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Court of Appeal of New Zealand |
Last Updated: 10 September 2014
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IN THE COURT OF APPEAL OF NEW ZEALAND
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BETWEEN
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Applicant |
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AND
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Respondent |
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Hearing: |
11 August 2014 |
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Court: |
O’Regan P, Randerson and Harrison
JJ |
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Counsel: |
R Wallis and T A Huthwaite for Applicant
M T Lennard for Respondent |
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Judgment: |
JUDGMENT OF THE COURT
B We grant an extension of time to appeal.
____________________________________________________________________
REASONS OF THE COURT
(Given by O’Regan
P)
Introduction
[1] This is an application for an extension of time to appeal against a decision of the High Court, upholding a decision of the Assistant Commissioner of Trade Marks.[1] The notice of appeal against the decision of the High Court was filed one day out of time. The respondent does not object to an extension of time, given the minimal delay and lack of any prejudice to the respondent, but raises a jurisdictional point.
Which appeal provision applies?
[2] The argument raised by the respondent is that any appeal against a decision of the High Court on appeal from the Commissioner of Trade Marks must be brought under s 67 of the Judicature Act 1908, and therefore leave to appeal must be obtained. The applicant filed an appeal under s 66 of the Judicature Act, and maintained that it is the applicable appeal provision. Under s 66, the appeal is as of right, and no leave is required. This case is another example of the difficulties arising from inconsistent and incomplete provisions in legislation dealing with appeals to this Court. The issue before us could easily have been resolved by an appeal provision referring specifically to s 66 or s 67.[2]
[3] Section 66 provides a general right of appeal from any “judgment, decree, or order” of the High Court. The High Court decision to which the intended appeal relates was clearly a “judgment” for the purposes of that provision.
[4] Section 67 deals with appeals against decisions of the High Court on appeal “from an inferior court”. Under s 67, leave to appeal must be obtained either from the High Court or, if that Court refuses leave, this Court. If the High Court decision is an appeal from an inferior court, s 67 prevails over s 66.[3]
Issue
[5] The issue before us is therefore reduced to the question: is the decision of the Commissioner of Trade Marks in the present case a decision of an “inferior Court”?
Inferior court
[6] The term “inferior Court” is defined in s 2 of the Judicature Act as: “any court of judicature within New Zealand of inferior jurisdiction to the High Court”.
[7] The term “court of judicature” is not defined in the Judicature Act. A helpful definition is provided in the judgment of Lord Scarman in Attorney-General v British Broadcasting Corporation as follows:[4]
I would identify a Court in (or “of”) law, i.e. a court of judicature, as a body established by law to exercise, either generally or subject to defined limits, the judicial power of the state. In this context judicial power is to be contrasted with legislative and executive (i.e. administrative) power. If the body under review is established for a purely legislative or administrative purpose, it is part of the legislative or administrative system of the state, even though it has to perform duties which are judicial in character. Though the ubiquitous presence of this state makes itself felt in all sorts of situations never envisaged when our law was in its formative stage, the judicial power of the state exercised through judges appointed by the state remains an independent, and recognisably separate, function of government. Unless a body exercising judicial functions can be demonstrated to be part of this judicial system, it is not, in my judgment, a court in law.
Relevant factors
[8] This Court considered a similar issue in relation to a decision of the New Zealand Law Practitioners’ Disciplinary Tribunal (the Disciplinary Tribunal) in Waikato/Bay of Plenty District Law Society v Harris (Harris).[5] In that case, Chambers J (in a judgment with which the other members of the Court agreed)[6] identified four factors which are relevant to the determination of the issue.[7] We will consider each of these factors in turn.
[9] The first is whether the members of the relevant body were appointed by the State.[8] In this case the Commissioner is appointed by the State. However, the Commissioner is not appointed by the Governor-General or a Minister, but the Chief Executive of a Government department: the Ministry of Business, Innovation and Employment (the Ministry).[9] The Commissioner is an employee of the Ministry, employed under the State Sector Act 1988. In Harris, Chambers J considered it significant that the members of the Disciplinary Tribunal were appointed by the New Zealand Law Society, not by the State. In the present case the fact that the Commissioner is not appointed by a sector group like the New Zealand Law Society is a factor counting in favour of the respondent’s position. But the fact that he or she is appointed not as an independent officer but as an employee of the Ministry favours the applicant’s position.
[10] The second factor is whether the Commissioner fulfils a public function.[10] In Harris, Chambers J considered that the functions of the Disciplinary Tribunal could be contrasted with the public functions of the Employment Tribunal, which determined disputes between parties to employment contracts; disputes that would otherwise be dealt with by the ordinary courts. In the present case the Commissioner fulfils a public function in relation to the registration of trade marks, but it is not clear that the function would, if not exercised by the Commissioner, fall to be exercised by the courts. An applicant for registration of a trade mark is seeking a status conferred by an Act of Parliament which has always been entrusted to a civil servant like the Commissioner. It is notable that the Commissioner does not undertake roles traditionally assigned to a court such as resolving disputes in relation to domain names, resolving disputes about alleged infringements of trade marks and resolving border control issues.
[11] Counsel for the respondent, Mr Lennard, argued that the function of the Commissioner in relation to registration involves the resolution of disputes between a party seeking registration of a trade mark and a party opposing that registration. While we agree that dispute resolution is normally a function undertaken by the courts, the conferral of the status of registration of a trade mark has never been a court function. On balance we see this as a neutral factor.
[12] The third factor identified by Chambers J in Harris was whether the body had power to enforce any orders it makes.[11] Counsel for the applicant, Mrs Wallis, emphasised that in the present case the Commissioner does not have power to enforce orders, except those pertaining to the maintenance of the register. She pointed to s 166 of the Trade Marks Act 2002, which provides that any award of costs by the Commissioner could be enforced only with the leave of the court. Mr Lennard argued that the fact that the Commissioner can register a trade mark is essentially the enforcement of an order. We disagree. Rather, it is conferring the statutory status provided for under the legislation. We agree with Mrs Wallis’ submission that the fact that costs orders cannot be enforced is a factor which favours the applicant’s view.
[13] The fourth factor identified by Chambers J in Harris was whether the relevant statutory provisions referred to proceedings before the body as “judicial proceedings”.[12] The answer in the present case is “no”. However, s 160(5) of the Trade Marks Act provides that evidence given on oath before the Commissioner “is deemed to be given in a judicial proceeding”. There was a similar provision in the legislation under consideration in Harris, which conferred immunity on witnesses and counsel in relation to proceedings before the Disciplinary Tribunal “as if they were proceedings in a Court of law.”[13] Chambers J considered this implied that such proceedings were not in fact proceedings in a court of law.[14] We consider the same analysis applies here: if the proceedings before the Commissioner were in fact judicial proceedings, there would seem to be no need for a provision deeming them to be judicial proceedings.
[14] Mr Lennard pointed out that the processes adopted by the Commissioner in relation to a trade mark registration dispute are consistent with those adopted by courts exercising judicial authority: there are procedural documents akin to pleadings in court cases; the imposition of time periods for compliance with steps in the process; the acceptance of evidence by way of affidavit or statutory declaration; a hearing at which submissions are made by the disputants and a written decision containing reasons, albeit only if the parties request one.[15] The Commissioner can require the production of documents but cannot summon witnesses.[16] We accept that these factors support the respondent’s position, though the lack of power to summon witnesses and the fact that a written decision is required only if requested diminish the strength of that support somewhat.
Other factors
[15] Mr Lennard also argued that the fact that s 170 of the Trade Marks Act says that any adjudication by the Commissioner is final, subject only to a right of appeal, is consistent with the Commissioner being an inferior court. Mr Lennard referred to the decision of this Court in Osborne v Auckland City Council, in which this Court said:[17]
[32] For completeness we note there are also statutes which are silent on the question of a further appeal from the High Court. In such cases the provisions of s 66 or s 67 of the Judicature Act will apply. Examples of such statutes are the Copyright Act 1994 and the Trade Marks Act 2002.
[16] Mr Lennard argued that this supported his position that s 67 applied to appeals from the High Court on appeal from the Commissioner under the Trade Marks Act. We see this as a neutral factor because the Court in Osborne referred to both ss 66 and 67, without indicating which would apply to the present situation. Contrary to Mr Lennard’s submission, McGechan on Procedure says: “Leave is only required where an enactment provides for it”.[18]
[17] Mrs Wallis highlighted the difference between s 97(4) of the Patents Act 1953, which provides for the High Court decision to be “final” and s 173 of the Trade Marks Act which says nothing about the finality of a High Court decision. She argued:
- (a) if s 67 automatically applied where an Act was silent as to the finality of the decision of the High Court, s 98 of the Patents Act, which requires that leave be obtained for some appeals to this Court but not others, would be superfluous; and
- (b) if the Patents Act provides that a decision of the High Court shall be final but the Trade Marks Act does not, it must be presumed leave is not required.
[18] The respondent submitted where a specific Act is silent as to further appeal, s 67 of the Judicature Act applies. He said that is precisely the point of the section.
[19] We do not see either argument as decisive. The silence in the Trade Marks Act is enigmatic and does not, in our view, give any indication of Parliament’s intention as to the nature of appeals to this Court under that Act.
[20] Mrs Wallis argued that most of the functions of the Commissioner are legislative or administrative, which supported her proposition that the limited judicial role undertaken by the Commissioner did not mean that he or she was an inferior court for the purposes of s 67. The functions of the Commissioner are set out in s 175A of the Trade Marks Act. That section says:
175A Functions of Commissioner
The functions of the Commissioner are, in accordance with this Act and the regulations, to —
(a) examine applications for the registration of trade marks, consider applications for the alteration, renewal, assignment, revocation, declaration of invalidity, and cancellation of registered trade marks and make other decisions relating to the examination and registration of trade marks; and
(b) provide preliminary advice and search advice to persons who propose to apply for the registration of trade marks; and
(c) appoint and alter the advisory committee under section 177; and
(d) provide administrative support to the advisory committee; and
(e) maintain the register of trade marks and carry out other duties and responsibilities relating to the register of trade marks; and
(f) perform or exercise other functions, duties, and powers conferred on him or her by this Act and the regulations.
[21] Assistant Commissioners have the same functions, duties and powers of the Commissioner.[19]
[22] Mrs Wallis pointed out that most of the functions contained in s 175A are administrative functions, involving the maintenance of the trade marks register, even though the Commissioner may be required to act judicially in performing some of those functions. We agree that s 175A is an indicator that the Commissioner is primarily an administrative rather than a judicial officer. Mrs Wallis also highlighted the fact there is no requirement for the Commissioner to be legally trained. We accept that one could expect such a requirement for an officer fulfilling the role of a court.
[23] Mrs Wallis also argued that the Commissioner did not fit within the definition of “inferior Court” in the Inferior Courts Procedure Act 1909.[20] Mr Lennard pointed out that this does not inform the question of what is an inferior court for the purposes of the Judicature Act, which has its own definition. We accept that submission.
[24] Mrs Wallis also attached some importance to the fact that many appeals from High Court decisions on appeal from the Commissioner in relation to a trade mark registration disputes have been considered and determined by this Court without leave being granted. She noted that in Austin, Nichols & Co Inc v Stichting Lodestar, Elias CJ, giving the judgment of the Supreme Court, referred to the obligation of this Court when considering such an appeal “to form its own assessment as a matter of fact and agree on a general appeal from the High Court under s 66 of the Judicature Act”.[21] Mrs Wallis said this indicated an acceptance by the Supreme Court that s 66 was the appropriate appeal provision in relation to cases of this type. We agree that this reference supports the applicant’s case, but it must be noted that there was no issue before the Supreme Court as to the appeal provision, so this observation was not in any sense a determination of the issue we now have before us.
[25] Mr Lennard cited in support of the respondent’s position a decision of the England and Wales High Court, Future New Developments Ltd v B & S Patente und Marken GmbH.[22] In that case, his Honour Judge Hacon, sitting as the Intellectual Property Enterprise Court, found that the UK Intellectual Property office was a “court of a Member State” for the purposes of art 24 of Council Regulation (EC) 44/2011 (also known as the Brussels I Regulation), a regulation of the Council of the European Union.[23] We do not consider that case provides any guidance on the issue before us. It deals with a different situation in a markedly different legislative context.
Conclusion
[26] Drawing all these threads together, we conclude that the better view is that the decision of the Commissioner in this case was not a decision of an inferior court and that s 67 does not therefore apply to the present appeal. While we accept that the process undertaken by the Commissioner involved some hallmarks of a court, we consider that the broader powers of the Commissioner contained in s 175A and the Commissioner’s status as an employee of a Ministry, rather than an independent officer, tell against a finding that the Commissioner is a court of judicature. We conclude therefore that the appeal was properly brought under s 66.
Result
[27] As there is no objection to the granting of an extension of time to appeal in the event that the appeal is properly brought under s 66, we grant the extension sought by the applicant.
Costs
[28] The applicant is entitled to costs on a band A basis plus usual disbursements.
Solicitors:
Baldwins Law
Limited, Auckland for Applicant
Ellis IP Limited, Wellington for
Respondent
[1] Daimler AG v Sany Group Co Ltd [2014] NZHC 532. The decision that was subject to the appeal to the High Court was made by an Assistant Commissioner under delegation from the Commissioner of Trade Marks. For ease of reference we will refer to the Commissioner from now on, with the intention that all references are intended to refer also to Assistant Commissioners.
[2] See the discussion in McGechan on Procedure (online looseleaf ed. Brookers) at [J67.03].
[3] Osborne v Auckland City Council [2012] NZCA 199, (2012) 21 PRNZ 76 at [21].
[4] Attorney-General v British Broadcasting Corporation [1981] AC 303 (HL) at 359–360.
[5] Waikato/Bay of Plenty District Law Society v Harris [2006] 3 NZLR 755 (CA) [Harris].
[6] At [95] per Glazebrook and O’Regan JJ.
[7] At [148]–[151].
[8] At [148].
[9] Trade Marks Act 2002, s 175.
[10] At [149].
[11] At [150].
[12] At [151].
[13] Law Practitioners Act 1982, s 127.
[14] Harris, above n 5, at [151].
[15] Trade Marks Act, ss 49 and 160 and Trade Marks Regulations 2003, pts 1, 4 and 8.
[16] Trade Marks Regulations, reg 31.
[17] Osborne v Auckland City Council, above n 3.
[18] At [HR20.22.01].
[19] Section 175B.
[20] Section 2.
[21] Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [19].
[22] Future New Developments Ltd v B & S Patente und Marken GmbH [2014] EWHC 1874 (IPEC).
[23] At [22].
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