This can
be seen to be distinct from adjudicating on present rights conclusively. Sometimes, one will be able to see the hallmark of the conduct
of the administrator as not so much deciding something on the basis of rights, but on the basis of policy of such a broad social
or political (in the broad sense) character that a decision so based could not be other than administrative or the act of the executive
government.
23. Yet sometimes the courts also exercise wide discretions; sometimes they make orders which, at least in point of practical substance
and sometimes in point of law, create new rights and liabilities; and sometimes they take policy into account.
24. Sometimes, the answer as to whether something is an exercise of judicial or non-judicial power is not provided merely by a priori reasoning. Notions of history, tradition, method, technique and procedure are importance. For instance, advisory opinions are generally
considered outside judicial power, but courts have historically permitted trustees, liquidators and court appointed receivers to
approach them for advice and directions. Also, the declaration is a remedy of wide scope. In public interest cases where locus standi is broadly viewed, the notion of settlement of a controversy can be flexible.
25. For present purposes, it is a helpful taxonomy to divide functions into three categories: those that can only be conferred on
courts; those that can only be conferred on administrators; and those that can be given to either: see British Imperial Oil v Federal Commissioner of Taxation [1926] HCA 58; (1926) 38 CLR 153 (the Second BIO case) at pp 175-76. It is the third category with which we are primarily concerned. The framework of analysis in dealing with this third
category was laid down in High Court and Privy Council cases in different generations that concerned tax “appeals” and intellectual
property “appeals”. In a series of cases the High Court recognised that there were some powers not distinctively judicial or administrative
which could be assigned to either arm of government subject to certain requirements. An examination of the main tax and intellectual
property cases suffices to explain the approach.
the tax appeal cases
26. The principal tax appeal cases were British Imperial Oil Co Ltd v Federal Commission of Taxation [1925] HCA 4; (1925) 35 CLR 422 (the First BIO case), the Second BIO Case (above) and the Privy Council decision on appeal from the Second BIO case, the Shell case.
27. In the First BIO case a taxpayer who was dissatisfied with an assessment had a choice: an appeal to the High Court or a Supreme Court if the objection
raised only a question of law; an appeal to those courts or to the Board of Appeal (which was accepted not to be a court) if the
objection raised questions of fact. If the Board of Appeal were chosen, there was a further appeal to the High Court “in its appellate
jurisdiction”, but not on a question of fact. The Board of Appeal could also state a case for the opinion of the High Court which
“in the opinion of the Board” was a question of law. An order of the Board of Appeal on questions of fact was “final and conclusive
on all parties”. The High Court found that the Board had been invested (invalidly) with judicial power. Its role was not merely to
review the Commissioner’s decision and affirm it, or in its place substitute its own view to stand as an administrative act, but
was to ascertain and determine whether and how far the rights and duties independently enacted had been accurately declared by the
Commissioner. The appeal to the High Court that was expressed by the Act to be in the Court’s appellate jurisdiction made Parliament’s intention clear.
28. The Act was changed. Five changes were made: the Board of Appeal became the “Board of Review”; on review, the board had all the
powers and functions of the Commissioner and decisions of the Board were deemed to be determinations or decisions of the Commissioner
(except for the purposes of review or appeal); there was an “appeal” to the High Court which in the opinion of the High Court involved
a question of law; the appeal to the High Court was not expressed to be in its appellate jurisdiction; and the provision that had
made orders of the Board of Appeal on question of fact final and conclusive was omitted.
29. The validity of this new regime was attacked in, and upheld by the High Court, in the Second BIO case, which decision was upheld by the Privy Council in the Shell case.
30. The leading judgment in the Second BIO case was that of Isaacs J. It is an illuminating judgment, especially at pp 174-81. It is illuminating because it is not a legalistic
attempt merely to order, categorise and define. It recognises that the subject matter of the discussion is power, that is, the exercise of Sovereign Will in its various forms. It discusses the processes and techniques of the exercise of power
in its different forms, by different people and for different governmental purposes, and the need to characterise such matters, in
particular for the proper workings of government. Isaacs J found an unmistakeable attempt by Parliament to equate the acts and decisions
of the Board with those of the Commissioner.
31. A number of important matters were expressed. First, questions of law are ultimately for the courts, though of course administrators
must often decide legal questions. The ultimate responsibility for the law belongs with the courts. This is a consideration central
to the exercise of administrative law in Australia, and to the Constitutional division of power between the executive and the judiciary.
Secondly, the final determination of questions of fact and exercises of discretion are not solely indicative of judicial power. Final factual determination can be the province of the administrator or the judge. Modern government
necessitates some disputed facts to be finally determined by administrative bodies. Thirdly, the character of the function can take
its colour from the primary character of the functionary, and may depend upon how the decision is made binding and how it is enforced.
Fourthly, the word “appeal” was not seen as determinative, in this context it meant the exercise of original jurisdiction in the
Court, not appellate, which was not possible since the decision under review was administrative.
32. The Privy Council upheld the decision. Agreement was expressed with the views of Isaacs J and the statement of Griffiths CJ in
Huddart Parker as to the nature of judicial power was approved.
the intellectual property cases
33. The view expressed by Isaacs J in the Second BIO case that a function can take its colour from the primary character of the functionary has been repeated on a number of occasions. It
is not just a matter of labelling, or of incantation of a legal spell. It is related to how the power, which is of a kind which can
be exercised by one or other (or both) arms of government, is exercised, in order to understand what power is being exercised.[7] In R v Spicer; Ex parte Australian Builders’ Labourers’ Federation[8], Kitto J, at 305, explained the importance of the character of the repository of the powers as follows in discussing different types
of function:
It is true also that sometimes a grant of a power not insusceptible of a judicial exercise is to be understood as a grant of judicial
power because the recipient of the grant is judicial. But it by no means follows that whenever a power which has some similarity
to an acknowledged judicial power is given to a judicial person or body there is a grant of judicial power. The reason for concluding
in some such cases that the judicial character of the repository imparts a judicial character to the power is simply that the former
provides a ground for an inference, which in those cases there is nothing or not enough in other considerations to preclude, that
the power is intended and required to be exercised in accordance with the methods and with a strict adherence to the standards which
characterise judicial activities. That is not a necessary inference, however, in every case of this kind. The authorised act itself,
though not inherently incapable of judicial performance, may be by nature more appropriate for administrative performance. The possible
effects of the act when done upon persons, situations and events may be such as to suggest the probability that decisions to exercise
or to refrain from exercising the power were intended to be made upon considerations of general policy and expediency alien to the
judicial method. The circumstances in which the power is to be exercisable may be prescribed in terms lending themselves more to
administrative than to judicial application. The context in which the provision creating the power is found may tend against a conclusion
that a strictly judicial approach is intended. And there may be other considerations of a similar tendency. The problem in such a
case ought therefore to be recognised as one of statutory construction, the task being to decide whether or not the provision should
be understood as intending that in discharging the responsibility which possession of the power entails the person or body entrusted
with it is to act strictly as a judge. The fact that the person occupies a judicial office, or that the body is or is not a judicial
tribunal is only one matter to be considered. There may be many others.
34. The most important application of the proposition can be seen in intellectual property appeals. In Farbenfabriken Bayer Aktiengesellschaft v Bayer Pharma Pty Limited [9](the Bayer case) the parties were in dispute over the “Bayer cross” trademark. The appellant, the West German company, claimed to be the successor
to the business of I G Farbenindustrie AG which, prior to 1935, had carried on business in Australia, and which had been dissolved
by the Allies after the war. Over the opposition of the appellant, the Deputy Registrar of Trade Marks decided to grant the registration
of the mark to the respondent, the former Australian distributor of Bayer products. The appellant “appealed” to the High Court, in
the Court’s original jurisdiction. The respondent asserted, in an effort to defeat the appeal in limine, that the appeal was invalid as a purported conferral of non-judicial power on the High Court and a purported investing of non-judicial
power in state courts exercising federal jurisdiction. Kitto J, the primary judge, stated a case for the Full Court. Dixon CJ delivered
a judgment concurred in by four other members of the Court, the fifth agreeing in substance.
35. The provision in question was s 44 of the Trade Marks Act 1905-1948 (Cth) which was in the following terms:
(1) Any party aggrieved by the decision of the Law Officer may in the time and in the manner prescribed appeal to the Court.
(2) The Court shall hear the applicant and the opponent, and determine whether the application ought to be refused or ought to be
granted with or without any modifications or conditions.
36. The decision of the Law Officer was made pursuant to an appeal provided by the Act from a decision of the Registrar upon an opposition.
Under s 45, at the request of either party, the appeal from the Registrar could proceed directly to the Court, by-passing the Law
Officer. The appeal to the Law Officer under s 43 was in virtually identical terms.
37. The nomenclature of “appeal” was seen as of no significance. What was of importance was whether there could be a conferral of
judicial power on the High Court under s 76 (ii) of the Constitution (or the investing of jurisdiction in a Supreme Court under s 77(iii)) in a matter arising under a law of the Parliament in the original jurisdiction and within the nine matters in ss 75 and 76 of the Constitution. Dixon CJ (at 658) noted that the Act did not, as it could have done, draw a clear linguistic distinction between, on the one hand,
the administrative power to grant the right upon being satisfied of the existence of the relevant criteria in the Act and, on the
other hand, the judicial power to entertain a challenge to such a grant and to determine judicially (that is finally and conclusively)
the existence of factors entitling the applicant to registration or not, and by binding and enforceable decree give effect to such
existing rights within the framework of existing law. This distinction was not made in the language of the statute. The functions
of the Law Officer and the Court were expressed in identical language. Thus, it was said in argument that the virtual identity of
language betrayed an identity of function or power. This argument was rejected. The similarity of language merely meant that it was
necessary to recognise the identity or character of the person upon whom the power was conferred. Dixon CJ said at 659-60:
The decision of the Privy Council as well as of this Court in the case of the Shell Oil Company named in this Court British Imperial Oil Co. Ltd v Federal Commissioner of Taxation [1926] HCA 58; (1926) 38 CLR 153; (1931) A.C. 275; (1930) 44 CLR 530 is enough to show that words which might otherwise be sufficient to confer judicial power may be governed by the
context as well as by the character of the body or person upon whom the power is conferred and may be construed as going no further
than granting administrative power. They must of course be consistent in their content with that construction but that is a condition
which s 43 satisfies.
38. Thus, although from the language of the statute the Law Officer and the Court appeared to be doing the same thing, by reason of
the context of the conferral and the nature and character of the persons on whom the power was conferred, the distinct tasks described
earlier by Dixon CJ could be seen to be respectively done by the different parties exercising two different types of power.
39. The issue was once again analysed in R v Quinn; Ex parte Consolidated Foods Corporation[10]. This time the issue raised was the converse of the Bayer case. It was said that the Registrar’s power to remove a trade mark from the Register for non-use under s 23 of the 1955 Act was an impermissible
conferral of judicial power. Jacobs J gave the leading judgment. The notion of the nature of the power changing with the context
and the identity of the person upon whom it was conferred was re-iterated. Parliament would be taken to intend a distributive conferral
of different types of power conformably with the character of the persons on whom the powers were being so conferred, even within
the one provision. The intention of Parliament to confer administrative or judicial power must be found. In a regime of rights created
by a statute it was open for Parliament to confer administrative power on the Registrar to keep the Register and to decide who should
be and remain on it and who should not, including in that task a decision-making role as to who qualified to be on it. The following
paragraphs from the reasons of Jacobs J at 11-12 are very helpful:
The historical approach to the question whether a power is exclusively a judicial power is based upon the recognition that we have
inherited and were intended by our Constitution to live under a system of law and government which has traditionally protected the rights of persons by ensuring that those rights
are determined by a judiciary independent of the parliament and the executive. But the rights referred to in such an enunciation
are the basic rights which traditionally, and therefore historically, are judged by that independent judiciary which is the bulwark
of freedom. The governance of a trial for the determination of criminal guilt is the classic example. But there are a multitude of
such instances. One of them has been held to be the determination of a status of a person whereby the right to recover money owing
by that person is barred: Reg v Davison [1954] HCA 46; (1954) 90 CLR 353 .
On the other hand the course of legislation in comparatively recent times does not, in itself, provide a foundation for the historical
approach. If the legislation requires the exercise of a power to determine questions the determination of which will affect what
are traditionally regarded as basic legal rights, the judicial nature of the power springs from the effect which the exercise of
the decision-making function under the legislation will have upon the legal rights rather than from the history of similar legislation
reposing the function in a judicial tribunal.
40. The judgment of Aickin J is also extremely clear and helpful in its discussion of the nature of judicial power and the difficulty
of defining it. Aickin J tended towards a conclusion that the Registrar had been invalidly conferred with judicial power, but considered
the matter indistinguishable from the Bayer case and applied that existing authority.
41. The underlying doubts expressed by Aickin J and the powerful argument formulated and expressed by counsel for the prosecutor on
the writ (Mr WMC Gummow) which can best be seen at pp 2-3 and 14-15 reveal that these intellectual property provisions distributing
power expressed in similar language to different repositories are perhaps the most delicate example of the distinction between administrative
and judicial power.
42. As Professor Campbell said in “Jurisdiction in Patent Matters” Report to Industrial Property Advisory Committee 1983 Vol 3, these cases show a striking demonstration of the extent to which the courts have been prepared to share authority of a certain
neutral kind. However, some steps cannot be taken. If Parliament were to seek to cut off collateral curial review, the likelihood
would be that the administrative determination of existing rights and liabilities would be held to be unconstitutional – the attempt
would be seen to give conclusiveness and finality – indicators of judicial power.
43. Another way of conceptualising the different functions of the administrator and the court is to recognise that in a regime of
statutory rights, the extent of the right may be conditioned or limited subject to the power of modification or destruction by the
decision of an administrator under the Act itself.
44. Thus, it is crucial to understand that constitutionally the “appeal” to the Federal Court is an entirely original proceeding.
It is not a question whether the Registrar was right or wrong. It is, for the first time, an enquiry, involving the exercise of the
judicial power of the Commonwealth, as to whether the facts are such as entitle a party to the controversy to hold or be granted
the particular statutory rights in question. It is equally important to understand that the processes, techniques and power being
exercised by the Registrar or Commissioner are administrative.
The Current Provisions
The “appeal” from the Commissioner or Registrar
45. Against this background, one comes to the current appeal provisions.
46. Reference should be made to the following provisions of the TM Act: ss 35 (application), 56 (registration or not after opposition), 67 (amendment), 83(2) (amendment of particulars), and 104 (removal).
47. Reference should be made to ss 35, 36, 42, 49, 50, 51, 60, 69, 81, 82, 101, 104, 106, 107 and 108 of the Patents Act.
the powers of the court on appeal
48. Section 197 of the TM Act and s 160 of the Patents Act govern the powers of the Federal Court on the hearing of an appeal. They are in identical terms:
On hearing an appeal against a decision or direction of the [Registrar/Commissioner] the Federal Court may do any one or more of the following:
(a) admit further evidence orally, or on affidavit or otherwise;
(b) permit the examination and cross-examination of witnesses, including witnesses who gave evidence before the [Registrar/Commissioner];
(c) order an issue of fact to be tried as it directs;
(d) affirm, reverse or vary the [Registrar's/Commissioner’s] decision or direction;
(e) give any judgment, or make any order, that, in all the circumstances, it thinks fit;
(f) order a party to pay costs to another party.
49. The exclusivity of the jurisdiction of the Federal Court (except for the High Court under s 75 of the Constitution) is provided for by s 191(2) of the TM Act and s 154(2) of the Patents Act.
50. From the Constitutional imperatives and principles earlier discussed, what is contained in ss 197 and 160 above is, in a sense, implicit; since another kind of power (judicial power) is being exercised for the first time. Thus, in Jafferjee v Scarlett[11] Latham CJ said that it was the duty of a court to decide the matter as if on an original application and not merely to decide whether
the decision of the Registrar could or could not be supported.[12]
51. The Registrar or Commissioner is not bound by the rules of evidence and may inform himself or herself on any matter before him
or her in any way that the Registrar reasonably believes to be appropriate. See also Minister for Immigration and Ethnic Affairs v Pochi[13] where Deane J made clear that the technical rules of evidence are not part of the administrative function; rather what is required
before an administrator is that the material must be probative. See regulation 21.15(8) of the TM Regulations and see regs 2.12 and 2.23 of the Patents Regulations. If one appreciates the administrative nature of the tasks before the Registrar or Commissioner all this is to be expected. The boundaries
of what should and should not be accepted as material upon which the Registrar or Commissioner can act are based on administrative
law notions of procedural propriety, fairness and rationality having regard to the issues and task at hand: see generally Malibu Boats West Inc v Catanese [2000] FCA 1141; (2000) 51 IPR 134 per Finkelstein J. Within these confines, and especially given the often proprietorial nature of the task under the TM Act or Patents Act, it is not surprising, however, that sometimes the Registrar or Commissioner will reject, as insufficiently probative, material as
either hearsay or weakly supported.
the status of the decision of the Registrar or Commissioner
52. The decision of the Registrar or Commissioner under appeal is not presumed to be correct. However “due weight” will be given to
the opinion of the Registrar as that of a skilled and experienced person. [14]
53. It is necessary to understand what is involved in this expressed element of deference. It is not the same deference as referred
to by appeal courts proper in the exercise of appellate jurisdiction in intellectual property matters where the question at issue
involves the exercise of judgment. That is a similar, but quite distinct, form of deference based on the nature of the appellate
process and the requirement of the demonstration of error: Branir v Owston Nominees (No 2) Pty Ltd[15].
54. The deference or weight given to the Registrar’s or Commissioner’s view was discussed by the High Court in Corporation of the City of Enfield v Development Assistance Commission[16]. In Enfield, the High Court rejected the proposition that the courts should defer to tribunals or administrators in the statement of the law,
in particular the construction of statutes with which the tribunal or administrator has a particular familiarity or expertise. This
was a rejection of what is referred to in the United States as the “Chevron doctrine”[17]. Whilst the High Court was adamant in Enfield that there was no deference to the executive on questions of law, the High Court made equally clear that there would be great weight
attached to the fact finding of a specialised tribunal. Particular regard was had to Eclipse Spring Products Inc v Registrar of Trade Marks[18]. The Court recognised that even in jurisdictional enquiries a significant degree of deference to appropriate decision-makers may
be accorded in respect of fact finding.
55. It would seem that this principle probably extends to questions involving the complex intermingling of legal and factual issues.
The notion of deference in Enfield is not restricted to judicial review under a provision such as s 39B(1) or s 75(v); it extends to the exercise of original jurisdiction in the traditional “appeal”. Bear in mind an “appeal” may be combined with proceedings
under s 39B(1) or (1A)(c).
the proper approach to evidence
56. The proper approach to the evidence that was before the Registrar was dealt with by Finkelstein J in Malibu Boats. Finkelstein J put forward two approaches without deciding which was correct or preferable. The first was that the evidence comprises
all that was before the Registrar, together with additional evidence that the parties seek to adduce. On this first view, there is
a necessity to have what was before the Registrar before the Court, it was said to arise by implication from the phrase “further
evidence” in ss 197(a) and 160(a). The second was to adopt the approach of Kitto J in Kaiser Aluminium and Chemical Corp v Reynolds Metal Co[19] that to the extent the parties agreed that the evidence before the Registrar be used in Court that could be done, otherwise the matter
would proceed afresh. It is also necessary to have regard to the terms of Order 58 rule 8 of the Federal Court Rules which are as
follows:
(1) Material before the Commissioner for the purpose of the decision appealed from is, with the leave of the Court and saving all
just exceptions, admissible in evidence on the hearing of the appeal.
(2) At the directions hearing in respect of an appeal from a decision under the Patents Act, the Court may give directions, for the purposes of paragraph 160 (a) of that Act, as to the giving of further evidence.
(“Commissioner” is defined as including the Registrar.)
57. Finkelstein J did not decide between these two alternatives and also raised the question as to the consistency of Order 58 rule
8 with the TM Act.
58. Bearing in mind (a) the Constitutional structure that I have described, (b) the type of power exercised by the Registrar and (c)
the administrative law approach to the admission of material before the Registrar, the approach used by Kitto J in Kaiser Aluminium (an appeal from the Commissioner of Patents) is entirely understandable and expected. Kitto J emphasised the original nature of the
proceedings in court and pointed out that in Australia there is not, and constitutionally there could not be, a rule (as then in
England) excluding evidence beyond that led before the Registrar without the leave of the Court. The word “further” would seem a
fairly slim reed on which to found an argument that the Parliament has required that the material before the administrator (which
may not be admissible) is to be placed before the Court.
59. Order 58 rule 8 goes further than the approach of Kitto J in Kaiser Aluminium. The Court may admit evidence led before the decision-maker even though one party opposes that course. “Just exceptions” can be taken
to include the rejection of inadmissible evidence.
60. The fact that the “appeal” is the exercise of original jurisdiction does not answer all questions about what the Court is doing.
It does tell you that judicial power is being exercised. It does not necessarily tell you what question, including its boundaries,
is being decided. That is decided by the issue tendered for resolution and which is the subject of the judicial determination. This
is especially important to recognise when the question of how registration or grant after opposition should be approached compared
to full-scale rectification or revocation proceedings. As will be seen shortly, the issue of grant or registration is a decision
taken by the Commissioner or Registrar at what can be said to be a summary level. That summary level includes two stages, the prosecution
process followed by advertisement, if successful, which may trigger opposition proceedings. Either stage can involve the filing of
evidence or material for the resolution of the administrative law proceedings.
61. Notwithstanding that it may be that the hearing in the original jurisdiction of the Court deals with certain issues at a level
which is not quite so detailed as a contested revocation or rectification suit, that does not mean that the appeal hearing is other
than a final, not interlocutory, hearing in the original jurisdiction of the Court. As such, subject to any ameliorating powers in
the Evidence Act 1995 (Cth), evidence must conform to the rules of evidence.
62. In Soncini v Registrar of Trade Marks[20] Sackville J dealt with another asserted consequence of the use of the word “further” in ss 197(a) and 160(a). In that case an owner, who had led no evidence before the Registrar, appealed against the removal of his trade mark from the
register on the grounds of non-use. Sackville J expressed the view that s 197(a) was facultative and applied even where there was no evidence led before the Registrar. Recognising the nature of the task before
the Court and recognising the public interest in ensuring that the merits of a non-use application are addressed, Sackville J held
that s 197(a) is to be given a broad view. The same must apply to s 160(a).
63. What evidence is appropriate to be led and what is relevant depends, as in any case, upon the issues tendered for resolution.
In this respect one needs to understand what is the subject matter of the appeal proceedings.
the subject matter of the hearing
64. The decision of Emmett J in F Hoffman-La Roche AG v New England Biolabs Inc[21] is important. The appellant and respondent both appealed to the Court under Part V of the Patents Act against the Commissioner’s decision after opposition proceedings. The respondent sought to lead extensive evidence before the Court,
submitting that, based on the Constitutional dichotomy earlier discussed, these were original proceedings, in effect of the same
scope and breadth as revocation proceedings. That is, it was said, that because these proceedings involved the exercise of judicial
power about whether the patent should be granted, the controversy between the parties was as to the entitlement in fact and law to
the patent. The relevant investigation was said to be just as if the suit was a full blown challenge in contested revocation proceedings.
65. Emmett J disagreed. His Honour examined the legislation to ascertain the statutory intention as to the nature of the hearing.
First, his Honour described the nature of the proceedings before him as within the original jurisdiction. The control on what is
to be before the Court on the “appeal” was to be governed significantly by the nature of the proceedings and of the issues.
66. The existence of the powers in the Court in s 160 of the Patents Act (s 197 of the TM Act) was relevant to his Honour’s view. At [37] and [38] Emmett J said:
The presence of s 160 suggests that it is within the power of the Court to constrain further evidence and the extent of examination
and cross-examination. No suggestion has been made in the course of argument before me that there is any constitutional invalidity
involved in s 160. The Federal Court, being a Court established under Ch III of the Constitution of the Commonwealth, should exercise its powers and its jurisdiction in respect of the judicial power of the Commonwealth in accordance
with judicial process.
Thus, insofar as the section purported to authorise the Court, for example, to deprive a party of a fair opportunity to present its
case, there could be some basis for challenging its validity. As I have said, however, no challenge is taken to the validity of the
provision. Section 160 does, however, indicate that the Court may exercise a discretion as to the extent to which further evidence
will be admitted, beyond that which was before the Commissioner and the extent to which examination and cross-examination of witnesses
might be permitted. Such a constraint is indicative of a proceeding different from one intended to resolve all disputed questions.
67. His Honour saw the requirement for leave to appeal in s 158(2) of the Patents Act (s 195(2) of the TM Act) as of significance. He saw it as the likening of the appeal in the original jurisdiction to the deciding of an interlocutory question.
In saying this Emmett J was not saying that the matter before him was interlocutory; it was an analogy of assistance to understand the nature and extent of the statutory
task before him.
68. His Honour saw the opportunity under ss 19 and 138 (cf Part 8 of the TM Act) for revocation of a patent as relevant to understanding the nature of the task on appeal from the Commissioner. His Honour noted
that if the hearing on the appeal was of the same nature and extent as the revocation proceedings the costs sanction created by s
19 and the issue of a certificate would not apply. Further, the revocation proceedings are an available opportunity to litigate the
full patent issues irrespective of the result of opposition proceedings.
69. Emmett J concluded at [47]:
The fact that the legislation contemplates two stages at which the question of validity of a patent might be challenged indicates
that there must be a distinction between the two proceedings. Such an approach is consistent with the proposition that pre-grant
opposition is intended to provide a relatively inexpensive mechanism for resolving third party disputes as to validity. The purpose
of pre-grant opposition proceedings is to provide a swift and economical means of settling disputes that would otherwise need to
be dealt with by the courts in more expensive and time consuming post-grant litigation; that is, to decrease the occasion for costly
revocation proceedings by ensuring that bad patents do not proceed to grant (see Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; (1999) 92 FCR 106 at 112 [19]; [1999] FCA 742; 163 ALR 761 at 766-767 [19]). It is a good thing to have some process by which patents that are obviously invalid will not be allowed to clutter the register
(see McGlashan v Rabett [1909] HCA 85; (1909) 9 CLR 223 at 229).
70. This view that the statutory provisions in the Patents Act dealing with appeal from the decisions of the Commissioner involved the litigation of issues short of the full agitation of the entitlement
to remain on the Register was supported by a long line of authority.[22]
71. The more limited nature of the judicial enquiry is such as to govern or influence a discretionary decision as to how much evidence
should be allowed in and at what level of detail or analysis. In this context Emmett J provided the following guidance as to the
admission of evidence and the extent of cross-examination at [67]-[69]:
The language employed in the cases to which I have referred suggests that it should appear clear to the Court that no patent granted
in respect of the specification would be valid. I consider that, before the Court would uphold an opposition to the grant of a patent,
the Court should be clearly satisfied that the patent, if granted, would not be valid. That, however, is not to say that an opponent
should not be permitted appropriate opportunity to lead evidence-in-chief as to the facts that are designed to demonstrate, with
the requisite degree of clarity, that a patent, if granted, would not be valid. Where the subject matter of the patent is one of
complexity, of necessity, the evidence that an opponent would be entitled to adduce would itself be of considerable complexity.
I am not persuaded at this stage that evidence of the nature sought to be adduced from Dr Mosbaugh is such as should be excluded,
subject of course to the evidence being otherwise in admissible form. On the other hand, it may be that when I have seen all of the
evidence sought to be relied upon by New England Biolabs, I could form the view that, whatever evidence is adduced by the Applicant,
I would not be satisfied with the requisite degree of clarity that a patent, if granted, would not be valid. Alternatively, it may
be that I would be satisfied on the basis of that material, and nothing else, that a patent could well be invalid if granted. In
that case, of course, it would be necessary to consider the evidence sought to be adduced on behalf of the Applicant.
I would expect that there would be no occasion for extensive cross-examination of witnesses for either party, assuming both parties
adduce evidence. That is not to say, of course, that one would ordinarily exclude all cross-examination. For example, it may be that
counsel would seek to elicit evidence from a witness that is otherwise not available. However, extensive cross-examination to demonstrate
that a witness's views ought not to be accepted or are unreliable, would, in my view, be permitted only in very exceptional circumstances.
72. The decision of Emmett J in Hoffman-La Roche was followed by Branson J in E I Dupont de Nemours & Company v Imperial Chemical Industries PLC[23]. Branson J emphasised, as Emmett J did, that the clear legislative intention was that pre-grant opposition be swift and economical
as opposed to full-blown post-grant revocation proceedings.
73. In Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited[24] Bennett J, in an appeal from a decision in an opposition proceeding under s 56 of the TM Act, expressed the view that the approach of Emmett J in Hoffman-La Roche should be followed and applied in the trade mark context. Her Honour noted that the TM Act placed the onus on the opponent and that the identical policy considerations for the cheap and speedy resolution of pre-registration
oppositions applied in trade mark matters as in patent matters, and that there was a distinct similarity of the statutory framework,
in particular Part 8. Thus, her Honour found that conformably with Hoffman-La Roche the opposition should be upheld only if the Court were satisfied that the trade mark clearly should not be registered.
74. In Lomas v Winton Shire Council[25] the Full Court said that the presence of s 195(2) of the TM Act suggested that a parallel could be drawn with the scheme of appeals in opposition proceedings under the Patents Act and that under s 56 of the TM Act the Court should consider whether the trade mark should clearly not be registered. The Full Court said at [18] and [19]:
The fact that leave to appeal from the decision of a single judge is required indicates the quasi summary nature of an opposition
proceeding. An unsuccessful opponent would always have the opportunity to bring an expungement proceeding if the opposition proceeding
fails. In an expungement proceeding, the validity of a trade mark can be fully explored. That is a reason for concluding that there
should not be a full exploration of the prospective validity of a trade mark on an appeal in an opposition proceeding
Thus, it would be inappropriate for there to be a full exploration of the validity of the trade mark in two separate proceedings in
the Court, first in an appeal in an opposition proceeding and then, subsequently, if the opposition proceeding failed, in an expungement
proceeding. Those considerations emphasise the need for the Full Court, before refusing leave to appeal pursuant to s 195(2) of the
Act, to be satisfied that a decision by a single judge upholding an opposition is undoubtedly correct.
75. Thus, at least in proceedings involving an opposition to the grant or registration of a patent or trade mark under s 60 and 56 of the Patents Act and TM Act, respectively, the issue for disposition in the exercise of the judicial power of the Commonwealth is whether the patent or mark
should clearly not be granted or registered.
76. There has been some questioning as to the identity of approach in trade marks as in patent appeals: see Ms Dufty and Mr Dwyer
in [55,978] of Lahore Patents, Trade Marks and Related Rights Vol 1A. It is clear that there are identical public policy considerations in ensuring that the opposition proceedings are as expeditious
and cheap as possible. Equally the structure of the statutory scheme for appeals is virtually identical. Also the avenues for revocation
and rectification are the same. It may be, however, as Ms Dufty and Mr Dwyer point out, that different public policy considerations
attend the grant of a patent. The encouragement to be given to inventors and the consideration involved in the disclosure of the
invention are factors not present in the field of trade marks. Section 33 of the TM Act is, however, a relevant consideration, as Bennett J found. Though, its application may be seen to be sufficient in its terms to define
what the Registrar, and later the Court, is doing without a differently worded gloss. Doubts of this kind were also expressed by
Gyles J in Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd [2003] FCA 1517 at [12]- [13].
[At the conference strong views were expressed by certain practitioners that Emmett J was wrong. They expressed the view that litigants
were now in some doubt as to the wisdom of prior practice of addressing brief general “evidence” before the Registrar or Commissioner,
and replacing this by a more detailed body of evidence before the Court.]
77. In respect of the other subject matters of the exercise of original jurisdiction on “appeals” from the Registrar or the Commissioner
the task of the Court and the extent of evidence able to be led depend on what is before the Court. For instance, if an appeal is
brought against the refusal by the Commissioner to declare in writing under ss 35 or 36 of the Patents Act that an applicant is an “eligible person”, the appeal is not as to whether the Commissioner was correct in not being satisfied of
that, but whether the applicant is in fact such a person and thus whether a declaration should be made. In such an appeal or in other
appeals there may be no third party involved. The appeal may not necessarily lead to any issue estoppel. The evidence to be brought
in these proceedings is such as should satisfy the Court that the power should or should not be exercised.
78. Another issue which has arisen from the litigation between New England Biolabs Inc and Hoffman-La Roche is the limits of the subject
matter of the “appeal”. It flows from Emmett J’s earlier decision that the mere fact that the Court is exercising the judicial power
of the Commonwealth does not mean that the controversy is wider than the application that was before the Registrar or Commissioner.
The exercise of the judicial power is in respect of the controversy defined and limited by the statutory rights available on the
application that was before the Registrar or Commissioner. That application is one which is “neutral” in the sense discussed above.
It can be given to an administrator or a court to determine in the exercise of different species of power. Though the use of the
word “appeal” is in some sense confusing, because the appeal is not in the Court’s appellate jurisdiction, but original, it does
convey Parliament’s intention to confer on the Court a controversy of the same boundaries and under the same provisions as was before
the Registrar or Commissioner in his or her administrative capacity. The powers conferred by ss 197 and 160 of the TM Act and the Patents Act are not intended to widen, or give the Court power to widen, the controversy as defined and limited by the Act in terms of the particular
application with its characteristics identified in the Act and regulations which was initially before the Registrar or Commissioner.
See generally New England Biolabs v F Hoffman–La Roche AG [2004] FCAFC 213. (Special leave has been sought.)
appeals to the Full Court from decisions of a single judge dealing with “appeals” from the Commissioner or Registrar
79. Sections 158(2) and 195(2) of the Patents Act and TM Act are identically worded. Appeal to the Full Court is by leave only.
80. The nature of the operation of the leave requirement from judgments or orders of a single judge hearing an “appeal” from the Registrar
or Commissioner has been dealt with in a number of cases: Genetics Institute (above) (patents); Renaud Cointreau & Cie v Cordon Bleu International Ltd [2001] FCA 1170; 52 IPR 382 (trade marks); Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; 56 IPR 30 (trade marks); Imperial Chemical Industries PLC v El Dupont De Nemours & Co [2002] FCAFC 264 (the ICI Appeal) (patents); and Lomas (supra) (trade marks).
81. In Genetics Institute there was an application for leave to appeal from orders of the primary judge dismissing the appeal from a decision of the Commissioner.
The Court discussed at some length the need to have regard to the nature, terms and context of the legislative provision granting
leave. The Court noted that it was inappropriate in respect of provisions such as s 24(1A) of the Federal Court of Australia Act 1976 that rigid rules be laid down to govern the future exercise of discretion. It said that each application should be examined by reference
to its own circumstances: see National Mutual Holdings v Sentry Corporation (1988) 14 FCR 155, 160-61 and Decor Corporation v Dart Industries (1991) 33 FCR 397, 399-400. The discretion is not to be constrained by fetters, other than as prescribed by statute. The Court did, however, at [16]
make some observations about the relevant considerations concerning an application for leave from the rejection at first instance
of a pre-grant opposition:
An appeal to the Full Federal Court against a decision of a single judge to reject a pre-grant opposition will follow a full hearing
of the opposition before the Commissioner of Patents and an appeal by way of re-hearing before the single judge. Where an opponent
to a patent has had the benefit of two hearings and has been unsuccessful in both, we think there should be limited scope for a further
appeal, particularly where the matters primarily in issue are essentially questions of fact. Only in exceptional cases would it be
right to grant an applicant what would effectively amount to a further consideration of factual issues. This is particularly so given
that an unsuccessful opponent of a patent will still be able to institute revocation proceedings under s 138 of the Patents Act, with the result that a refusal to grant leave to appeal under subs 158(2) will not be finally determinative of the opponent’s rights.
In such circumstances it is unlikely that substantial injustice will be caused by the refusal of leave.
82. The Court then examined the relevant issue before the primary judge – that it was practically certain or clear that the patent
if granted would be invalid (see above). Further, the Court emphasised the public policy objective of the pre-grant opposition being
an intended inexpensive mechanism for resolving disputes as to validity. In these circumstances, a stringent filter for appeals from
decisions under s 60(4) of the Patents Act was called for. The Court concluded at [23]:
We consider that the Full Federal Court should also exercise its discretion to grant leave to appeal under s 158(2) against a decision of a single judge of the Federal Court refusing to grant relief in a pre-grant opposition proceeding with care.
Leaving aside applications for leave on a question of pure law in the context of essentially undisputed facts, and subject always
to considerations of fairness and the interests of justice raised by a particular case, we think the contextual and policy matters
to which we have referred will ordinarily require that leave to appeal against a decision rejecting a pre-grant opposition only be
granted where the applicant has demonstrated a clear prima facie case of error in the decision appealed from, such that the likely
effect of that decision would be to allow an invalid patent to proceed to grant.
83. In Renaud Cointreau,the Full Court aligned the appeal regime in the TM Act and the Patents Act and said that the expressions of principle as to approach to leave in Genetics Institute applied in an appeal from a decision of the Registrar accepting a trade mark application over opposition, and there was generally
a need to demonstrate clear prima facie error in the decision appealed from. Once again, the aim of the opposition proceedings as a speedy and inexpensive procedure was
adverted to. Further, the need for uniformity of approach in different spheres of intellectual property was referred to.
84. Kenman Kandy concerned an application for leave to appeal from a judge’s decision dismissing an appeal from a decision of the Registrar to refuse
registration – that is to uphold the opposition. In Kenman Kandy the nature of the appeal was helpfully summarised by French J at [21] and [22].
The hearing and determination of appeals from the Registrar, because they are appeals from administrative decisions, involve the exercise
of the original jurisdiction of the Court. So too did like appeals to the High Court under s 45 of the Trade Marks Act 1905 (Cth)
and s 51 of the Trade Marks Act 1955. The Court on such an appeal is required to determine whether the application under appeal should
succeed on its merits albeit weight will be given to the Registrar’s opinion as that of a skilled and experienced officer - Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115; Eclipse Sleep Products Inc v Registrar of Trade Marks [1957] HCA 86; (1957) 99 CLR 300 at 308. While doing so the Court must approach the matter afresh “without undue concern as to the ratio decidendi of the Registrar”
- Rountree PLC v Rollbits Pty Ltd (1988) 90 FLR 398. No doubt the weight given to a Registrar’s decision on registrability will be at its highest in respect of evaluative aspects of
that decision. Where a question of law or statutory construction is concerned it is a matter entirely for the Court to determine.
There is no principle in favour of the correctness of the Registrar’s opinion. In determining the acceptance or rejection of an application
for registration the Court must apply the same legal criteria as are to be adopted by the Registrar. Since the enactment of the Trade Marks Act 1995 the onus is no longer on the applicant to establish registrability as it was under the 1955 Act - Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at 372-373. The application must be accepted unless the Court is satisfied that it has not been made in accordance with the Act or
that there are grounds for rejecting it. If the matter is in doubt then the application should be accepted. The possibility of refusal
after a contested opposition with evidence and closer scrutiny remains open. The acceptance stage is not the time for detailed adversarial
examination of the application that might be involved in an opposition - Registrar of Trade Marks v Woolworths at 377. Acceptance for registration involves an initial screening process albeit it requires the application of statutory criteria
and evaluative judgments by the Registrar and the Registrar’s delegates.
85. French J emphasised that the expressions of the need for clear error, must be read in the context of the balance of Genetics Institute that the circumstances of each case should be considered. His Honour saw it as too high a threshold if used across the board for
all appeals, and as an impermissible fetter as a sole test. In Kenman Kandy registration had been refused based on a view of registrability, which threw up an important question of construction of the TM Act. It was relevant also that it was an unsuccessful applicant. Lindgren J and Stone J agreed with French J in these respects.
86. Kenman Kandy was not a rejection of Genetics Institute or Renaud Cointreau, but rather a rejection of a narrow single proposition derived from those cases governing all appeals. Also, both Genetics Institute and Renaud Cointreau concerned leave being sought in respect of unsuccessful opposition.
87. In the ICI Appeal the Full Court drew a clear distinction between an unsuccessful opposition and refusal of registration. The Full Court said at [7]:
Thus, there is every reason for applying different principles according to whether the opponent has been successful or unsuccessful
before the single judge. Cases commenced under s 60(4) of the Act will require different treatment according to whether or not opposition
to the patent was upheld by the single judge. The Court should be studious in its examination of the questions likely to arise on
appeal, before refusing leave to appeal from an order of a single judge where the opponent has been successful. The Court should
be slow to shut out a patent applicant who has had only one judicial consideration of entitlement to the grant of a patent.
88. The Full Court in Lomas at [15] and [16] reiterated this distinction:
By reason of s 24(1A) of the Federal Court of Australia Act 1976 (Cth), leave is required for any appeal against an interlocutory decision of a single judge of the Court. However, the requirement
for leave to appeal is not a requirement that a particular test be satisfied. The jurisdiction to grant leave to appeal is discretionary
and it is inappropriate to formulate rigid rules that could constrain the exercise of that discretion. Each application for leave
under s 24(1A) should be dealt with in accordance with its own special circumstances.
Similar considerations apply in relation to an application for leave to appeal under s 195(2) of the Act. Nevertheless, the Court
should be studious in its examination of the questions likely to arise on appeal, before refusing leave to appeal from an order of
a single judge where an opponent has been successful. The Court should be slow to shut out an applicant for a trade mark who has
had only one judicial consideration of entitlement to the grant of the trade mark. Before refusing leave, the Court should be satisfied that it is clear beyond doubt that there has been no error and that any trade mark, if granted, should be expunged - see Imperial Chemical Industries PLC v EI Dupont De Nemours & Co [2002] FCAFC 264 paragraphs [7] to [10].
concluding comments on the appeal from IP Australia
89. The above provides an outline of the operation of provisions that have their own curiosity and complexity deriving from the Constitutional
imperatives. If you bear these constitutional imperatives in mind and have clear at all times the different nature of the power exercised
by the administrator and the Court, you will not be hypnotised by the seductive and almost misleading nature of the language used
in the statutes.
90. With the essential recognition of the nature of the different types of power being exercised by different people, one must understand
with precision what the statutory right or privilege it is that is the subject of the appeal. The question on the appeal, that is,
on the exercise of judicial power in the original jurisdiction, is whether circumstances exist entitling the person to the exercise
of the statutory right or privilege.
91. The evidence to be led will depend upon the proper identification of that subject matter. The evidence is led in a court hearing,
not as material to persuade an administrator. It therefore needs not only to be material and persuasive, but also admissible.
Other Review Mechanisms
92. It is appropriate to identify the important difference between appeals of the kind just discussed and the other types of review
referred to at [2] above.
AAT
93. Review by the AAT is conceptually the simplest. Where the AAT is given authority to review a decision of the Commissioner or the
Registrar it remakes the decision with the attributes, powers and duties of the original decision-maker. The AAT remakes the decision
afresh, as a new decision, and as an administrator.
94. There are a number of decisions under the Patents Act and Regulations which are subject to such review: ss 10, 17, 32, 33, 66, 74(3), 103(2), 113, 137(3), 142(2)(b), 147(2) and (3), 149, 150(2), 151(2) 152(1), (2) and (3), 173(a) and (b), 198, 215 and 223; regs 3.24(1)(b), 3.25(2), 4.3(2)(b). 5.5(3), 5.6(3), 6.2(1)(b)(ii), 13.4(3), 20.21(7), 20.23(2), (4) and (5) and 22.21(5). See s 224 and reg 22.6.
95. An examination of these provisions reveals that, by and large, they are functions not suitable, or less suitable, for judicial
determination than the decisions in respect of which there is a judicial “appeal”. The provisions dealing with AAT review and “appeal”
to the Court do not overlap.
96. The decisions of the Registrar which are subject of review are under ss 175(5), 178(5), 180(4), 180A(4), 224(7) and 228A(7) of
the TM Act.
97. The Federal Court has jurisdiction under s 44 of the Administrative Appeals Tribunal Act 1975 to hear “appeals” on a question of law. The question of law defines and confines the controversy before the Court. These are another type of “appeal” in the original jurisdiction
of the Court.
judicial review of administrative action
98. This is an enormous topic in itself. However, any intellectual property practitioner must understand the structural essentials.
99. Section 75(v) of the Constitution is a provision that cannot be removed by Parliament. It, together with s 75(iii), is a guarantee of a form of judicial review over officers of the Commonwealth. Sections 75(iii) and (v) are in the following terms:
In all matters:
…
(iii) in which the Commonwealth, or a person suing or being sued on behalf of the Commonwealth, is a party;
…
(v) in which a writ of mandamus or prohibition or an injunction is sought against an officer of the Commonwealth;
the High Court shall have original jurisdiction.
100. Section 75(v) is mirrored precisely in s 39B(1) of the Judiciary Act 1903 giving the Federal Court like statutory jurisdiction.
101. These are called the constitutional or statutory writs or prerogative writs. The circumstances in which they may be invoked are
not codified or identified in statute. This is a subject dealt with in the general law, and, in respect of s 75(iii) and (v), in the law attending the Constitution.
102. The essential criterion for the operation of s 75(v) is that the decision-maker display what is referred to as “jurisdictional error”. A little explanation is necessary.
103. Judicial review at common law is concerned with the legality of the exercise of power or its purported exercise[26]. The essential warrant for the exercise of judicial power in respect of administrative action is to declare and enforce the law affecting
the extent and exercise of power[27]. This involves ensuring that executive action does not exceed constitutional warrant, or the limits of statutory or prerogative authority;
and the duty of the courtextends to the review of executive action otherwise not in conformity with the law[28]. It is the limits of the authority, and the legality of the exercise of the authority, which the High Court has firmly held is the
basis, and the only basis, for judicial intervention[29].
104. Accepting that the courts are the repository for the identification and enforcement of the law, one needs, of course, to ascertain
the law, and to understand the circumstances in which the courts will intervene.
“common law” review and the AD(JR) Act
105. Leaving aside the statutory[30] jurisdictional basis for exercising judicial review, the structure of the methods for curial intervention in Australia appears to
be as follows.
106. There would appear to be a division in analysis between, on the one hand, administrators and tribunals, and, on the other hand,
inferior or statutory courts. The division reveals itself in the scope of the notion of “jurisdiction”. In respect of administrators
and tribunals, in the absence of a contrary intent in the relevant legislation[31] an administrative tribunal lacks authority either to authoritatively determine questions of law or to make an order or decision otherwise than in accordance with the law[32]. In that context, the well-known statement in Craig as to administrative jurisdictional error was made[33]:
At least in the absence of a contrary intent in the statute or other instrument which established it, an administrative tribunal lacks authority either to authoritatively determine questions of law or to make an order or decision otherwise
than in accordance with the law. That point was made by Lord Diplock in In re Racal Communications Ltd [1980] UKHL 5; [1981] AC 374 at 383
"Parliament can, of course, if it so desires, confer upon administrative tribunals or authorities power to decide questions of law
as well as questions of fact or of administrative policy; but this requires clear words, for the presumption is that where a decision-making
power is conferred on a tribunal or authority that is not a court of law, Parliament did not intend to do so."
The position is, of course, a fortiori in this country where constitutional limitations arising from the doctrine of the separation
of judicial and executive powers may preclude legislative competence to confer judicial power upon an administrative tribunal. If
such an administrative tribunal falls into an error of law which causes it to identify a wrong issue, to ask itself a wrong question,
to ignore relevant material, to rely on irrelevant material or, at least in some circumstances, to make an erroneous finding or to
reach a mistaken conclusion, and the tribunal’s exercise or purported exercise of power is thereby affected, it exceeds its authority
or powers. Such an error of law is jurisdictional error which will invalidate any order or decision of the tribunal which reflects
it.
[emphasis added]
107. The error is jurisdictional because the authority is to act or decide according to law. This is to be contrasted with the position
of courts whose authority or jurisdiction is to hear and adjudicate[34], within which jurisdictional activity there is authority to decide questions of law and fact. Correction is available for these errors
within jurisdiction by the appeal process, or the non-jurisdictional scope of certiorari for error on the face of the record[35].
108. A reading of Craig[36] might lead one to conclude that, in relation to administrative tribunals and decision-makers, Australian law was conformable with
the approach of the House of Lords in Anisinimic Ltd v Foreign Compensation Commission[37], that, in relation to administrative tribunals and decision-makers, the distinction between jurisdictional and non-jurisdictional
error of law had been eliminated, and that to decide otherwise than according to law was an error going to jurisdiction[38].
109. However, that would appear not to be the case. In Coal & Allied[39] Gleeson CJ, Gummow J and Hayne J in dealing with the Australian Industrial Relations Commission[40] limited the scope of jurisdictional error as follows[41]:
There would only have been jurisdictional error on the part of the Full Bench if it had misconceived its role or if, in terms used
by Jordan CJ in Ex parte Hebburn Ltd; Re Kearsley Shire Council[42], it “misunder[stood] the nature of [its] jurisdiction… or ‘misconceive[d] its duty’[43] or ‘[failed] to apply itself to the question which [s 45 of the Act] prescribes’[44] … or ‘[misunderstood] the nature of the opinion which it [was] to form’[45]”. The Full Bench did none of those things.
110. That this seems to be a narrower formulation than Craig was reinforced by the following paragraph[46] in their Honours’ reasons:
In his reasons for decision, Giudice J proceeded on the basis that the Full Bench could intervene only if there was error on the part
of Boulton J. In this his Honour was correct. Giudice J held that there was error on the part of Boulton J. If he was wrong in that
view (a matter upon which it is unnecessary to express an opinion), that was an error within jurisdiction not an error in respect
of which relief could be granted by way or prohibition or mandamus under s 75(v) of the Constitution.
111. This apparently narrower formulation than in Craig may be explained by a narrower jurisdictional analysis for some tribunals, such as the “court-like” AIRC and their status as quasi-judicial
tribunals equivalent to courts, or it may be a general recognition of the need to examine decisions of all tribunals and decision-makers
as to jurisdictional and non-jurisdictional error in their particular statutory context.
112. The former view may well have the effect of reintroducing the “administrative”, “quasi-judicial” and “judicial” categorisations
and the distinction between jurisdiction and ultra vires[47]. The latter is probably the better view[48].
113. The decision whether an error is jurisdictional or non-jurisdictional often gives rise to differences of opinion[49]. Of course, any relevant statute will be vital in any consideration of this question. The emphasised words in Craig in [107] above should be recognised. Within the confines of constitutional limitations[50], arising, in particular, from the separation of judicial and executive powers[51], the statute will assist in the task of understanding whether an error in approach is to be seen as one within or outside its jurisdiction.
After all, “jurisdiction” of a tribunal or administrator is no more and no less than his, her or its authority to act[52] – the authorisation, if it comes from statute, should be assessed by reference to that statute[53].
114. The nature, function and responsibilities of the administrative agency (whether a decision-maker or a tribunal) will generally
be found in the relevant statute. The nature, function and responsibilities of the tribunal may reveal it to be charged with the
tasks of answering legal questions as part of its deliberative and adjudicative tasks (even if it does not purport to exercise judicial
power). If so, that may lend weight to a characterisation as “quasi-judicial”, but, more importantly, it may lead to the conclusion
that, as a matter of the intention of Parliament, a tribunal with those attributes is to be taken as having (like the AIRC in Coal & Allied) the authority to decide some legal issues (and err in that task). This same conclusion might not be reached about a delegate of a
minister charged with making a decision of a similar kind. From the two different statutory regimes one might well find different
conditions, and a different statutory intention, governing the exercise of the power[54]. In Returned & Services League of Australia (Victoria Branch) Inc v Liquor Licencing Commission[55], Phillips JA (with whom Charles and Buchanan JJA agreed) saw the distinction between courts, on the one hand, and tribunals and decision-makers,
on the other, as not finally presumptive of the enquiry, but of assistance in the process of statutory interpretation in ascertaining
what authority had been committed to the decision-maker, tribunal or court
115. The criteria for distinguishing between jurisdictional and non-jurisdiction error of law and the place of the character of the
decision-maker in that assessment, perhaps, awaits authoritative exposition. Although, as I have said, to the extent that the decision
is made pursuant to statute, the close examination of the statute in order to ascertain the nature of the authority to make the decision
and the nature and extent of any conditions on the exercise of the authority and the intended consequence of failure to meet such
conditions is essential, and the first, and probably controlling enquiry.
116. Also, it can be safely said that the enquiry is not purely a temporal one. The authority which must be conformed with is to act
or decide; it is not an analysis of whether he, she or it was doing the task which it had authority to embark on, unless the statue
so identified the nature of the authority.
117. Sometimes said to be of assistance in distinguishing between jurisdictional and non-jurisdictional error is the assessment whether
the error made is the very issue for decision, and if not, its proximity to the very issue for decision The closer the error to the
very question for decision, the more likely it is to be within jurisdiction – as an error doing the very task committed.
118. This discussion perhaps highlights one of the clear advantages of the use of statutory foundations of jurisdiction such as the
AD(JR) Act – legal error leads to review. It also highlights the clear fault-line of errors of law and errors of fact. Of course, some factual
matters, including states of mind or satisfactions can be jurisdictional[58]. Also, factual matters may raise legal questions and betray legal error. The nature of fact finding might betray an error of approach
of the kind described in Craig or Coal & Allied. There may be an entire absence of evidence to support the finding[59] or the decision may be “Wednesbury unreasonable”. But generally, fact finding and weighing of material and policy are the tasks of the administrator.
119. The above is, of course, an inadequate discussion of all aspects of relief under the prerogative (or constitutional) writs of
prohibition, mandamus and certiorari. Its purpose is to seek to expose the continuing essential role of jurisdictional error and
its distinction from non-jurisdictional error as the foundation for those writs[60].
120. The role of the injunction and declaration must be considered in the context of these underlying issues. The injunction is a
remedy available at common law[61] and in equity[62], it is a remedy constitutionally provided for[63] and statutorily provided for[64].
121. Equitable relief in the form of the injunction and declaration has played, and is playing, an important part in the development
of public law[65]. In particular, it is useful in ameliorating the effects of technicalities involved in the prerogative writs[66].
122. Equitable intervention is not tied to the foundations of relief of the prerogative writs. Important to the issue of such relief
will be the question of standing. I do not propose to analyse this in detail. Suffice it to say that, in the federal sphere, standing
is limited by, and to a significant degree subsumed within, the concept of matter[67]. However, standing in relation to the constitutional or prerogative writs is very wide[68].
123. Leaving standing to one side, what is the relevance of the distinction between jurisdictional and non-jurisdictional error in
the award of these remedies? To the extent that the “equity”[69] involves some alleged maladministration and breach of the law, it must be remembered that the two remedies do different things. An
injunction orders someone to do or to refrain from doing something. A declaration tells parties, in a binding way, what the law is
or that something has, or has not, in the circumstances, a particular status.
124. If an error of law is propounded as the “equity”, it will be necessary to assess whether there was, or is, authority to do that
which was done or is proposed and which is the subject of the injunction. If there was, or is, such authority, that is, if the error
was not jurisdictional, and especially if the authority comes from statute, by what “equity” does the court order that what is authorised
not be done? It is difficult to see in these circumstances any basis for injunctive relief.
125. Nevertheless, a declaration may lie whether or not a prerogative writ would lie[70]. Also, declarations have long been given as the sole relief, and modern superior court enabling statutes generally provide for this.
Declaratory relief should be all that is needed against the Crown. As the Privy Council said in 1915:
It is the duty of the Crown and of every branch of the Executive to abide by and obey the law. If there is any difficulty in ascertaining
it the Courts are open to the Crown to sue, and it is the duty of the Executive in cases of doubt to ascertain the law, in order
to obey it, not to disregard it[71].
126. If a declaration were granted and there was the threat of the executive continuing with the conduct, in the face of the statement
of the law (albeit covering non-jurisdictional error) an issue would arise as to review of the decision to persist with the conduct
as an abuse of power, recognising the obligation of the executive to obey the law. As Griffith CJ said in Melbourne Steamship & Co v Moorehead[72] (in the context of the conduct of litigation):
the old-fashioned traditional, and almost instinctive, standard of fair play to be observed by the Crown in dealing with subjects,
which I learned a very long time ago to regard as elementary,
127. Under the AD(JR) Act, many of these complication are swept away. There is a comprehensive collection of administrative law errors which are available
– some jurisdictional error others not under the “common law” classification.
s 39B(1A)(c) of the Judiciary Act, s 154(1) of the Patents Act and s 191 (1) of the TM Act.
128. Paragraph 39B(1A)(c) is in the following terms:
(1A) The original jurisdiction of the Federal Court of Australia also includes jurisdiction in any matter:
…
(c) arising under any laws made by the Parliament, other than a matter in respect of which a criminal prosecution is instituted or
any other criminal matter.
129. s 154(1) of the Patents Act is in the following terms:
(1) The Federal Court has jurisdiction with respect to matters arising under this Act.
…
130. s 191(1) of the TM Act is in the following terms:
(1) The Federal Court has jurisdiction with respect to matters arising under this Act.
131. These are provisions, especially s 39B(1A)(c), that are not well understood. Sections 154(1) and 191(1) are not limited to the
“appeals” in the original jurisdiction discussed earlier.
132. The meaning of “arising under” is wide. It does not merely mean a cause of action provided by statute or a directly disputed
federal issue (although these are obviously included). It includes a claim for common law or equitable relief in respect of, or over,
a right which owes its existence to federal law. This is a matter arising under federal law[73]. In LNC Industries v BMW[74]the property over which the parties were fighting comprised import quotas. The fight was about contractual and equitable rights and
obligations. The subject matter was a bundle of rights owing their existence to federal law.
133. The joint reasons of the High Court in LNC Industries v BMW also approved of what Dixon J had said in Federal Capital Commission v Laristan Building and Investment Co Pty Ltd[75]. Dixon J was dealing with Territory jurisdiction, but part of what he said related directly to the notion of “arising under” a law
of the Parliament. Dixon J said:
…It may well be that all claims of right arising under the law in force in the Territory come within this description, because
they arise indirectly as the result of the Seat of Government Acceptance Act 1909 (see sec 6), and the Seat of Government (Administration) Act 1910 (see secs 4 to 7 and 12). But it is at least clear that a claim to a right conferred by or under ordinances made by the Governor-General in Council under sec 12 of the Seat of Government (Administration) Act is a matter arising under an enactment of the Parliament.
[emphasis added]
134. So, there, Territory ordinances and claims to rights under Territory ordinances arose under the Commonwealth Act providing for
those ordinances.
135. In an administrative law context this may widen the reach of the Federal Court beyond “officers of the Commonwealth” under s
39B(1), if a decision is made to cause a matter to “arise under” a law of the Parliament.
136. In Greiner v The Independent Commission Against Corruption[76] the New South Wales Court of Appeal, whilst declining to issue prerogative writs, made declarations that the determination was wrong
in law.
137. A contrary view as to the availability of the declaration was taken in Punton v Minister of Pensions and National Insurance (No 2)[77] (which has been followed in England and Australia) to the effect that declaratory relief should not be given if the error be non-jurisdictional[78].
138. The power of declaratory relief under s 22 of the Federal Court of Australia Act and these provisions make any controversy which, in the wide sense referred to, arises under these Acts is within the jurisdiction
of the Court: eg Australian Solar Mesh Sales Pty Ltd v Anderson [2000] FCA 864; (2000) 101 FCR 1.
In Conclusion
139. This discussion demonstrates, I hope, that no practitioner can adequately practise in Australian federal law without a working
everyday knowledge of the fundamentals of federal jurisdiction and its Constitutional foundation and explains, I hope, the role and
powers of the administrator (executive) and the court in that Constitutional and statutory framework.
12 September 2004
Annexure A
The judicial power of the Commonwealth shall be vested in a Federal Supreme Court, to be called the High Court of Australia, and in
such other federal courts as the Parliament creates, and in such other courts as it invests with federal jurisdiction. The High Court
shall consist of a Chief Justice, and so many other Justices, not less than two, as the Parliament prescribes.
The Justices of the High Court and of the other courts created by the Parliament:
(i) shall be appointed by the Governor-General in Council;
(ii) shall not be removed except by the Governor-General in Council, on an address from both Houses of the Parliament in the same
session, praying for such removal on the ground of proved misbehaviour or incapacity;
(iii) shall receive such remuneration as the Parliament may fix; but the remuneration shall not be diminished during their continuance
in office.
The appointment of a Justice of the High Court shall be for a term expiring upon his attaining the age of seventy years, and a person
shall not be appointed as a Justice of the High Court if he has attained that age.
The appointment of a Justice of a court created by the Parliament shall be for a term expiring upon his attaining the age that is,
at the time of his appointment, the maximum age for Justices of that court and a person shall not be appointed as a Justice of such
a court if he has attained the age that is for the time being the maximum age for Justices of that court.
Subject to this section, the maximum age for Justices of any court created by the Parliament is seventy years.
The Parliament may make a law fixing an age that is less than seventy years as the maximum age for Justices of a court created by
the Parliament and may at any time repeal or amend such a law, but any such repeal or amendment does not affect the term of office
of a Justice under an appointment made before the repeal or amendment.
A Justice of the High Court or of a court created by the Parliament may resign his office by writing under his hand delivered to the
Governor-General.
Nothing in the provisions added to this section by the Constitution Alteration (Retirement of Judges) 1977 affects the continuance of a person in office as a Justice of a court under an appointment made before the commencement of those
provisions.
A reference in this section to the appointment of a Justice of the High Court or of a court created by the Parliament shall be read
as including a reference to the appointment of a person who holds office as a Justice of the High Court or of a court created by
the Parliament to another office of Justice of the same court having a different status or designation.
The High Court shall have jurisdiction, with such exceptions and subject to such regulations as the Parliament prescribes, to hear
and determine appeals from all judgments, decrees, orders, and sentences:
(i) of any Justice or Justices exercising the original jurisdiction of the High Court;
(ii) of any other federal court, or court exercising federal jurisdiction; or of the Supreme Court of any State, or of any other court
of any State from which at the establishment of the Commonwealth an appeal lies to the Queen in Council;
(iii) of the Inter-State Commission, but as to questions of law only;
and the judgment of the High Court in all such cases shall be final and conclusive.
But no exception or regulation prescribed by the Parliament shall prevent the High Court from hearing and determining any appeal from
the Supreme Court of a State in any matter in which at the establishment of the Commonwealth an appeal lies from such Supreme Court
to the Queen in Council.
Until the Parliament otherwise provides, the conditions of and restrictions on appeals to the Queen in Council from the Supreme Courts
of the several States shall be applicable to appeals from them to the High Court.
75 Original jurisdiction of High Court
In all matters:
(i) arising under any treaty;
(ii) affecting consuls or other representatives of other countries;
(iii) in which the Commonwealth, or a person suing or being sued on behalf of the Commonwealth, is a party;
(iv) between States, or between residents of different States, or between a State and a resident of another State;
(v) in which a writ of Mandamus or prohibition or an injunction is sought against an officer of the Commonwealth;
the High Court shall have original jurisdiction.
The Parliament may make laws conferring original jurisdiction on the High Court in any matter:
(i) arising under this Constitution, or involving its interpretation;
(ii) arising under any laws made by the Parliament;
(iii) of Admiralty and maritime jurisdiction;
(iv) relating to the same subject-matter claimed under the laws of different States.
With respect to any of the matters mentioned in the last two sections the Parliament may make laws:
(i) defining the jurisdiction of any federal court other than the High Court;
(ii) defining the extent to which the jurisdiction of any federal court shall be exclusive of that which belongs to or is invested
in the courts of the States;
(iii) investing any court of a State with federal jurisdiction.
The Parliament may make laws conferring rights to proceed against the Commonwealth or a State in respect of matters within the limits
of the judicial power.
…
[1] See Renfree The Executive Power of the Commonwealth of Australia (Legal Books, 1984). As to the lack of an accepted definition, see Davis v The Commonwealth [1988] HCA 63; (1988) 166 CLR 79, 92-93 and 107 and M Sunkin and S Payne The Nature of the Crown: A Legal and Political Analysis (Oxford 1999) pp 78-87.
[15] (2001) 117 FCR 424 at [29]:
[17] From Chevron USA Inc v Natural Res Def Council, Inc [1984] USSC 140; 467 US 837 (1984) which held that, subject to statute, courts should accord deference to reasonable administrative interpretation by agencies
of ambiguous statutory provisions.
[28] Quin at 35-36; Minister for Immigration and Multicultural Affairs v Yusuf (2001) 206 CLR 323 at [73]
[33] Craig, supra at 179. This “list” is not exhaustive: Yusuf, supra at 21 [82].
[34] Though sometimes expressed as “authority to decide”: Jackson v Sterling Industries [1987] HCA 23; (1987) 162 CLR 612, 627, this needs to be seen in the light of the importance of non-colourable assertion of claims that the matter is within the court’s
authority to deal with. The task is adjudication and decision, not just decision.
[35] Craig, supra at 179-180
[36] especially 184 CLR at 176-180
[39] Coal and Allied Operations Pty Limited v Australian Industrial Relations Commission (2000) 203 CLR 194, 208-209
[40] A tribunal, by orthodox jurisprudence by reference to Ch III and the judicial power of the Commonwealth; but one which would plainly
be characterised as quasi-judicial.
[41] Coal and Allied, supra at 208-209
[43] referring to R v War Pensions Entitlement Appeal Tribunal; Ex parte Bott (1933) 50 CLR 228 at 242-243
[44] referring to R v War Pensions Entitlement Appeal Tribunal; Ex parte Bott (1933) 50 CLR 228 at 242-243
[46] Coal & Allied, supra at 209; to be contrasted with the view of Kirby J at 226-230
[47] As to which, see generally the discussion in Enright Federal Administrative Law (2001) p 377.
[49] As in Craig itself, since Kirby J at [80] did see in the Act a contemplation that some errors of law would be within jurisdiction; and see the
examples of dissents as to this question given by Kirby J in Craig at ftnt 184: R v Gray; Ex parte Marsh [1985] HCA 67; (1985) 157 CLR 351 at 373 per Mason J; at 383 per Deane J; at 392 per Dawson J; Re Queensland Electricity Commission; Ex parte Electrical Trades Union of Australia [1987] HCA 27; (1987) 61 ALJR 393 at 398; [1987] HCA 27; 72 ALR 1 at 11 per Brennan J; at 399 and 23 per Deane J; Public Service Association (SA) v Federated Clerks’ Union [1991] HCA 33; (1991) 173 CLR 132 at 152-153 per Deane J; at 165-165 per McHugh J
[50] At least within the federal sphere, though Kable is relevant here.
[51] See Craig, supra at 179
[52] The “sphere” within which there exists a privilege to bind even though some error or irregularity has occurred: Rubenstein Jurisdiction and Illegality (1965) at p 18.
[56] Other courts have made sharper, more categoric use of the curial/administrative distinction: see Aronson and Dyer Judicial Review of Administrative Action (2nd Ed) p 172 ftnt 109 and cases there cited.
[57] See Aronson and Dyer op. cit. p 169; and Dalgety Wine Estates Pty Limited v Rizzon [1979] HCA 41; (1979) 141 CLR 552, 574-575; but of course, as Aronson and Dyer themselves point out, this was the case in Anisiminic itself.
[59] Australian Broadcasting Tribunal v Bond (1990) 170 CLR 321, 355-356; and see Minister v Rajamanikham [2002] HCA 32.
[60] With the exception of course of certiorari for non-jurisdictional error of law, on the face of the record, as to which see generally:
Shawe and Gwynne “Certiorari and Error on the Face of the Record” (1997) 71 ALJ 356
[61] Meagher, Gummmow and Lehane Equity: Doctrines and Remedies (3rd Ed) 1992 pp 539-541
[62] Meagher et al op. cit. pp 531 ff
[65] Bateman’s Bay Local Aboriginal Land Council v The Aboriginal Community Benefit Fund Pty Limited (1998) 194 CLR 247; Truth About Motorways Pty Limited v Macquarie Infrastructure Investment Management Limited [2000] HCA 11; (2000) 200 CLR 591, 611
[66] Bateman’s Bay, supra at 257; Enfield, supra at 157-158
[67] Bateman’s Bay , supra at 202; Truth About Motorways, supra at 611
[68] Bateman’s Bay, supra at 263, 270
[69] See the use of the expression in this context in Bateman’s Bay, supra at 257 [25].
[71] Eastern Trust Company v McKenzie Mann & Co Limited supra at 759; and see also P & C Cantarella v Egg Marketing Board [1973] 2 NSWLR, 383-384 (per Mahoney J, as he then was, sitting at first instance)
[78] See generally Aronson and Dyer op. cit. pp 651-652
