Americana International Limited v Suyen Corporation

[2007] ATMO 51

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS
WITH REASONS

Opposition by Americana International Limited to Registration of Australian Trade Mark Application No. 968981(25) for the mark BENCH BODY (logo) in the name of Suyen Corporation and

Request for Directions to Consolidate that matter with proceedings in:

(1)Australian Trade Mark Application No. 989448(25) for the mark BENCH (series of 3) in the name of Suyen Corporation and an Opposition to Registration by Americana International Limited;

(2)Australian Trade Mark registration No. 58837 1(25) of the mark BENCH in the name of Suyen Corporation and an Application for Removal by Americana International Limited

DELEGATE:  Debrett Lyons

REPRESENTATION:          Opponent: Julia Baird of Counsel, instructed by Griffith Hack,
Patent & Trade Mark Attorneys

Applicant: Greg Chambers of Phillips Ormonde Fitzpatrick

DECISION:  2007 ATMO 51

s. 52 opposition: request to defer appointed hearing and consolidate matter with two pending actions between the same parties; Reg. 5.16 considered; Consolidation request not supported; Directions given for matters to be heard separately and for hearing on #968981 to be expedited.

Costs: opponent to pay applicant’s costs

Background

1. Suyen Corporation (‘Suyen’) filed trade mark application number 969981 for registration of BENCH BODY (logo) on 5 September 2003 (‘the application’). Americana International Limited (‘Americana’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark on 10 September 2004 (‘the opposition’).

2. Americana completed its evidence in support of the opposition on 20 December 2006.
   On 23 May 2007 Suyen notified Americana that it did not intend to rely on evidence

in answer and on 30 May 2007 requested that a hearing be appointed to determine the opposition.

1. On 6 June 2007 the parties were advised by the Registrar of Trade Marks that the opposition had been set down for hearing in the week of 13 – 17 August 2007.

2. Prior to the appointed hearing date, Americana sought a deferment of the hearing on the basis of a request to consolidate the opposition with two other pending matters between the parties.

3. The hearing on that matter was set down before me, Debrett Lyons, a delegate of the Registrar of Trade Marks, on 16 May, 2007 in Sydney in order to give directions. Suyen was represented by Greg Chambers, Solicitor and Patent Attorney with Messrs. Phillips Ormonde Fitzpatrick. Americana was represented by Julia Baird of Counsel, instructed by Messrs. Griffith Hack.

   Submissions and Reasoning

4. Paragraph 5.16 of the Trade Mark Regulations 1995 (‘the Regulations’) states: Conduct of opposition proceedings generally

   (1)     The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.

   (2)   A direction given under subregulation (1) must not be inconsistent with these regulations.

   (3) The Registrar must not give a direction unless the Registrar:

   (a)      is reasonably satisfied that parties to the proceedings have been notified of the proposed direction; and

   (b)     has given the parties a reasonable opportunity to make representations concerning the proposed direction; and

   (c) is reasonably satisfied that the proposed direction is appropriate.

   (4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

5. It was common ground between the parties that the relevant legal principles governing the exercise of the Registrar’s discretion under regulation 5.16 are as were indicated by the Registrar’s delegate in Cadbury Limited v Unilever PLC [2001] ATMO 59 – namely that the Registrar must consider:

·     the interests of the parties;

·     the most expeditious way of running the hearing of the substantive issue; and

·     the public interest which includes the efficiency of the courts, the maintenance of the Trade Marks Register and the interests of any third parties.

The Interests of the Parties

1. By its letter to the Registrar dated 6 August 2007, Americana states its wish to ‘reinstate its request for suspension of the [Hearing of the opposition] and for the opposition to be heard with the opposition to the Application for Removal of Registration No. 588371 BENCH and the opposition to Trade Mark Application No. 989448 BENCH (Series). We have sought agreement from the Applicant (“Suyen”) to suspend the Hearing but this request has been declined’.

2. The reference in that letter to reinstatement of the request is a reference to the fact that on 12 July 2007 it had sought directions for suspension and consolidation of the opposition with the other two pending cases between the parties. That request was withdrawn four days later on 16 July 2007, at which time Americana confirmed its intention to attend the hearing scheduled for the week commencing 13 August 2007.

3. By its August letter, Americana gave the following reasons to support its request. First, it said it would disadvantaged if the substantive hearing of the opposition proceeded as scheduled because ‘it has had insufficient time to prepare in view of the particular circumstances of what has transpired between the parties since being notified of Suyen’s request for the matter to be heard’. That submission is utterly unmeritorious. The evidence in support of the opposition was served in December 2006. Even if Americana might have been expecting to respond to evidence in answer, it was clear by 30 May, 2007 both that no more evidence was coming from Suyen and that the hearing was imminent. Almost three months has elapsed since then. During that time Americana asserts that it was diverted from its preparations as a result of discussion that took place between the parties’ principals aimed at possible settlement of the dispute.

1. In my view, Americana had ample time to ready itself for a hearing and can not realistically premise its request on nothing more than optimism that the commercial discussions would have resolved the parties’ multi-jurisdictional differences.

2. Secondly, Americana states in its August letter that there are trade mark disputes concerning the same trade marks in other jurisdictions. No further reasoning is provided and, without more, I am left to find justification for delay of the Australian action(s) merely because there are similar proceedings in other countries. Since the outcome of those proceedings can have no legitimate influence on the determinations made by the Registrar in Australia, I do not consider this information useful in reaching a conclusion.

3. Thirdly, Americana states that ‘there are serious rights in issue and the outcome of each of the three matters will have an effect on whether Americana is able to ultimately achieve registration of its mark and an effect on which party will claim the ultimate monopoly in the BENCH trade mark for class 25 goods in Australia.’ With respect, that statement is universally true of disputes of this kind and places Americana in no special position.

4. In my opinion, nothing said of Americana’s interests at the hearing advanced its position beyond those arguments.

5. Suyen submitted that a suspension for the purposes of consolidation would unduly prejudice it. It argued that the hearing would be suspended for an indefinite period whilst the remaining cases were prosecuted through their evidentiary stages. As a trade mark applicant, that would leave Suyen in an unjustified state of uncertainty.

6. I am of the opinion that Suyen’s interests are to be favoured over those of Americana by enabling the opposition to be heard promptly. This would be consistent with the principles in Yamazaki Mazak Corporation (1992) 24 IPR 321; AIPC 90 879, noted in Ayrton Senna Promocoes E Emprendimentos Ltda v Senna Racing Team Pty Ltd - (1998) 41 IPR 395.

The Most Expeditious Way of Hearing the Substantive Issue

1. Americana submitted that the efficient determination of the several issues between the parties was accomplished by either consolidation of the matters, or in the alternative, by serial hearings of the matters. The strongest argument in support of that position was the commonality of the actions in terms of (i) the parties (ii) the trade mark (iii) the s. 52 grounds of opposition against Application Nos. 968981 and 989448, and (iv) the inter-relationship of elements of the s. 52 claims and the s. 92 claim as it relates to Registration No. 588371.

2. Suyen rejects the proposition that it would be more expeditious to consolidate the opposition with the two other pending cases. It asserts that there are different factual and legal issues involved in each case and only superficial similarities.

3. For the purposes of making directions under regulation 5.16, it is not my responsibility to enjoy the level of factual familiarity with the matters that would be required for their substantive determination. I agree with Suyen’s characterization of the similarities between the three matters outlined by Americana as superficial. In my own assessment, there are necessary, but not sufficient, features of connectivity between the matters. These are not cases, for example, where the determination of a s. 92 removal action could have a bearing on the efficacy of a related s. 44 ground in an opposition between those same parties. Nor are these cases where the evidentiary stages are so intimately timed that a minor delay or timetable re-adjustment could be justified in order to facilitate the expeditious disposal of all matters.

4. Instead, these are three cases but with one protagonist, the logical endpoint to whose argument would be the indefinite deferment of the outcome of this opposition in the event that Suyen chose, for whatever reason, to file a third application for a ‘BENCH’ derivative trade mark today.

5. I decide that the expeditious way of managing the opposition is to direct a hearing on the substantive issues, without regard to the progress of the other two matters between the parties. In reaching that conclusion, I have paid regard to Americana’s alternative proposal that the matters be heard serially; however I can see little in the way of overall economy in that approach over the normal path whereby the matters will be heard as they are ready.

The Public Interest

1. As I have heard the parties and read their submissions, there is nothing additional to consider which is a matter of public interest and which has not been argued. There is no evidence of third party rights or interests to take into account and I concur with Suyen’s submission that the trade marks register is a public record which should reflect proprietary rights as soon as reasonably practical.

2. Americana has fully laid out its evidence in accordance with the Act and Regulations
   and the public interest requires that the opposition be heard as soon as possible.

   Decision

3. Under paragraph 5.16 of the regulations and in accordance with indications given to me at the hearing by the parties’ representatives, I direct that the opposition be set down for hearing in Melbourne in the week commencing 17 September, 2007.

   Costs

4. Suyen sought its costs in the event that the matter was determined in its favour. Americana submitted, amongst other things, that if I was against them, then costs should be considered in the round with the substantive hearing.

5. A proper question arises as to what is meant by success in this hearing. On the face of it, the hearing was arranged to deal with two petitions by Americana, one for deferment of the hearing and another for consolidation of the actions. There is of course a necessary inter-connection of those requests, but it was clear that Americana was seeking deferment in any event in light of its acknowledged state of unpreparedness. Nonetheless, I do not need to partition those issues because it was also clear that the principal submissions of Americana were directed to the matter of consolidation, a matter on which they failed.

6. Accordingly, I order that the opponent pay the applicant’s costs according to the
   official scale.

Debrett Lyons Hearing Officer

Trade Marks Hearings

27 August 2007