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ACP Magazines Limited and IP Australia [2013] AICmr 20 (7 March 2013)

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Decision and reasons for decision of Acting Freedom of Information Commissioner, Toni Pirani

Summary of case details
Applicant:

ACP Magazines Ltd

NEC Mastheads Pty Ltd

Respondent: IP Australia

Other parties:

Colin J Parrot

Decision date: 7 March 2013
Application number: MR11/00188
Catchwords:

Freedom of information — Whether material obtained in confidence — (CTH) Freedom of Information Act 1982 s 45

  Contents

 Summary

  1. I affirm the decision of IP Australia of 16 May 2011 to refuse access to documents requested under the Freedom of Information Act 1982 (the FOI Act).

 Background

  1. On 24 January 2011, ACP Magazines Limited and NEC Mastheads Pty Limited jointly applied to IP Australia for access to documents in relation to trade mark application no. 1324177. The trade mark application belonged to Mr Colin Parrot (the affected third party).
  2. IP Australia identified one file with 47 pages as falling within the scope of the request. On 30 March 2011, following consultation with the affected third party under ss 27 and 27A of the Act, IP Australia decided to release 43 pages in full and to partially release the remaining four pages.
  3. On 12 April 2011, the affected third party sought an internal review of the decision made by IP Australia on 30 March 2011.
  4. On 16 May 2011, IP Australia advised that five pages were wholly exempt from disclosure, and that six pages were exempt in part. The applicants were given access to the partially-exempt pages with the exempt material deleted from them.
  5. On 8 July 2011 the applicants sought Information Commissioner review (IC review) of this decision under s 54L of the FOI Act.
  6. The affected third party is a party to the IC review under s 55A(1)(c).

 Decision under review

  1. The decision under review is the decision of IP Australia on 16 May 2011 to refuse access to documents.
  2. The applicants only seek review of the application of the exemptions in ss 45, 47G(1)(a) and 47G(1)(b) to one part of one of the partially released documents. In particular the applicants seek release of two sentences included in paragraph B of a Statutory Declaration provided by the affected third party.
  3. The affected third party is entitled to make submissions in relation to the application of s 47G of the FOI Act as he was consulted in relation to the application of this exemption under s 27 of the FOI Act and made an exemption contention.

 Material obtained in confidence exemption (s 45)

  1. Section 45 of the FOI Act provides that '[a]document is an exempt document if its disclosure under this Act would found an action, by a person (other than an agency, the Commonwealth or Norfolk Island), for breach of confidence'.
  2. The Australian Information Commissioner has issued Guidelines under s 93A to which regard must be had for the purposes of performing a function, or exercising a power, under the FOI Act. The Guidelines[1] explain that the exemption under s 45 of the FOI Act is available where the person who provided the confidential information would be able to bring an action under the general law for breach of confidence to prevent disclosure, or to seek compensation for loss or damage arising from disclosure.
  3. A breach of confidence is the failure of a recipient to keep confidential, information that has been communicated in circumstances giving rise to the obligation of confidence.[2] The FOI Act expressly preserves confidentiality where that confidentiality would be actionable at common law or in equity.[3]
  4. The Guidelines explain that, to found an action for breach of confidence – for s 45 to apply – the following five criteria must be satisfied:
    • the information must be specifically identified
    • it must have the necessary quality of confidentiality
    • it must have been communicated and received on the basis of a mutual understanding of confidence
    • it must have been disclosed or threatened to be disclosed, without authority
    • unauthorised disclosure of the information has or will cause detriment.[4]
  5. The FOI Act does not provide for consultation with third parties when applying the exemption in s 45. In reviewing the application of the exemption in s 45, I have therefore not had regard to any submissions provided by the affected third party.
  6. I have examined the document that the applicants seek. All five criteria are satisfied in relation to the part of the document that has not already been released.

 Specifically identified

  1. The document has been specifically identified. It contains information provided by the affected third party to the trade mark examiner, at the examiner's request, to overcome objections to the registration of the trade mark. The document states that it is commercially sensitive and should not be used for any other reason than to dispel those objections.
  2. I consider that this statement is sufficient to specifically identify the information in the statutory declaration as information that the affected third party communicated in confidence.

 Quality of confidentiality

  1. The Guidelines explain that, for information to have the quality of confidentiality, it must be secret or only known to a limited group; information that is common knowledge or in the public domain will not have the quality of confidentiality.[5]
  2. Whilst the statutory declaration contains some information that is publicly available, the material exempted by IP Australia is information which is known only to a limited group and has not been communicated publicly. The nature of the applicants' FOI request supports the fact this information is not well known.
  3. I am satisfied that the material exempted from the document has the necessary quality of confidentiality.

 Mutual understanding of confidence

  1. For the information to have been communicated and received on the basis of a mutual understanding of confidence, IP Australia needs to have understood and accepted an obligation of confidence.
  2. The document itself shows that the affected third party clearly communicated the information in confidence. As stated above, the statutory declaration was provided at the examiner's request. It did not form part of the general filing of a trademark and was provided for a specific purpose. In stating that purpose, and noting the declaration should not be used for any other reason, the affected third party communicated his understanding it was provided in confidence.
  3. IP Australia indicated that it does receive information in confidence in some circumstances. In its submissions IP Australia explained its process of categorising documents as 'Available for Public Inspection' or commercially sensitive. IP Australia indicated that:

    Statutory Declarations and other documents which contain information that is initially considered to be commercially sensitive and confidential are assessed for release under the FOI regime.

  4. In its publicly available document, 'Availability of Documents in relation to Trade Marks, New Provisions from 27 March 2007', IP Australia sets out the type of documents it will receive in confidence including:
    • documents that solely contain evidence of use of a trade mark or proposed use of a trade mark, and
    • declarations accompanying requests for expedited examination.
  5. In its written submissions IP Australia stated:

    IP Australia's approach with respect to material provided to IP Australia in confidence

    IP Australia appreciates that self-represented applicants often have limited understanding of the law and legal practices and little experience in dealing with complex legal issues. IP Australia take this into account when determining how best to deal with documents where confidentiality is claimed for an entire document but only part of the document contains information that would appear to be of a confidential nature. In such circumstances IP Australia's practice is to treat part of the document, but not the entire document, as confidential. We believe that this best balances the interests of the applicant, in not having commercially sensitive information released to a competitor or the public, and the FOI requestor's and the public's interests in transparency about decisions made by IP Australia.

    ....

    IP Australia has a two stage mechanism for the release of documents that are received as part of a trade mark application. Documents are sorted into two categories, those which are Available for Public Inspection (API) for a fee under provisions of the Trade Marks Act 1995 or those available under the FOI regime. Documents which are API are considered to be non-confidential and have no information that would be commercially sensitive. Statutory declarations, and other documents which contain information that is initially considered to be commercially sensitive and confidential, are assessed for release under the FOI regime.

  6. The affected third party has clearly sought to follow the direction within this publication by providing the information in a statutory declaration instead of as part of a general submission. IP Australia's submissions indicate that statutory declarations are received on a confidential basis subject to later being assessed under the FOI Act. I am therefore satisfied that the information was communicated and received on the basis of a mutual understanding of confidence.

 Unauthorised disclosure or threatened disclosure

  1. The Guidelines explain that the scope of the confidential relationship will often need to be considered to ascertain whether disclosure is authorised. For example, an agency may advise a person about the people to whom the agency would usually disclose information provided to it. The law may require disclosure to other parties in the performance of an agency's functions, which will amount to authorised use and/or disclosure. And, a person providing confidential information to an agency may specifically permit the agency to divulge the information to a limited group.[6]
  2. The affected third party has stated in the declaration that disclosure of information contained therein would be unauthorised. Although the affected third party clearly intended that no part of the statutory declaration should be disclosed, IP Australia was required to apply the FOI Act when determining whether parts of the declaration should be released. During the FOI process, IP Australia consulted the affected third party. The third party expressly did not give permission for IP Australia to disclose the information contained in the statutory declaration.

 Detriment

  1. The Guidelines provide:

    The fifth element for a breach of confidence action is that unauthorised disclosure of the information has, or will, cause detriment to the person who provided the confidential information. Detriment takes many forms, such as threat to health or safety, financial loss, embarrassment, exposure to ridicule or public criticism.

  2. The applicants and the affected third party are currently engaged in a dispute with IP Australia regarding the registration of the trademark. I accept that the release of the information in the first two sentences of paragraph B of the statutory declaration would be detrimental to the affected third party by providing the applicants with commercially sensitive information including information about the development of his trade mark. Knowledge of this information could provide the applicants with an unfair insight and advantage by revealing how their competitor developed his product.

 Findings

  1. Having regard to the above, I find that the two sentences, in paragraph B, of the Statutory Declaration provided by the affected third party are exempt under s 45 of the FOI Act. 

 Application of other exemptions

  1. In its decision of 16 May 2011, IP Australia also applied s 47G (business exemption) to the sentences in question. Because of the view I have come to on the application of s 45, it is not necessary for me to consider the possible application s 47G.

 Decision

  1. Under s 55K of the FOI Act, I affirm IP Australia's decision of 16 May 2011.

Toni Pirani
Acting Freedom of Information Commissioner

7 March 2013

Review rights

If a party to an IC review is unsatisfied with an IC review decision, they may apply under s 57A of the FOI Act to have the decision reviewed by the Administrative Appeals Tribunal. The AAT provides independent merits review of administrative decisions and has power to set aside, vary, or affirm an IC review decision.

An application to the AAT must be made within 28 days of the day on which the applicant is given the IC review decision (s 29(2) of the Administrative Appeals Tribunal Act 1975). An application fee may be payable when lodging an application for review to the AAT. The current application fee is $816, which may be reduced or may not apply in certain circumstances. Further information is available on the AAT's website (www.aat.gov.au) or by telephoning 1300 366 700.


[1] Office of the Australian Information Commissioner, Guidelines issued by the Australian Information Commissioner under s 93A of the Freedom of Information Act 1982 (2010), [5.135]

[2] Guidelines, [5.138]; Coco v AN Clark (Engineers) Ltd (1969) 86 RPC 41.

[3] Guidelines, [5.138]; Re Petroulias and Commissioner of Taxation [2006] AATA 333; (2006) 62 ATR 1175.

[4] Guidelines, [5.139]. See also Australian Broadcasting Corporation and Commonwealth Ombudsman [2012] AICmr 11.

[5] Guidelines, [5.142]

[6] Guidelines, [5.147]–[5.148].