Apple Inc v HealthKit Pty Ltd
[2016] ATMO 112
•6 December 2016
Trade Mark Regulations 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Apple Inc to admission of information under regulation 21.19 of the Trade Mark Regulations 1995 in s52 proceedings re: trade mark application 1626348 (9, 35, 36, 41, 42, 44, 45) - HEALTHKIT - filed in the name of HealthKit Pty Ltd.
Delegate: | Iain Campbell Thompson |
Representation: | Opponent: AR Lang of Counsel instructed by Robert Arnold of Baker & Mackenzie. Applicant: Tom Cordiner, Senior Counsel, instructed by Hugh Maclaren of Meerkin & Apel, Lawyers. |
Decision: | 2016 ATMO 112 Trade Marks Regulations 1995, opposition to request that the Registrar consider information under the provisions of regulation 21.19; regulation 21.19 not to be read in conjunction with regulation 5.15 – Registrar’s discretion is unfettered; information relevant to proceedings - Registrar will consider regulation 21.19 information. Regulation 5.19 directions that:
|
| Costs in this matter to be borne by both parties. |
Background
This matter arises out of the fact that the parties involved are both opponents to the registration of each other’s identical trade mark. Apple Inc, (‘the Opponent’) opposes registration of the trade mark which appears below:
Application No: 1626348
Owner: Healthkit Pty Ltd
Priority Date: 3 June 2014
Goods/Services: Various in Classes 9, 35, 36, 41, 42, 44, and 45.
Trade Mark: HealthKit (‘the First Trade Mark’)
Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
HealthKit Pty Ltd (‘the Applicant’), for its part, opposes the registration of the trade mark which appears below:
Application No: 1637556
Owner: Apple Inc
Filing Date: 29 July 2014
Convention Claim: 4 February 2014 – 47870 – Trinidad and Tobago. (‘the Convention Date’)
Goods: Various in Classes 9 and 14.
Trade Mark: HEALTHKIT (‘the Second Trade Mark’)
The solicitor acting for the Applicant was under the mistaken beliefs that all:
·evidence filed by the Applicant in relation to the opposition to registration of the Second Trade Mark (‘the Second Proceedings’) would be considered by the Registrar or her delegate in relation to the opposition to registration of the First Trade Mark (‘the First Proceeding’);
·information on the application file of the First Trade Mark would be considered by the Registrar or her delegate while making of the decision on the substantive matter involving the First Proceeding.
The solicitor, being under these beliefs, did not arrange to file any evidence in relation to the First Proceedings within the time allowed by the Regulations.
On discovering this mistake, the solicitor requested that the evidence filed by the Applicant in relation to the Second Proceedings be considered by the Registrar as information in terms of regulation 21.19 of the Trade Marks Regulations 1995 (‘the Regulations’) in relation to the First Proceedings.[1] The information comprises the following declarations:
(a) Lachlan Harrison Wheeler made on 24 November 2015;
(b) Lachlan Harrison Wheeler made on 12 February 2016; and,
(c) Lachlan Harrison Wheeler made on 16 May 2016.
[1] A chronology of these events is annexed to this decision.
The Applicant also asks that the Registrar take into account in the First Proceedings the following declaration filed by the Applicant prior to acceptance of the First Trade Mark:
(d) Alison Hardacre made on 26 November 2014 (‘the Hardacre Declaration’) filed during examination of the First Trade Mark.
The Opponent has opposed these requests. While it is usual that the issue of what I will term ‘regulation 21.19 information’ be argued by parties at the hearing of the substantive matter, there are other issues in question here which are, to an extent, dependent on the outcome of the Registrar’s decision. The first is, if the Registrar’s decision is adverse to the Opponent how, and when, the Opponent be afforded the opportunity to respond to the regulation 21.19 information in the First Proceedings. The second is if it is appropriate that these two matters be heard together.
Accordingly, a hearing was convened in Canberra on 7 November 2016 so that I, as a delegate of the Registrar, could hear the submissions of the parties in relation to the regulation 21.19 information and subsequently, if necessary, issue appropriate directions on behalf of the Registrar in relation to both any information the Opponent might wish to place before the Registrar and if a joint hearing of these matters may be appropriate. Mr AR Lang of Counsel, instructed by Robert Arnold of Baker & Mackenzie, represented the Opponent.Tom Cordiner, Senior Counsel, instructed by Hugh Maclaren of Meerkin & Apel, Lawyers, appeared for the Applicant.
Regulation 21.19
Regulation 21.19 of the Regulations provides:
21.19Registrar may use information available
(1)If:
(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d)provide the information to the party; and
(e)give the party a reasonable opportunity to make representations about the information.
(2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
At the outset of my discussion I will mention that the Opponent made extensive submissions concerning regulation 5.15 of the Regulations and the Applicant’s failure to comply with that regulation, thus bringing, in my view, a potential limitation upon proper consideration of regulation 21.19 if I were take that failure by Applicant into account. The heading of regulation 21.19, ‘Registrar may …’, makes it plain that the provision is a discretionary power of the Registrar; the wording of regulation 21.19 does not specify that it is subject to regulation 5.15 or, indeed, any other provision of the Regulations or of the Trade Marks Act 1995 (‘the Act’).
In Richard Hall, Re[2] the Registrar’s delegate, Ms Murray, discussed considerations that affect the exercise of the Registrar’s discretion which I adapt to this discussion:
· In the absence of nominated factors against which the discretion is to be exercised, regard should be had to the “subject-matter, scope and purpose of the Act” - per Justice Mason (as he then was) in Minister for Aboriginal Affairs and Another v Peko-Wallsend Limited and Others [1986] HCA 40; (1986) 162 CLR 24 at 39-40. A further exposition of this is provided by the comments of Justice Davies in Chalk v Commissioner for Superannuation [1994] FCA 1063; (1994) 50 FCR 150 at 154 (‘Chalk’s case’) where he said “... the discretion should be exercised by reference to the words of the statute and the context within which the discretion is conferred”;
· A legislative provision providing for the exercise of a discretion … is beneficial in nature and should be applied beneficially (Davies J in Chalk’s case at 155). [Albeit in that case in relation to an extension of time]
[2] [1997] ATMO 69.
Ms Murray also drew attention to the following factors:
· The public interest;
· The relative convenience to the parties concerned; and
· The desirability of operating the (trade mark) system efficiently and without unreasonable delays.
Further, Ms Murray stated:
[In Shanahan’s] Australian Law of Trade Marks and Passing Off, at page 81, he says:
Where the Registrar does exercise a discretionary power under the Act, the primary concern will be the public interest, but other circumstances may be relevant, including the bona fides of the parties, the position in other jurisdictions and the balance of convenience. It has been said that the Registrar’s discretion should be exercised “upon judicial principles and affected neither by caprice nor over-caution” and that an application which is bona fide should not be refused on a ground which is “fanciful” or “in a business sense, unsubstantial”.
Thus the Registrar’s discretion is not constrained by reference to regulation 5.15 or the nature of the circumstances that gave rise to the exercise of that discretion but rather to the ‘subject-matter, scope and purpose of the Act’ and, I would add, of the Regulations.
In the Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) at page 29 it is stated:
Current regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. Following the restructuring of the Trade Marks Regulations by item 11, the Registrar will still have the discretion to consider whether the information is relevant and whether it should be taken into account. However, it is not intended that the provisions of current regulation 21.19 be used as a substitute for the repealed further evidence provisions. [Stress in original]
Concerning the operation of regulation 21.19, the parties both referred me to the decision of the Registrar’s delegate, Mr Wilson, in Fed Square Pty Ltd v Federation IP Pty Ltd[3] (‘Fed Square’) in which he considered the nature and operation of regulation 21.19 of the Regulations. In his discussion the delegate alluded to the consequences of not considering the regulation 21.19 information in the substantive matter. In order that I can properly discuss the similar consequences here, it is necessary to outline general terms what I perceive to be the nature of the regulation 21.19 information and its relevance to these proceedings. In doing so, I am conscious that a close focus on conclusions about the import of the content of the regulation 21.19 information might be viewed as being prejudicial to the substantive matters.
[3] [2015] ATMO 42.
The regulation 21.19 information is, as is outlined above, with the exception of the Hardacre Declaration, the evidence which was filed by the Applicant in relation to the Second Proceedings; this information concerns the genesis of the First Trade Mark. The Hardacre declaration is asserted to go to the Applicant’s prior use of the First Trade Mark in Australia, before the Convention Date claimed by the Second Trade Mark. The regulation 21.19 information thus may go to issues concerning the alleged prior continuous use of the First Trade Mark and/or the disputed ownership of the First and Second Trade Marks in Australia.
In Fed Square[4], the Delegate said of Regulation 21.19:
Regulation 21.19 has been present as it appears in the Regulations since the commencement of the Trade Marks Regulations 1995 (Cth). The application of 21.19 is discretionary, allowing the Registrar of Trade Marks on her own initiative to take into account information available to her, but it does not require the Registrar to do so. A party cannot compel the Registrar in this regard. In addition, it is not sufficient to highlight that the material is relevant to proceedings - the Registrar still has to decide whether or not to take the information into account in making the substantive decision.
Historically, regulation 21.19 has been utilised by delegates of the Registrar to take into account information provided at examination that was not served for opposition purposes,[5] or for material arising from notices to produce[6] and other information the delegate became aware of that was pertinent to the proceedings.[7] In essence, the applicability of regulation 21.19 is not limited in the type of material it may allow into proceedings. Neither is the regulation limited to a particular point at which it may be considered, although it has ordinarily been applied by the delegate at around the time the substantive opposition matter is heard and after the other party has had an opportunity to respond.
[4] Ibid at [35].
[5] Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80.
[6] Lodestar Anstalt v Austin, Nichols & Co Inc [2009] ATMO 38; (2009) 82 IPR 308.
[7] Davide Campari-Milano SpA v Perfection Fresh Australia Pty Ltd [2008] ATMO 53.
In Fed Square, the Delegate quoted the Registrar’s Delegate, Ms Murray’s statement in in Seven Network (Operations) Limited v Giorgio Armani S.P.A., Milan, Swiss Branch Mendrisio[8]:
It is clearly desirable that unnecessarily protracted opposition proceedings be curtailed by these recent changes to our legislation. However, the important principle that a serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision, has not been diminished by these changes. It cannot but remain a potent factor to be weighed into the balance whenever a delegate exercises discretion under the legislation that has the potential to exclude evidence critical to an opposition outcome.
[8] [2013] ATMO 70 at [16].
Mr Lang, for the Opponent, submitted that the following passage in Fed Square[9], indicates that I should take into account the delay of some six months between the elapse of the period for Evidence in Support and the making of the request for the information be considered under the provisions of regulation 21.19:
The Opponent’s evidence is immediately available (having been filed seven days after the due date) and constitutes the primary basis for the oppositions to the Trade Marks.
[9] Op cit at [38].
However, in the context of Fed Square, I do not consider that this was intended to be a statement of general principle and to be at odds with the Delegate’s previously quoted statement that, ‘Neither is [regulation 21.19] limited to a particular point at which it may be considered, although it has ordinarily been applied by the delegate at around the time the substantive opposition matter is heard and after the other party has had an opportunity to respond.’ By their very nature, most requests made to the Registrar which cite regulation 21.19 will be made late.
In the circumstances of this matter, I note that:
· The regulation 21.19 information is relevant to the First Proceedings;
· The request arises from what is conceded by the Applicant’s solicitor to be a genuine mistake;
· As soon as the Applicant’s solicitor became aware of his mistake, he moved to rectify it;
· The regulation 21.19 information was all before the Registrar when the request was made;
· All of the regulation 21.19 information was before both parties when the request was made; (the Opponent having received the, possibly redacted, Hardacre declaration via a Freedom of Information request in April 2015);
· The possible consequences of denying the request are substantial delays in the proper determination of both the First and Second Proceedings and thus considerable uncertainty for the parties about the status of their trade marks as further applications for registration and further oppositions to registration might need to be considered.
In the light of the above considerations, I consider it appropriate that the Registrar exercise her discretion to take the regulation 21.19 information, at [5] and [6], above, into account in making a decision in relation to the First Proceedings.
Directions
Regulation 5.19 provides:
5.19Registrar may give direction
(1)The Registrar may give a direction in relation to an opposition to which this Part applies:
(a)if requested by a party in writing; or
(b)on the Registrar’s own initiative.
(2)If the Registrar proposes to give a direction, the Registrar must give the parties an opportunity to make representations about the direction.
Joint hearing of the First and Second Proceedings
The Opponent has objected to my proposal that the First and Second Proceedings heard together stating ‘the opposition to the [First Trade Mark] would involve a discrete question involving no difficulty as to overlapping evidence or risk of inconsistent decisions.’ And that, ‘The requirements of prior continuous use [under subsection 44(4) of the Act] are, however, in various respects different from the requirements of section 58.’
However, as I have foreshadowed in paragraph [17], above, both provisions require the Registrar’s assessment of the use of the parties’ trade marks.
In addition, I note that there are other considerations:
· Reduction of costs to both the parties and to the Registrar;
· Administrative convenience; and, if heard separately, potentially two different delegates of the Registrar would be required to familiarise themselves with evidence/information which is to all intents identical;
· Any appeals from the Registrar’s decisions reach the Courts at the same time.
I therefore direct that the matters be heard at the one hearing, the details of where and when to be agreed by the Registrar and the parties.
Further information
In terms of regulation 5.19, in the interests of procedural fairness, I propose to direct that:
1. The evidence already filed by the Opponent in relation to the Second Proceedings be regarded as regulation 21.19 information in relation to the First Proceedings;
2. The Opponent informs the Registrar within two weeks of the date of this decision if it wishes to file further regulation 21.19 information in relation to the First Proceedings in response to the Applicant’s regulation 21.19 information.
In the absence of representations filed by either party filed within two weeks of this decision concerning the proposed directions at [29.1] and [29.2], above, the Registrar will regard these directions as having effect.
Costs
Both parties have requested their costs. The Opponent submits that, ‘As the present application involves an indulgence sought by the Applicant, the Opponent seeks its costs of the present hearing in any event’.
The Applicant, for its part, submits that, ‘[The Applicant] accepts it has sought the indulgence of the Registrar in requesting that information be considered under regulation 21.19. However, Apple Inc has chosen to object to this request. Accordingly, from the time Apple Inc has resisted the application of regulation 21.19, costs should follow the event of this part of the dispute in accordance with the official scale. As occurred in Fed Square, costs orders for hearings on interlocutory matters ought to generally follow the event though it may be observed that in the present case, Health Kit Pty Ltd has not pursued what would be in all likelihood an unsuccessful application under regulation 5.15’.
I consider that there is merit in both of the above viewpoints and, having regard to the circumstances in which these proceedings have arisen which are conceded to be a mistake on the part of the Applicant, deem it appropriate that both parties bear their own costs in relation to these proceedings. I according make no award.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
6 December 2016
Annexure
Trade Marks Act 1995 (Cth)
IN THE MATTER OF:
Australian Trade Mark Application No. 1626348
In the name of HealthKit Pty Ltd
-AND-
Opposition thereto by Apple Inc
Legend:
CHRONOLOGY
| Date | Description |
| 04/02/2014 | Apple Inc. (“Apple”) applies to register HEALTHKIT in Trinidad & Tobago. |
| 03/06/2014 | Healthkit Pty Ltd (“Healthkit”) applies to register HealthKit in Classes 9, 35, 36, 41, 42, 44 and 45 in Australia (application no. 1626348). |
| 29/07/2014 | Apple applies to register HEALTHKIT in Classes 9 and 14 in Australia claiming Convention priority date of 4 February 2014 (application no. 1637556). |
| 26/11/2014 | Declaration of Alison Hardacre dated 26 November 2014 filed in response to adverse report issued in respect of 1626348. |
| 19/03/2015 | Acceptance of 1626348 advertised. |
| 16/04/2015 | Acceptance of 1637556 advertised. |
| 19/05/2015 | Notice of Intention to Oppose 1626348 filed. |
| 16/06/2015 | Notice of Intention to Oppose 1637556 filed. |
| 06/07/2015 | Statement of Grounds & Particulars filed in 1626348 opposition. |
| 21/07/2015 | Statement of Grounds & Particulars filed in 1637556 opposition. |
| 17/08/2015 | Notice of Intention to Defend filed in 1626348. |
| 20/08/2015 | Notice of Intention to Defend filed in 1637556. |
| 19/11/2015 | Apple’s evidence in support of 1626348 opposition filed (declaration of LaPerle dated 18 November 2015). |
| 24/11/2015 | Healthkit’s evidence in support of 1637556 opposition filed (declaration of Wheeler dated 24 November 2015). |
| 24/02/2016 | Deadline for Healthkit to file evidence in answer in 1626348. |
| 02/03/2016 | Apple’s evidence in answer in 1637556 filed (LaPerle dated 29 February 2016; Arnold dated 1 March 2016; Farrow dated 1 March 2016). |
| 07/03/2016 | Healthkit applies for extension of time to file second declaration of Wheeler dated 12 February 2016 in support of 1637556 opposition. |
| 11/04/2016 | Apple applies for hearing in 1626348. |
| 16/05/2016 | Healthkit’s evidence in reply in 1637556 filed (third declaration of Wheeler dated 16 May 2016). |
| 21/07/2016 | Apple applies for hearing in 1637556. |
| 08/09/2016 | Hearing Officer (Iain Thompson) notifies parties that hearing of 1626348 to take place on 7 November 2016. |
| 08/09/2016 | Application by Healthkit for 1626348 and 1637556 oppositions to be heard together. |
| 16/09/2016 | Healthkit files application pursuant to Regulation 21.19 in 1626348. |
| 19/10/2016 | Healthkit files declaration of MacLaren dated 19 October 2016 in support of Regulation 21.19 application in 1626348. |
| 07/11/2016 | Hearing of application pursuant to Regulation 21.19 application in 1626348. |
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