Badger's Brook Pty Ltd v Domaine Jardin Pty Ltd

[2010] ATMO 120

TRADE MARKS ACT 1995

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

Re:Opposition by Badger's Brook Pty Ltd to registration of trade mark application 1197097(33) - SPINIFEX - filed in the name of Domaine Jardin Pty Ltd.

-and-

Admissibility of Further Evidence

Delegate:	Debrett Lyons
Representation:	Opponent: written submissions only Applicant: written submissions only
Decision:	2010 ATMO 120 Regulation 5.15: Application to serve further evidence allowed. No costs awarded.

Background

1. Domaine Jardin Pty Ltd (‘the applicant’) is the applicant for registration of the trade mark SPINIFEX in class 33.  Following examination, the application was accepted for possible registration and advertised in the Official Journal of Trade Marks.

1. Badger's Brook Pty Ltd (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), opposing registration of the trade mark.

2. The parties duly served and filed evidence in support, evidence in answer, and evidence in reply to the opposition after which the matter was scheduled to come before me for hearing in Melbourne on 19 October 2010.

3. On 12 October 2010 the applicant filed an application seeking permission to serve further evidence in the proceedings (‘the application’).  On 15 October 2010, I indicated to the parties that I had still not seen that application and so I directed that the substantive issues would no longer be considered at the scheduled hearing.  Rather, I directed that should the parties still wish to be heard, the hearing would be for the purpose of taking submissions as whether the application to serve further evidence should be allowed.

4. On 18 October 2010 their respective counsel briefed to appear in the matter advised me that the hearing was no longer required and that both sides would rely on written submissions.

   Discussion

5. Both parties made written submissions.  By a letter dated 30 November 2010, but received at the Trade Marks Office on 25 October 2010, the opponent’s attorneys wrote:

   The opponent does not consider that the further evidence should be allowed, but nevertheless the opponent does not intend to formally contest the admission of the further evidence and will not attend the hearing scheduled.

   From the limited time that we have had to review the further evidence, it is apparent that most if not all of the further evidence could have been obtained earlier.  The evidence attempts to rectify deficiencies in the applicant's earlier evidence which have been highlighted by the opponent's Evidence-in-Reply.  It is unusual in opposition proceedings for an applicant to have an opportunity to serve evidence which replies to the opponent's Evidence-in-Reply. Further evidence is usually permitted to allow a party to bring information to the Registrar's attention which has only recently come to light.  Further, it is not presently clear whether the further evidence will have any material or important impact on the outcome of the proceedings.  It is doubtful whether the further evidence meets the criteria for admissibility. 

   In the event that the further evidence is admitted to the proceedings the opponent should have the opportunity to serve Evidence-in-Reply to that evidence.  Accordingly, the opponent requests that you grant a two (2) month window to serve such evidence.

6. In spite of the opponent’s statement that it does not formally contest the application, it remains my duty to decide whether the application should be granted.  Clearly, the opponent’s no-contest position is one factor to be taken into account.

7. Paragraph 5.15 of the Trade Mark Regulations 1995 controls this matter.  It states that:

   5.15 Extension of period to serve evidence and service of further evidence
            (1)   A party to the opposition proceedings may apply to the Registrar:
                   (a)    for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or
                (b)    for permission to serve a copy of further evidence on the other party.
            (2)   The Registrar may grant an application on reasonable terms specified by the Registrar.
            (3)   The Registrar must not grant an application unless the Registrar:
                   (a)    is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
               (b)    has given the parties a reasonable opportunity to make representations concerning the application; and
                   (c)    is reasonably satisfied that:
      (i)    in the case of an application to which paragraph (1) (a) applies -- the extension of the period for serving a copy of the evidence; and
     (ii)    in the case of an application to which paragraph (1) (b) applies -- permission to serve a copy of further evidence;
      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)   If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

8. Paying particular regard to sub-paragraphs 5.15(3)(b) and 5.15(4), the parties have been given the opportunity to be heard and they have elected to make written submissions on which I base my decision.

9. Sub-paragraph 5.15(3)(c) provides that, as the Registrar’s appointed delegate, I must not grant the application unless I am satisfied that the admission of further evidence is appropriate in the circumstances.  Factors of relevance in making that determination include (i) whether, with reasonable diligence, the evidence could not have been obtained earlier; (ii) whether the evidence is likely to have an important effect on the outcome; and (iii) whether the evidence appears credible.[1]

   [1] Ladd v Marshall (1954) 1 WLR 1489

10. The application made 12 October 2010 is for permission to serve statutory declarations, which were appended to the application.  The declarations were made by:

    (a)       Jason Schwarz dated 22 September 2010;

    (b)       Jaysen Collins dated 6 October 2010;

    (c)       Paul Beard dated 8 October 2010;

    (d)       David Thomas dated 11 October 2010; and

    (e)       Peter Schell dated 11 October 2010.

11. The applicant concedes that the further evidence could have been obtained earlier.  It also accepts that not all of the further evidence strictly addresses the opponent’s evidence-in-reply.  Nevertheless, the applicant submits that the further evidence is pertinent to the central question of the opposition, namely, whether the applicant used the trade mark SPINIFEX in respect of wine earlier in time than the opponent.

12. My brief assessment of the opposition is that the key issue is ownership of the trade mark as determined principally by section 58 of the Trade Marks Act 1995.  Within that context the further evidence appears to come from credible declarants and is germane to resolution of the central points of contention between the parties.

13. I am prepared, in this case, to overlook the applicant’s haphazard approach to the defence of it application for registration.  My principal reason for doing so is that it is also relevant that I pay attention to the inconvenience which might be caused to the opponent should the application be allowed.   As noted, the opponent has not formally objected to the application, but instead asks for a two month period to respond to the further evidence should it be allowed into proceedings.

    Decision

14. In these circumstances and bearing in mind that the opponent has not, to date, expressed any serious urgency that the opposition be resolved quickly, my decision is to allow the application.

15. My understanding is that a copy of the further evidence was served on the opponent in October and so I direct that the opponent responds to the further evidence, if at all, no later than 2 February 2011.  I note in my decision here that any application by the opponent for more time to react to the further evidence beyond 2 February 2011 will be viewed critically.

    Costs

16. In the circumstances, I make no award of costs.

    Debrett Lyons
    Hearings Officer
    Trade Marks Hearings
    2 December 2010