Australian LinkedIn Pty Ltd v Registrar of Trade Marks

Original Word Document (104.2 KB) Federal Court of Australia

Australian LinkedIn Pty Ltd v Registrar of Trade Marks [2026] FCA 469

| File number: | ACD 106 of 2025 |

| Judgment of: | OWENS J |

| Date of judgment: | 21 April 2026 |

| Catchwords: | PRACTICE AND PROCEDURE – application to dispense with the requirement in rule 4.01(2) of the Federal Court Rules 2011 (Cth) that a corporation must not proceed in the Court other than by a lawyer – application by director and shareholder to represent the company – where the company does not have the means to retain lawyers – where no evidence of the capacity of the shareholders to fund the proceedings was provided – where the proceedings will either be complicated unnecessarily without a lawyer, or their complexity will require the assistance of a lawyer – application refused |

| Legislation: | A dmi n istrative Decisions (Judicial Review) Act 1977 (Cth)

A ustralian Human Rights Commission Act 1986 (Cth)

Federal Court of Australia Act 1976 (Cth) ss 20(1), 20(1A), 37M

Racial Discrimination Act 1975 (Cth)

Trade Marks Act 1995 (Cth) ss 31, 33, 35, 67, 191, 193

Federal Court Rules 2011 (Cth) rr 1.34, 4.01(2)

Anti-Discrimination Act 1977 (NSW)

Equal Opportunity Act 2010 (Vic) |

| Cases cited: | Apple Inc v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511

Basetec Services Pty Ltd v CPB Contractors Pty Ltd [2017] FCA 510

Damjanovic v Maley [2002] NSWCA 230; (2002) 55 NSWLR 149

Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720

Termi-Mesh Australia Pty Ltd v Josu Manufacturing Pty Ltd [1999] FCA 1241 |

| Division: | General Division |

| Registry: | Australian Capital Territory |

| National Practice Area: | Intellectual Property |

| Sub-area: | Trade Marks |

| Number of paragraphs: | 63 |

| Date of last submissions: | 2 March 2026 |

| Date of hearing: | Determined on the papers |

| Counsel for the Appellant: | Dr Mahmoud appeared on behalf of The Australian LinkedIn Pty Ltd |

| Solicitor for the Respondent: | Australian Government Solicitor |
ORDERS

| ACD 106 of 2025 |

| BETWEEN: | THE AUSTRALIAN LINKEDIN PTY LTD

Appellant | |
| AND: | REGISTRAR OF TRADE MARKS

Respondent | |

| order made by: | OWENS J |
| DATE OF ORDER: | 21 APRIL 2026 |
THE COURT ORDERS THAT:

1. Paragraph 3 of the interlocutory application filed on 22 December 2025 is dismissed with costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

OWENS J:

1 On 21 November 2025 proceedings were commenced in this Court, at the heart of which was an appeal against a decision made by a delegate of the Registrar of Trade Marks to reject an application for the registration of a trade mark, pursuant to section 33 of the Trade Marks Act 1995 (Cth), on 4 November 2025. Both The Australian LinkedIn Pty Ltd and Dr Tawfek Mahmoud were named as appellants. Neither the company nor Dr Mahmoud were represented by a lawyer.

2 Immediately, various issues in relation to the constitution, scope, and substance of the proceedings were raised by the lawyers for the persons and entities originally named as respondents (and who now act for the present respondent). It is sufficient for present purposes to observe that, on 22 December 2025, an amended notice of appeal was filed which addressed some, but far from all, of the issues that had been raised.

3 There is now only one appellant: the company. It still does not have a lawyer. On every occasion that the proceedings have been listed for case management thus far, I have dispensed with the operation of rule 4.01(2) of the Federal Court Rules 2011 (Cth) in relation to the company, and granted leave for Dr Mahmoud to represent it at the relevant case management hearing and for limited other purposes. It has been made clear to Dr Mahmoud, however, that if the company wished to proceed generally in the Court other than by a lawyer, a properly articulated and supported application would need to be made.

4 The company has now filed an interlocutory application pursuant to which it seeks (inter alia) leave to proceed other than by a lawyer, with Dr Mahmoud to represent it. The company has filed several written submissions prepared by Dr Mahmoud, as well as an affidavit sworn by him. The affidavit contains both evidence and submissions. The respondent filed a written outline of submissions.

5 The parties have all agreed that the application may be determined on the papers.

Background

6 Dr Mahmoud has a PhD in Electrical Engineering from the University of Sydney. He is a Chartered Engineer and Fellow of Engineers Australia, and a Certified Practising Project Manager accredited by the Australian Institute of Project Management. He has more than 23 years of professional experience in engineering and project management across multiple sectors. He does not have any legal training, experience or qualifications.

7 Dr Mahmoud is one of three shareholders and directors of the company. He says that the company was incorporated for the purpose of providing free engineering advisory, consultation, communication and related professional services. Dr Mahmoud gave evidence that the company has no substantial assets, conducts no income producing activities, and cannot afford paid legal representation.

8 On 15 March 2025 Dr Mahmoud applied to register a series trade mark under the Trade Marks Act in Class 37, as follows:

The Australian LinkedIn; The Australian Linked; The Australian Link; LinkedIn Australia; Australian LinkedIn; The Australia Link; LinkedIn Australian; Australia LinkedIn; Link Australia; Linked Australian; The Aussie LinkedIn; The Australian Network; Linked Australia; Australia Link; The Aussie Link; Linking Australia; Australian Link; World Links

9 On 22 March 2025, Dr Mahmoud requested that the representations of the series trade mark be amended, and an amendment was made on 18 April 2025. The amendment was limited to the removal of one representation and the insertion of a hyphen to break up ‘LinkedIn’ in a small number of the representations.

10 The application was then examined under section 31 of the Trade Marks Act, and on 17 June 2025 the examiner issued a report identifying four grounds of rejection. They were:

(a) first, that the trade marks were not distinctive;

(b) secondly, that the goods and services were not properly classified;

(c) thirdly, that the representations were not a valid series mark; and

(d) fourthly, that the trade marks comprising the (invalid) series were deceptively similar to trade marks registered by other persons in respect of similar services or closely related goods.

11 Dr Mahmoud then commenced proceedings in this Court purporting to appeal from the examiner’s report. Upon it being explained to Dr Mahmoud that that course was not open to him, he eventually discontinued those proceedings. He then made submissions to the Registrar of Trade Marks that, pursuant to section 33 of the Trade Marks Act, his application should be accepted.

12 On 14 August 2025 Dr Mahmoud applied to amend the series trade mark the subject of his application back to its original form. On 21 August 2025, he filed another amendment application (this time being contingent on a finding that the trade mark in the form of the latest amendment application was found not to be registerable).

13 On 17 September 2025 Dr Mahmoud assigned the trade mark application to the company.

14 On 4 November 2025 a delegate of the Registrar of Trade Marks made his decision. In short, he allowed the first amendment application (save in one respect), but otherwise rejected the application. The application was rejected on the grounds that the trade mark was not a valid series mark. Although, in light of that finding, it was not necessary for the delegate to consider the other grounds identified by the examiner, he also went on to find that the trade marks were deceptively similar to another registered trade mark. The delegate rejected the contingent amendment application, on the basis that the application could not thereby be saved even if the amendment was allowed.

15 It was following that decision that the present proceedings in this Court were commenced. I have already mentioned that issues raised by the respondent in relation to the original form of the proceedings led to an amended notice of appeal being filed.

16 That amended pleading is a document of some 50 pages. It is a discursive document, which travels well beyond a statement of the grounds upon which it is contended the trade mark application should be accepted, and the rejected amendments allowed. Moreover, the claims for relief, and the grounds upon which relief is said to be available, are significantly wider than might ordinarily be expected in proceedings brought pursuant to section 35 and 67 of the Trade Marks Act (I will make no further reference to section 67 in what follows, but the same observations apply). It is not appropriate that I form a view at this stage about the adequacy of that document to define properly the issues in the proceedings. I will return to identify particular features of that document insofar as they are relevant to the disposition of this application in due course.

17 The interlocutory application by which the company sought the order permitting it to be represented by Dr Mahmoud also sought orders:

(a) to have the proceedings determined by a Full Court of this Court; and

(b) for the proceedings to be determined on the papers.

18 In relation to the application that the proceedings be determined by a Full Court, section 20(1) of the Federal Court of Australia Ac t 1976 (Cth) provides that the original jurisdiction of the Court (in which, as I explain later, these proceedings have been brought) shall be exercised by a single judge. (I also note that, in addition, pursuant to section 193 of the Trade Marks Act, the relevant jurisdiction is to be exercised by a single judge.) Pursuant to section 20(1A), the Chief Justice may direct that a matter in the original jurisdiction of the Court shall be exercised by a Full Court, if it is of sufficient importance. How that provision interacts with section 193 of the Trade Marks Act is not necessary to consider. The Chief Justice has made no such direction in respect of these proceedings (and in circumstances where I can see no reason why she would consider doing so, I have not raised the matter with her). In those circumstances, at the case management hearing on 6 February 2026, I dismissed that application by the company.

19 Insofar as the request that the proceedings be determined on the papers, I have not yet determined that application one way or the other. Whether that is appropriate is likely to depend on a range of matters, and I will consider it once the contours of this litigation, including the question of representation of the company, are better defined.

Principles

20 Rule 4.01(2) of the Rules provides that a “corporation must not proceed in the Court other than by a lawyer”. Rule 1.34, however, provides that the Court may dispense with compliance with any of the Rules.

21 The type of considerations that will commonly be relevant to the exercise of the discretion on such an application have been helpfully summarised in Basetec Services Pty Ltd v CPB Contractors Pty Ltd [2017] FCA 510 at 8:

The exercise of the Court’s discretion pursuant to r 1.34 in relation to r 4.01(2), is to be exercised by reference to “all relevant considerations”: Pharm - a - Care Laboratories Pty Ltd v The Commonwealth (No 12) [2012] FCA 289 at [18]. The authorities indicate the variety of matters which may bear upon the exercise of the discretion in a given case. These include:

(a)    the financial capacity of the company and those standing behind it and whether a lack of financial capacity would inhibit a company from obtaining legal representation: Deputy Commissioner of Taxation v Compumark Pty Ltd [2012] FCA 583 at [19]-[20]; Termi - Mesh Australia Pty Ltd v Josu Manufacturing Pty Ltd [1999] FCA 1241 at [13]; Worldwide Enterprises Pty Ltd v Silberman [2009] VSC 165 at [20];

(b)    the factual complexities of the case and the capacity of the proposed representative to conduct it effectively having regard to the skills, training, qualifications and experience of that representative: Damjanovic v Maley (2002) 55 NSWLR 149 at [77]; Compumark at [19], Termi - Mesh at [13];

(c)    the overarching purpose of the civil practice and procedure provisions specified in s 37M of the Federal Court of Australia Act 1976 (Cth) (the FCA Act) and the effect on the achievement of that purpose if the company proceeds with, or without, legal representation: Australian Competition and Consumer Commission v Adata (V ic) Pty Ltd (N o 2) [2015] FCA 272; Compumark at [20]; Silberman at [20];

(d)    the ability of the proposed representative to exercise the objectivity expected of a legal practitioner: Pacific Air Freighters (Qld) Pty Ltd v Toller [2000] FCA 0343; (2000) 171 ALR 519 at [11];

(e)    whether a lack of available disciplinary measures in relation to the persons seeking to represent the company will affect the administration of justice: Compumark at [20]; Damjanovic at [76];

(f)    the manner in which the case has progressed to date and the manner in which it may progress without the party having legal representation: Compumark at [20]; Silberman at [20];

(g)    when the company in question is a respondent, a more liberal approach to the exercise of the discretion may be warranted: Termi - Mesh at [14].

22 In Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720 at [82], Beach J observed that “[g]enerally speaking the Court should be cautious before permitting a non-lawyer to appear and represent a corporation, but the guiding principle is the attainment of justice”. That is consistent with the observation of the New South Wales Court of Appeal in Dam janovic v Maley [2002] NSWCA 230; (2002) 55 NSWLR 149 at [83]:

What runs through all of the authorities as the guiding principle in the exercise of the discretion is the public interest in the attainment of the ends of justice. The public has an interest in the effective, efficient and expeditious disposal of litigation in the courts. As a general rule this can best be achieved by parties employing qualified lawyers.

Consideration

23 The company emphasised various considerations said to justify the exercise of the discretion to permit the company to be represented by Dr Mahmoud.

24 Some things are clear. There is no question that the company has authorised Dr Mahmoud to act for it; there is in evidence a resolution of the board, signed by all three directors, to that effect. That fact, coupled with the company’s circumstances generally, means that I do not need to be concerned about protecting the interests of the company’s other shareholders (because they are one and the same as the directors) or its employees, creditors and the like (because there are none). Nor is there any conflict between the interests of Dr Mahmoud and the company.

25 It is also clear that the company does not have any material assets and does not generate any income. In that sense, it does not have the means to retain lawyers. The cases make clear, however, that it may also be relevant to look to the capacity of those standing behind a company to fund legal representation: see, e.g., Termi-Mesh Australia Pty Ltd v Josu Manufacturing Pty Ltd [1999] FCA 1241 at 13.

26 The company did not adduce any evidence concerning the ability of its shareholders to fund legal representation for it. It had the opportunity to put on evidence after the respondent raised that issue, and it did file an affidavit of Dr Mahmoud. But it chose not to adduce any evidence on that topic. Rather, Dr Mahmoud simply responded by saying that any suggestion that “directors must personally fund litigation is inconsistent with corporate separateness and unsupported by authority” and observed that the “statutory right of appeal is conferred upon” the company.

27 Plainly enough there is no requirement that those who stand behind a company fund litigation brought by their company. But that does not mean that their ability to do so may not be a relevant consideration in the exercise of the discretion (and the authorities make clear it is). So to conclude does not involve any inconsistency with the separate legal personality that a company has in law from its members. If nothing else, a company’s ability to raise capital (whether debt or equity) is an aspect of its financial capacity. But more than that, in circumstances where shareholders would stand to benefit (whether through augmentation of the value of their shareholding, or in some other way) from any success that the company may have in litigation, it is not irrelevant also to have regard to their ability and willingness to fund the litigation when assessing the overall interests of justice.

28 In terms of what the evidence disclosed about the relationship between Dr Mahmoud (and the other shareholders) and the company, that might be relevant to this topic, it is this:

(a) It is evidently a small, closely held, company. There are only three shareholders, two of whom live at the same address.

(b) Because it has no assets, and generates no income, presumably it is the shareholders (or some of them) who perform the work necessary to offer the company’s “engineering consultancy, technical advisory, professional communication services, and related advertising and informational services”. Certainly, it is Dr Mahmoud who appears to have done all of the work in relation to applying for registration of the trade mark on behalf of the company.

(c) The evidence does not disclose the circumstances in which Dr Mahmoud came to assign the trade mark application to the company, or the reasons he did so. There is no suggestion that he did so pursuant to some pre-existing obligation. Given the company’s lack of assets and ability to generate income, I would infer that the transfer was made other than for monetary consideration (or for only nominal consideration). The inescapable inference is that Dr Mahmoud chose to assign the trade mark application to the company because he considered it to be to his advantage that the company, rather than he personally, would own the relevant intellectual property.

29 In all of those circumstances, I consider it to be significant that the company chose not to adduce any evidence concerning the ability of Dr Mahmoud (or the other shareholders) to fund legal representation for the company. The company is evidently a corporate vehicle through which the shareholders choose to conduct some of their activities and hold certain assets (as they are entitled to do). But that signifies a close alignment between the interests of the shareholders and the activities of the company. Their ability to fund legal representation for the company is, in those circumstances, highly relevant to the exercise of my discretion.

30 Here, however, there is simply no evidence of the capacity of Dr Mahmoud or the other two shareholders to fund legal representation for the company. It follows that I do not know whether or not a refusal of leave will mean that the company is unable to prosecute the proceedings. (The references in Dr Mahmoud’s evidence to a refusal of leave preventing the company from prosecuting the proceedings are read most naturally as premised on the validity of the asserted impropriety of any suggestion that the shareholders might be expected to fund the company’s legal representation.) It follows that it is quite possible that, if leave is not granted, the company will be unable to prosecute the proceedings.

31 The next matter that the company relied on was the complexity of the proceedings, which Dr Mahmoud described in the following way:

The appeal raises issues of exceptional complexity and public importance, involving an evidentiary records exceeding 9,000 pages, multiple related trade mark applications, and substantial allegations of legal error, denial of procedural fairness, improper exercise of power, and failure to consider relevant material. It also raises arguable issues under the Administrative Decisions (Judicial Review) Act 1977 and the Trade Marks Act 1995, including misapplication of statutory provisions and procedural irregularities in the administration of registration services.

32 I do not think that that is a consideration that assists the company.

33 For one thing, to a very significant extent, the complexity of the proceedings appears to be attributable to the fact that the company does not have legal representation.

34 For example, on one view, the amended notice of appeal might be thought to fail to engage with the fundamental nature of the jurisdiction that has been invoked in a way that introduces unnecessary additional controversies into the proceedings.

35 The right of so-called appeal from a decision made by the Registrar of Trade Marks under section 33 of the Trade Marks Act is created by section 35, and conferred on the Court by section 191. Although styled an “appeal”, the proceedings involve the exercise of the Court’s original, not appellate, jurisdiction. It is a de novo hearing, and the Court determines whether the application should succeed on its merits, and is not concerned with whether the delegate made an error, or whether there were defects in the decision-making process. See, generally, Apple Inc v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511 at [22]-26.

36 One consequence of that fact is that the purpose of the company including a separate claim for judicial review is not immediately apparent. In other words, if the action pursuant to section 35 of the Trade Marks Act entitles the company to a complete de novo hearing in relation to its application for registration, what additional benefit is said to be achieved by seeking judicial review? What can be said with confidence, however, is that the claim for judicial review will introduce significant additional complexity to proceedings.

37 That is not only because the law relating to judicial review is complex in itself, but also because by focussing on the reasoning and process of the decision-makers below, as opposed simply to attacking directly the substantive issues arising in relation to the application for registration, the scope of the proceedings will be expanded enormously. Indeed, here, a substantial portion of the amended notice of appeal is directed to the correctness of the reasoning of, and the lawfulness and fairness of the procedure adopted by, the delegate. In fact, the amended notice of appeal also addresses at length complaints about the examiner’s report and the reports of examiners in other trade mark applications made by the company. None of that would obviously be relevant to a claim brought solely pursuant to section 35.

38 One other example of the complexity introduced by the company’s own approach to the formulation of its claim will suffice. The amended notice of appeal makes allegations of breaches of something called the Anti-Discrimination Act 1975 (Cth) (which I imagine might be intended to be a reference to the Racial Discrimination Act 1975 (Cth)), the Australian Human Rights Commission Act 1986 (Cth), the Equal Opportunity Act 2010 (Vic), and the Anti-Discrimination Act 1977 (NSW). It is possible that it might also be construed to allege misfeasance in public office. In any event, it makes a claim for damages. In one part of the notice of appeal, for example, the following allegations are made:

[136]    While applying to register the Trade Marks on the IP Australia Register, the appellant was subjected to unfair treatments, unequal opportunity, and discriminatory practices (both direct and indirect) by the Registrar, [the delegate], and [the examiner]. The appellant seeks that the decision, all adverse reports, and the entire examination process by reviewed by the Federal Court in accordance with the relevant sections of Australian Legislation listed under Order 8.

[137]    The discriminations in services were clearly demonstrated and been proven by the provided evidence, due to the continued unlawful refusal to deliver services that were offered to other traders, the freezing of applications, the raising of fictitious issues that never existed, and multiple non-compliances with Australian Legislation included the Australian Trade Marks Act 1995.

[138]    The appellant seeks the Federal Court to review the appeal against partiality, integrity issues, deliberate wrongdoing, deficiencies and/or conflict of interest.

[139]    The appellant has suffered significant damages as a result of the actions of the Registrar and the Examiner, including but not limited to, the following:

…

[142]    The damages impacted the appellant business and company reputations, this including but not limited to issuing and/or publishing incorrect information and/or decisions in non-compliance with the Australian Legislation.

[143]    The damages impacted the appellant’s director/s’ mental and physical health and caused a lot of issues. The mental problems included but not limited to blood pressure, continuous headaches, stress, anxiety, eating, sleeping and behavioural disorders, depression…etc. which impacted the appellant’s directors’ work-life balance negatively.

[144]    The Registrars and Examiner of the Trade Marks are liable to any action or other proceeding for damages for, or in relation to an act done, or omitted to be done, in bad faith in the performance, or purported performance, of any function, or in the exercise or purported exercise of any power or authority.

39 It is to state the obvious to observe that these additional elements in the company’s claim would not ordinarily be expected to be found in an appeal under section 35. That is not to say, of course, that the substance of those claims may not find proper expression through some other procedural mechanism. It is no part of my determination of the present application to come to any view about the merits of the company’s case, whether as it is, or could be, pleaded.

40 It is enough to observe that, at present, the case raises factual and legal issues that go well beyond those which would be necessary to achieve the result that may be achieved on an appeal pursuant to section 35 of the Trade Marks Act. And, at present, the company has only, in terms, purported to commence such a proceeding. The inclusion of those other issues means that, almost inevitably, the proceedings will require argument in relation to the validity or propriety of those additional elements, and the way in which they might properly be agitated.

41 Dr Mahmoud submitted that “[l]ength is not a legal defect” and that “[a]ny ground beyond scope can be addressed through case management or narrowing directions”. While length, per se, is of course not a defect, greater length than necessary certainly is. And simply because the Court has powers to confine the issues in a case through the exercise of case management and other discretions does not excuse the generation of surplus issues in the first place. One of the benefits of legal representation is that the issues raised on a party’s case may be narrowed and focussed outside of the courtroom, and without the other side or the Court needing to devote time and resources to dealing with unnecessary matters.

42 Overall, it does not seem to me that these proceedings need inevitably to be complex. If the company were to obtain legal representation, then I consider that there is every prospect that the proceedings could be substantially simplified. But even if they are inherently as complex as the company submits, it strikes me that that, in itself, provides a powerful reason why I would not exercise my discretion to permit the company to be represented by Dr Mahmoud.

43 The question that arises on an appeal under section 35 of the Trade Marks Act is focussed: it is whether the application should have been accepted. It is not concerned with whether the delegate made an error, or whether there were defects in the decision-making process (much less whether error is to be found in the consideration of other applications). In a proceeding of that kind, at least in the context of the relatively confined issues that appear to be raised by the company’s application, an absence of legal training may well not constitute a significant disadvantage. But where a large number of legally complex causes of action are raised, in turn raising a wide range of factual issues, the efficient and effective presentation of the case is almost inevitably to be seriously impeded by an absence of legal representation.

44 A related consideration upon which the company relies is the fact that the evidence in the case will be, according to the company, extensive. For example, the company submits that what it calls the “appeal record”, or “evidentiary record”, exceeds 9,000 pages.

45 The company submits that Dr Mahmoud has an intimate familiarity with those documents, and the evidence in the case generally. That familiarity (along with a broader familiarity with the progress of the application leading up to the delegate’s decision, and the procedural history of proceedings in this Court) supplies, so the company submits, a powerful reason to allow Dr Mahmoud to represent it (including because it would facilitate the efficient conduct of the proceedings).

46 I do not agree.

47 I think it is likely that the absence of legal representation also provides an explanation for the magnitude of the evidence foreshadowed to be relied upon. Partly, of course, the scope of the evidence will be explained by the scope of the issues raised in the proceedings. But whatever the issues in the case, it would be expected that competent legal representation would seek to identify only that evidence that was truly essential to the fair prosecution of the proceedings.

48 In any event, a competent lawyer could be expected to achieve proper familiarity with the evidence in a case. And more than that, familiarity with the evidence is only half of the picture. Lawyers also, by reason of their training and experience, have particular expertise in the efficient and effective presentation of complicated evidence.

49 The fact that Dr Mahmoud has such extensive personal familiarity with the underlying events and evidence gives rise to another concern. By reason of that involvement, it is almost inevitable that Dr Mahmoud will find it difficult to exercise the objectivity that an independent legal practitioner would bring to bear in relation to the formulation and presentation of the case, including in relation to the identification of the evidence upon which the company should rely. That risk is especially acute in one respect in particular.

50 On the assumption that all dimensions of the present claim as expressed in the amended notice of appeal go to a final hearing, it would appear virtually inevitable that Dr Mahmoud would need to give evidence and, in all probability, would be cross-examined. That is to say, to the extent that the proceedings involve, for example, disputed allegations of discrimination and other unlawful treatment, and a consequent claim that physical and mental harm to company officers has been suffered, entitling the company to damages, it is difficult to see how the proceedings could be determined solely by reference to documents. The possibility (if not likelihood, if the scope of the proceedings remains as it is) that Dr Mahmoud will be an important witness in the case tells most powerfully against dispensation.

51 It follows that, contrary to the company’s submissions, the case cannot fairly be described as involving principally questions of law. Indeed, even in its narrowest manifestation as an appeal pursuant to section 35 of the Trade Marks Act, my impression is that the case will depend very much on its own facts.

52 I am conscious of the fact that the company has sought to have the proceedings determined on the papers. While the respondent has indicated a willingness to accede to such a course, that is, as I understand it, on the basis that the proceedings do not travel beyond a de novo hearing of the application for registration of a trade mark pursuant to section 35 of the Trade Marks Act. At the very least, I think it is clear that, unless the scope of the proceedings is significantly narrowed from its present articulation in the amended notice of appeal, the prospect of a hearing on the papers must be regarded as far from certain.

53 In sum, the close involvement of Dr Mahmoud in the underlying events and controversy, let alone the potential for Dr Mahmoud to be a witness in the case in addition to his role as representative of the company, gives rise to a real concern about his ability to exercise the necessary objective judgment in representing the company.

54 All of these considerations taken together persuade me that the overarching purpose identified in section 37M of the Federal Court Act is unlikely to be achieved if the company is represented by Dr Mahmoud. Either the proceedings will be complicated unnecessarily, or their complexity will be such as to demand the skills and objectivity of a lawyer. Either way, I think it is almost certain that the proceedings will take longer, and consume substantially more of the resources of the both the Court and the respondent, if the company is represented by Dr Mahmoud.

55 The history of the matter to date reinforces that conclusion. It is not just that the original notice of appeal was misconceived. After receiving it, the respondent’s legal representatives wrote to the company in fair and balanced terms to explain the nature of the jurisdiction that it had purported to invoke, and the respects in which the claim as framed seemed to go beyond permissible bounds. On the whole, the company’s response has been not to engage with those issues, to maintain the relevant features in its amended notice of appeal, and simply to assert that the case as it has framed it is complex, arguable, and raises issues of public importance. Case management hearings have been characterised by considerable difficulty in having Dr Mahmoud focus on the issues that were required to be determined on such an occasion. The documents (whether they be submissions, affidavits or other evidence) filed by the company are almost always significantly longer and less focussed than would be expected of a legal practitioner.

56 Other factors, which have in other cases been regarded as important matters in favour of the grant of a dispensation, are not present in this case. That is to say, for example, the company here is the moving party, not a respondent. The director seeking to represent the company is not an unrepresented party to the proceedings in his own right.

57 Ultimately, the company submitted that:

Refusal of leave would likely result in: (a) adjournments; (b) inability to prosecute the appeal; (c) effective denial of the statutory right of review. Granting leave: (a) causes no prejudice to the Respondent; (b) preserves the appeal; (c) promotes proportionality. The Respondent identifies no concrete prejudice arising from Dr Mahmoud’s representation.

58 It follows from what I have said above that I do not accept that a grant of dispensation will not result in prejudice, in the sense of a need to devote significantly greater time and resources than would be the case if the company had legal representation. That consequence will be experienced by both the Court and the respondent. Indeed, it will be apparent from what I have said above that I consider nearly every consideration to point against allowing the company to be represented by Dr Mahmoud. The achievement of the overarching purpose will be substantially impaired.

59 The strongest consideration in the company’s favour seems to me to be the fact that it does not presently have the means to obtain legal representation, and the fact that the capacity of its shareholders to put it in a position to do so is, on the evidence, unknown. It is not irrelevant that the company chose not to adduce such evidence, even when it was aware that that was said to be a relevant issue. But nevertheless, I would not proceed on the basis that the shareholders do have the capacity to enable the company to obtain legal representation; only that whether or not they do is not known.

60 It follows that I accept that it is possible that, without a dispensation, the company will not be able to prosecute its claim. That is a very important matter and I give it great weight. Ultimately, however, I am not persuaded that that (together with the other matters in the company’s favour) provide a sufficient justification for dispensing with the operation of rule 4.01(2) of the Rules.

61 It is possible that I would have come to a different conclusion if the scope of the proceedings had been limited strictly to an orthodox appeal pursuant to section 35 of the Trade Marks Act. In those circumstances, many of the features that I have found weigh against the company’s application (in particular, the factual and legal complexity of the proceedings, the possibility that Dr Mahmoud will be an important witness in the case, and the extent of the likely inability to achieve the overarching purpose) would either no longer apply, or would be likely to have a very different weight. But I must decide this application on the basis of the proceedings as they now stand.

62 This is, of course, an interlocutory decision. It follows that there would be no impediment to the company making a further application for dispensation if there was a material change in the relevant circumstances. Without expressing a firm view on the question, it seems to me that if the scope of the proceedings was narrowed, then that may well constitute such a material change. What the outcome of any such new application would be, of course, cannot be speculated upon now; it would necessarily depend on the circumstances at the time.

Conclusion

63 I will dismiss paragraph three of the company’s interlocutory application, with costs.

| I certify that the preceding sixty-three (63) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Owens. |
Associate:

Dated: 21 April 2026