3Floorsup Pty Ltd v Fiix Inc

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Request by 3Floorsup Pty Ltd to amend the statement of grounds and particulars in the opposition by 3Floorsup Pty Ltd to registration of trade mark application number 1907498 (class 42) - - in the name of Fiix Inc.

Delegate:

Louise Tuohy

Representation:

Opponent: Marcus Fleming of Counsel, instructed by Norton Rose Fulbright Australia

Applicant: Andrew McRobert of Counsel, instructed by Norman Waterhouse.

Decision:

2020 ATMO 37

Trade Marks Act 1995 (Cth) – opposition under section 52 – Request under reg. 5.12 to amend statement of grounds and particulars - add section 58A ground – request refused.

Background

Pursuant to 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) registration of trade mark application 1907498 (‘the application’) in the name of Fiix Inc (‘the Applicant’) has been opposed by 3Floorsup Pty Ltd (‘the Opponent’). The Opponent now seeks to add a ground of opposition under section 58A to the grounds of opposition that currently appear on the Statement of Grounds and Particulars (SGP) which are sections 42(b), 44, 58, 60 and 62A.
This decision is in relation to the Opponent’s request (‘the request’) under reg 5.12 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’) to add a new ground to the SGP.
The parties to the opposition have met all the procedural requirements in this opposition as prescribed in the Act and Regulations.
On 26 July 2918, the Opponent applied to amend the SGP, in the event that a position arises in which, as part of the Delegates consideration of the Opponent’s opposition to the application, the Delegate determines the application should be accepted pursuant to section 44(4) of the Act, which would enliven the ground of opposition pursuant to section 58A of the Act[1]. On 23 September 2019 after carefully considering the request the Delegate of the Registrar informed the parties of their intention to refuse the amendment to the SGP. On 3 October 2019 following the Delegate’s decision, the Opponent requested a hearing in the matter and on 18 November 2019 the Applicant requested a hearing in relation to the Opponent’s request of 26 July 2019 to amend the SGP to add the ground of opposition under section 58A of the Act.
[1] Opponent’s submissions in support of request to amend SOGP by Marcus Fleming, Counsel for the Opponent [1].
The hearing in this matter took place on 6 February 2020.
Evidence in support
31 January 2020 - Opponent’s submissions in support of the request to amend SGP by Marcus Fleming, Counsel for the Opponent (‘Fleming’).
31 January 2020 - Declaration of Gregory Ralph Tye, with Annexure GRT-1 (“Tye”).
Evidence in answer
10 September 2019 – Applicant’s submissions regarding the Opponent’s request to add section 58A ground by Georgina Hey (‘Hey’).
30 January 2020 - Applicant’s submission regarding the Opponent’s request to add section 58A grounds by Norton Rose Fulbright Australia (‘NRF’).
Relevant Provisions
The provisions relatively provide:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
[…]
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
57 Registration may be opposed on same grounds as for rejection
The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
5.12 Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and particulars to:
(a) correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or
(b) amend a ground of opposition; or
(c) add a new ground of opposition; or
(d) to amend the facts and circumstances forming the basis for the grounds.
(2) The Registrar may grant the request on terms that the Registrar considers appropriate.
(3) However, the Registrar may grant a request to:
(a) amend a ground of opposition; or
(b) add a new ground of opposition;
only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.
Threshold Discussion
In considering whether or not it is appropriate to grant the request to add the section 58A ground of opposition in a case where the application was not accepted under the provisions of section 44(4) of the Act, was considered in K-Tec Inc V Healthy Foods LLC (‘K-Tec’) in which Hearing Officer Richards found that such an amendment is not barred by reg 5.12(3)[2].
[2] K-Tec Inc v Healthy Foods LLC [2016] ATMO 4 [8].
Under reg 5.12(3) the Registrar may grant a request to add a new ground of opposition only if the Registrar is satisfied that the addition relates to information of which the Opponent could not reasonably have been aware at the time of filing the SGP.
In the request to add the new ground, the Opponent stated that they were aware before filing the SGP that the Applicant purported to first use of the application before the priority date of the cited marks (being Trade Mark Registration Nos. 1812420 for FIXD and 1812421 for FIXD logo). However, the Opponent argued having regard to the threshold requirements for the application of s 58A, the relevant “information” to which the proposed amendment relates for the purpose of reg 5.12(3) must also include:
a)the evidence filed by the Applicant in May 2019, after the lodgment of the SGP which the Applicant could have elected not to file, and without which there would be no evidentiary foundation before the Registrar giving rise to the potential application of s44(4); and
b)the determination by the Delegate that the Application should be accepted pursuant to the provisions of s44(4) of the act – even now, the Opponent does not know whether the Delegate will make such a determination[3].
[3] Tye [5-6], Fleming [10].
The Applicant objected to the amendment arguing that the amendment does not relate to information to which the Opponent could not reasonably have been aware at the time of filing the SGP. [4]
[4] NRF [9-12].
At issue here is whether the “information” as used in reg 5.12(3) will “… suggest information in the nature of relevant documentation or other objective evidence that was not reasonably discoverable earlier and that would clearly support the ground an opponent sought to add”[5].
[5] Juno Pharmaceuticals Inc v Juno Therapeutics Inc [2017] AMO 160 [22].
While I have reservations that the Opponent could not have been aware that a section 44 ground of opposition may be overcome by section 44(4) of the Act prior to the filing of the Applicant’s evidence in answer, I accept that the information contained in the Applicant’s evidence in answer was the likely source of the Opponent’s request to amend the SGP, and that this information concerned objective evidence that was not reasonably discoverable earlier because the Opponent could not know, before the filing of the Applicant’s evidence in answer, that the Applicant would seek to place reliance on section 44(4) of the Act[6].
[6] See also Re: Opposition by Annco, Inc to registration of trade mark application no. 1874506 AEROLOFT in the name of Nike Innovate C.V. And Request by Annco, Inc. to amend the statement of grounds and particulars [2020] ATMO 17.
Submissions
The Opponent’s arguments are[7]:
a)The proposed amendment will not prejudice either of the parties in any way. The amendment to the SGP to add s58A would not cause any delay in the proceeding and would not require either party to file any additional evidence of submissions.
b)It is in the public interest in ensuring that, when determining whether to refuse or register the Application, the Delegate is able to do so on the basis of all relevant grounds of examination under the Act.
c)The proposed additional ground of opposition is sufficiently particularized.
d)The nature of the amendment is important, as it would enable the Opponent to rely upon a ground of opposition that was unavailable to it at the time it filed the SGP, and which might only become available by a subsequent determination of the Delegate.
e)The Opponent foreshadowed its proposed amendment to the SGP with the Applicant on 15 July 2019, after the Applicant filed its evidence in answer and prior to the Opponent filing its evidence in reply. Although the Opponent filed its SGP in October 2018, the fact that a position may arise which s44(4) may be deemed by the Delegate to apply, thus potentially enlivening the application of s58A, only became apparent to the Opponent following the preparation of its outline of written submissions for an opposition hearing in relation to another of the Applicant’s in April 2019.
[7] Fleming [15-26].
In disapproval the Applicant argues the following[8]:
a)The Applicant will be prejudiced if the footing on which it made the election was made is now shifted.
b)There is a clear public interest in an applicant being given fair notice of the case that is must meet.
c)The amendment is being sought despite the Opponent being aware at the time the SGP was originally filed that there was the potential for the s58A ground to become relevant in the opposition.
d)The Opponent has not filed any evidence providing a full and frank explanation for the considerable delay in seeking the amendment.
[8] NRF [13-22].
Exercise of the Registrar’s Discretion
The factors that will generally need to be taken into account in the exercise of the Registrar’s discretion to amend an SGP will include: the likely prejudice to the parties; the public interest; whether the ground proposed to be added is sufficiently particularised; the nature and importance of the requested amendment; and the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment[9].
[9] K-Tec Inc v Healthy Foods LLC [2016] ATMO 4 [23].
In the matter of likely prejudice to the parties I am not convinced that the request would not cause any delay, French CJ in Aon Risk Services v Australian National University (‘Aon’) observed that “there is an irreparable element of unfair prejudice in unnecessarily delaying proceedings[10]”.
[10] Aon Risk Services v Australian National University (2009) 239 CLR 175, 181 [5].
The Opponent requested a hearing in relation to this matter on 3 October 2019 before a hearing date was fixed for the substantive matter, which places the request at the end of the opposition process and forced a delay to the hearing on the substantive matter.
The power to amend an SGP in reg 5.12 is cast in discretionary terms and Part 5 of the Regulations sets out in detail the procedure for opposition proceedings. It prescribes several deadlines regarding the filing of not only the SGP, but various procedural documents and evidence. The provision that applies when an extension of time to file evidence dealing in opposition proceedings is sought are notoriously more onerous than extension of time provisions found elsewhere in the legislation. Had a full airing of all relevant grounds in every opposition been the ultimate aim of the opposition provisions, the provision setting out the procedure would not have been cast in such restrictive language. Instead there is a timetable for filing opposition documents, each stage of which depends largely on the last[11]. In the words of the majority in Aon Risk Services Australia Limited v Australian National University (‘Aon’):
A party has the right to bring proceedings. Parties has choices as to what claims are to be made and how they are to be framed. But limits will be placed upon their ability to effect changes to their pleadings, particularly if litigation is advanced. That is why, in seeking the just resolution of the dispute, reference is made to parties having a sufficient opportunity to identify the issues they seek to agitate[12].
[11] K-Tec Inc v Healthy Foods LLC [2016] ATMO 4 [26].
[12] Aon Risk Services Australia Limited v Australian National University [2009] HCA 27 [112].
Here the court recognized that there was a public interest in ensuring that ligation was run as quickly and cost-effectively as possible. This requires the parties to organise their case and arguments early in litigation and to take seriously the time limits imposed by the courts for filing evidence and preparing a case for trial.
Likewise, in matters before the Registrar, there is a strong responsibility incumbent on the Opponent to be fully prepared and aware of the grounds by which it seeks to pursue an opposition before the opposition commences. This was part of the intention behind raising the bar and the filing of the SGP. While this does not mean that the Opponent is barred from amending the SGP after the opposition is commenced. Rather it means that the Opponent needs to satisfy the Registrar that they have had sufficient opportunity to identify the grounds of opposition they wished to pursue, that they have acted promptly in the timing of the amendment request and the reasonable of the explanation offered for the delay in requesting the amendment.
A timeline of events shows the Opponent filed the SGP on 10 October 2018 and nominated a ground under section 44 of the Act, then in April 2019, when preparing the Opponent’s written submissions in relation to another opposition matter which involved the same Applicant, the Opponent became aware that in the context of the evidence filed by the Applicant in that opposition and subject to findings yet to be made in that opposition, a position may arise where the Opponent may need to rely upon s58A of the Act[13].
[13] Tye [6-7].
The Applicant filed its evidence in answer on 17 May 2019. On receipt of the Applicant’s evidence in answer, there was a two month interval in filings and on 15 July 2019 the Opponent wrote to the Applicant seeking consent to have leave to file its proposed amended SGP and on 22 July 2019 the Opponent filed its evidence in reply.
The Applicant did not respond to the Opponent’s request for an amendment to the SGP and on 26 July 2019 the Opponent made an official request to add the section 58A ground to the SGP.
Consequently, both parties requested a hearing on the substantive matter in late August 2019. On 23 September 2019 the delegate for the Registrar wrote to the Opponent with their intention to refuse the amendment and on 10 September 2019 the Applicant filed submissions in opposition to the grant of leave.
The Opponent requested a hearing in relation to this matter on 3 October 2019 before a hearing date was fixed for the substantive matter, which places the later request at the end of the opposition process and forced a delay to the hearing on the substantive matter.
On 16 January 2020 as the Delegate determining this matter I sent an email to the Applicant in response to the Opponent’s request to defer the application until the substantive hearing in this opposition proceeding, so that the application could be considered at that time, if the need arose. The Applicant declined this request on 21 January 2020.
When taking the timeline into consideration the Opponent has offered little by way of explanation for the delay in filing the request, outside of the argument that absent the evidence in answer filed by the Applicant, there would be no evidentiary foundation before the Registrar giving rise to the potential application of section 44(4)[14].
[14] Fleming [24].
In Aon a decision relating to the conduct of commercial litigation, the High Court considered a late application by a party to amend its pleadings - a document that serves a very similar function to an SGP. The issues in that dispute were the interpretation of relatively recently enacted ‘case management’ style reforms to the rules of the ACT Supreme Court. Those reforms were in many ways similar to the Raising the Bar reforms in that they concerned reducing delays in procedure in the lead up to trial. The following passage from the majority judgement is therefore instructive:
Generally speaking, where a discretion is sought to be exercised in favour of one party, and to the disadvantage of another, an explanation will be called for. The importance attached by r21 to the factor of delay will require that, in most cases where it is present, a party should explain it. Not only will they need to show that their application is brought in good faith, but they will also need to bring the circumstances giving rise to the amendment to the court’s attention, so that they may be weighed against the effects of any delay and the objective of the Rules[15].
[15] Aon Risk Services Australia Limited v Australian National University [2009] HCA 27 [103].

The statement above demonstrates that there is an obligation on a party to explain delays in seeking amendments to pleadings. As in K-Tec Inc v Healthy Foods LLC[16], the Opponent in the current situation has been less than forthcoming. The Opponent did explain that absent the evidence filed by the Applicant in May 2019, there would be no evidentiary foundation before the Registrar giving rise to the potential application of section 44(4)[17].
[16] K-Tec Inc v Healthy Foods LLC [2016] ATMO 4.
[17] Fleming [24].
However, the Opponent nominated a section 44 ground in the SGP and therefore the provisions of section 44(4) being applied, as a result of the evidence provided by the Applicant, was a real possibility. The possibility of this situation being realised was also clear to the Opponent during deliberations in relation to another matter involving the parties to this dispute back in April 2019.
The Opponent has not explained the circumstances in which the two month delay occurred between the Applicant filing their evidence in answer and applying for the amendment to the SGP, leaving me unable to form a view on whether the delay was reasonable in the circumstances.
Further, the Opponent’s argument that the Applicant would not be prejudiced in anyway also does not persuade me as the issue regarding the amendment to the SGP was taken at a late stage in the proceedings causing a distraction for the Applicant and a delay in when the substantive matter is to be heard.
Given all of the above, a full explanation from the Opponent for its two month delay between assessing the Applicant’s evidence in answer and filing its request to amend the SGP is clearly required.
There is a public interest in ensuring that proceedings before the Registrar are run as quickly and cost effectively as possible. This requires parties to organise their case and arguments early in the proceedings and to take seriously the time limits imposed by the Act and Regulations. In this case the Opponent should not be allowed to change its SGP so late in the proceedings without providing a full and frank explanation for the delay, this together with the prejudice that the amendment will cause the Applicant, argues against the exercise of the discretion.
Decision
I refuse the request to amend the SGP to add section 58A of the Act. The hearing on the substantive matter will now be scheduled in due course.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
12 March 2020

[2020] ATMO 37

12 March 2020