Brilliance Publishing, Inc v My Brilliance Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Brilliance Publishing, Inc to registration of trade mark application 1655691 (9, 16, 41) BRILLIANCE PUBLISHING & Device in the name of My Brilliance Pty Ltd

Delegate:

Michael Kirov

Representation:

Opponent: Angus Lang of Counsel, instructed by Melissa Anderson of King & Wood Mallesons

Applicant: Relied on written submissions

Decision:

2018 ATMO 144

Opposition under s 52 of the Trade Marks Act 1995: Request under reg 21.15 of the Trade Marks Regulations 1995 to rely on evidence filed out of time refused – s 60 considered – confusion likely due to reputation of Opponent’s trade mark – opposition established.

Background

This is an opposition brought by Brilliance Publishing, Inc (“the Opponent”) under s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below by My Brilliance Pty Ltd (“the Applicant”):
Application Number:              1655691
Filing Date:  30 October 2014
Trade Mark:  (“the Opposed Mark”)
Goods:Class 9: Electronic publications, namely, downloadable electronic publications in the nature of books, magazines and periodicals in the field of fiction and non-fiction; audio books in the field of fiction and non-fiction; electronic publications(downloadable), publications downloaded in electronic form from the Internet, books and publications recorded on disc, tape and electronic form; electronic publications (downloadable); audio books; electronic books; recording discs being recorded with publications, audio material or audio-visual material and not being recorded with software; compact discs, DVDs and other digital recording media being recorded with publications, audio material or audio-visual material and none being recorded with software; audio books in the field of fiction and non-fiction; audio books in the nature of novels; downloadable MP3 files, MP3 recordings, digital audio files, digital multimedia files and podcasts (downloadable) featuring music, audio books and audiovisual material; downloadable audio books in the field of fiction and non-fiction; downloadable audio works; downloadable visual works, audiovisual works, literary works, audio books, and electronic books on a variety of topics; electronic publications (downloadable) featuring images, photographs, magazines, periodicals, newsletters, and journals on a variety of topics
Class 16: printed matter; photographs; Printed stationery; artists' materials being printed matter; office requisites being printed matter; instructional and teaching material (except apparatus); books; fiction and non-fiction books on a variety of topics; printed books, namely, a series of fiction and non-fiction books on a variety of topics; comic books; graphic novels; stories in illustrated form and comic book stories, storyboards, and printed artwork; periodicals in the field of comic book stories, storyboards, and artwork; magazines; newspapers on a variety of topics; newspapers and photographs of general interest; journals, periodicals, and newsletters on a variety of topics
Services:Class 41: Publishing of printed matter and books; online electronic publishing of books, audio books and periodicals; publishing of reviews of literary works and audio books; publishing of electronic publications, audio books, literary works, and electronic books; online electronic publishing of books and periodicals; publishing of reviews of literary works; education; providing of training; providing online non-downloadable comic books and graphic novels; Providing seminars in the field of literary works and publishing; Publishing of reviews of literary works; Publication of e-newsletters and sample chapters and excerpts from books and literary works; providing non-downloadable prerecorded audio, audiovisual, and multimedia works featuring entertainment, movies, television, audiovisual works, music, audio works, books, theatre, literary works, and multimedia presentations via the internet or other computer or communications networks; providing online newsletters featuring entertainment, movies, television, audiovisual works, music, audio works, books, theatre, literary works, and multimedia presentations; educational services in the nature of classroom instruction and on-line distance learning on topics of current events, education, history, language, liberal arts, math, business, science, hobbies, technology, culture, sports, arts, psychology, philosophy, cosmology, spirituality, religious evolution, sociology, research in emotive behavior; educational services in the nature of podcasts, webcasts, and continuing programs featuring news and commentary in the field of entertainment, movies, television, audiovisual works, music, audio works, books, theatre, literary works, and multimedia presentations; publishing of books, magazines, periodicals, literary works, visual works, audio works, and audiovisual works; providing non-downloadable pre- recorded audio, visual and audiovisual works via wireless networks; providing on-line interactive stories; providing online newsletters and blogs featuring entertainment, movies, television, audiovisual works, music, audio works, books, theatre, literary works, sporting events, recreational activities, leisure activities, tournaments, art, dance, musicals, exhibitions, sports instruction, clubs, radio, comedy, contests, visual works, games, gaming, festivals, museums, parks, cultural events, concerts, publishing, animation, current events, fashion shows, and multimedia presentations; publication of excerpts from books, periodicals, and literary works; interactive educational services in the nature of computer-based and computer-assisted instruction on topics of current events, education, history, language, liberal arts, literature, math, business, science, hobbies, technology, culture, sports, arts, psychology, and philosophy; educational services in the nature of podcasts, webcasts, and continuing programs featuring news and commentary in the field of movies, television programs, audiovisual works, music, audio works, books, theatre, literary works, sporting events, recreational activities, leisure activities, tournaments, art, dance, musicals, exhibitions, sports instruction, clubs, radio, comedy, contests, visual works, games, gaming, festivals, museums, parks, cultural events, concerts, publishing, animation, current events, fashion, and multimedia presentations accessible via the internet or other computer on communications networks; providing online electronic publications (non downloadable)
Endorsement: Provisions of subsection s 44(4) and/or Reg 4.15A(5) applied.
The present opposition follows several previous oppositions between the parties.[1] At the heart of all these disputes is the adoption by both parties of trade marks which feature the word “BRILLIANCE”,[2] variously used or proposed for use in relation to, inter alia, printed or online publications, audio recordings of books or other material and publishing services in Classes 9, 16 and 41. It is apparent from the Trade Marks Register that, like the currently opposed application, at least four of the parties’ other applications were accepted for registration by relying on prior continuous use under s 44(4) of the Act to overcome the citation of the other party’s marks.
[1] According to the available online details on the Trade Marks Register there have been some ten oppositions involving the parties since 2012.
[2] At the time of writing the Applicant had registered or applied to register 47 marks of this kind, the first dating from 1 June 2007. For its part the Opponent had registered or applied to register two such marks, the earlier of these dating from 30 June 2010.
According to the online register of the Australian Securities & Investments Commission the Applicant was incorporated on 30 May 2007 and on its website (at < the Applicant describes itself as follows:
Offering a new way of thinking and coping with Emotion Distortion, My Brilliance P/L specialises in the in-house and online publishing and education of BRILLIANCE®.
BRILLIANCE® unites science, philosophy and spirituality in a new foundation of elementary instruction that awakens humanities self evolving consciousness. [sic]
An insertion in the evolution of human emotion, BRILLIANCE® is the voice and identity of emotion, accessed and brought through Lisa Jane Holmes & Ceinwen Schneider.
Through a unique fundamental principle, the MY BRILLIANCE® Principle, we provide diagnostic tools & techniques that address the emotion fractures buried deep within the aureral field that influence the psyche and sabotage our personal and interpersonal goals of Solidarity & Bliss. [sic]
In its evidence the Opponent’s Vice President, Mark Pereira, says that:
4. The Opponent was founded in Michigan in the United States of America as Brilliance Corporation in 1984 and traded, published and supplied audiobooks under that name until 1998. In 1998, the Opponent changed its name to Brilliance Audio, Inc and began trading as Brilliance Audio.
5. The Opponent was acquired by the Amazon.com group of companies in 2007. On 9 January 2013, the Opponent’s name was changed from “Brilliance Audio, Inc” to “Brilliance Publishing, Inc.” to reflect the company’s offering of print publications in addition to audiobooks.
Acceptance of the Opposed Mark for possible registration was advertised in the Australian Official Journal of Trade Marks on 8 September 2016. The Opponent filed a Notice of Intention to Oppose on 8 November 2016, followed by a Statement of Grounds and Particulars (“SGP”) on 8 December 2016 listing grounds corresponding to ss 42(b), 44, 58, 60 and 62A of the Act.[3] The Applicant filed a Notice of Intention to Defend the application on 15 February 2016.
[3] Only four of these were eventually pressed, the s 58 ground being abandoned prior to the hearing.
The Opponent and Applicant subsequently filed evidence in support and evidence in answer respectively in a timely manner. This evidence consisted of the declarations described below, made pursuant to the Act and reg 21.6 of the Trade Marks Regulations 1995 (“the Regulations”):
Evidence in Support
▪ Mark Pereira made 19 May 2017, with Exhibit MP-1 and Confidential Exhibits MP-2 and MP-3 (“Pereira”)
▪ Melissa Susan Anderson made 22 May 2017, with Exhibits MSA-1 and MSA-3 and Confidential Exhibits MSA-2 and MSA-4 (“Anderson”)
▪ Exhibit MSA-1 to Anderson is a copy of a Statutory Declaration made by David Cully on 11 July 2014, with Exhibit MSA-2 being copies of Confidential Exhibits DC-1 to DC-4 thereto (“Cully”).
▪ Exhibit MSA-3 to Anderson is a copy of a Statutory Declaration made by Linda K. Dickert on 17 July 2014, with Exhibit MSA-4 being copies of Confidential Exhibits 1 to 4 thereto (“Dickert”).
I note that the originals of Cully and Dickert were filed with IP Australia as part evidence in answer to an opposition by the present Applicant to the present Opponent’s then application (now registration) 1369408 BRILLIANCE AUDIO in Classes 9 and 41.[4]
[4] A delegate of the Registrar dismissed that opposition and a subsequent appeal to the Federal Court was, by consent, dismissed by McKerracher J with no order as to costs.
Evidence in Answer
▪ Lisa Jane Holmes made 25 August 2017 (“Holmes 1”)
The matter was later scheduled for hearing on 1 August 2018 before me, as a delegate of the Registrar of Trade Marks, in Canberra. The Opponent’s attorneys, King & Wood Mallesons, advised that Angus Lang of Counsel, instructed by Melissa Anderson of that firm, would be appearing for the Opponent in person. As directed, the attorneys also filed written submissions by Mr Lang dated 20 June 2018.
The Applicant is currently self-represented, although I note it that it was represented by a patent and trade mark attorney firm for this and its other trade mark applications and oppositions before IP Australia until November 2015. It advised that it would not attend, or be represented at, the hearing but would rely on its written submissions dated 27 June 2018 (“the Applicant’s submissions”), these having been prepared by its co-directors Lisa Holmes and Ceinwen Schneider and filed that day as directed.
After receiving a copy of the Applicant’s submissions the Opponent’s attorneys emailed me (copying the Applicant) on 11 July 2018, stating in part:
It is apparent that the Applicant’s submissions make reference to a large body of evidence which has not been filed in the opposition, nor served on the Opponent. If the Applicant seeks to rely on this evidence in this opposition, we consider that the appropriate course is that it formally seek an extension of time in which to file this late evidence.
After reviewing the Applicant’s submissions and its evidence in answer I emailed the parties on 12 July confirming that I agreed with the attorneys’ criticism of the Applicant’s submissions, adding:
Accordingly, to the extent that the Applicant’s submissions rely on evidence which has not been filed in the present opposition proceedings in accordance with the Trade Marks Regulations 1995 I confirm I propose to give those submissions no weight. (Please however note that, to the extent it may be relevant in deciding the opposition, I am prepared to take notice of the state of the Trade Marks Register as at the filing date of the opposed application.)
On 13 July Ceinwen Schneider emailed me twice in quick succession. The first email (copied to the Opponent’s attorneys) requested “reconsideration of [my] decision” regarding the Applicant’s as yet unidentified evidence. The email stated in part:
Your decision has left [the Applicant] in a legal bind with apprehension as to which way to move forward. IP Australia has granted [the Applicant] an acceptance on evidence that for legal reasons we cannot present at opposition. We ask, to whom is our primary obligation: to our client, to the opponent and the opposition process or Freedom of Information?
In explanation for why no evidence was filed in the Opposition process,[5] we reference a letter dated 24th February 2017 by Deputy Chief Legal Counsel Samara Rodway of the Office of Legal Counsel, Freedom of Information, IP Australia [“the FOI officer”] in which they deliver a decision on the Freedom of Information request made in September 2016 [“the FOI request”] for the Evidence filed at IP Australia for trademark Application 1655691 in the name [of the Applicant] that resulted in acceptance under provision of section 44(4) of the Trademark Act 1995 [“the s 44 evidence”].
[5]In fact the Applicant did file as evidence in answer the declaration by Lisa Holmes described earlier, Holmes 1, albeit the declaration contains only what I would characterise as submissions.
There followed three pages in this first email in which Ms Schneider reproduces and comments on edited extracts from correspondence the FOI Officer had sent to the Applicant. This correspondence apparently explains the FOI Officer’s reasons for excising or redacting some of the s 44 evidence before the balance was sent to the (unidentified) party who had made the FOI request, (which Mr Lang confirmed at the hearing was the Opponent). Ms Schneider’s first email concluded:
It is our understanding that the registrar at his/her discretion has access to the unredacted acceptance evidence for trademark 1655691 and we request that this evidence is sought by the hearing officer as part of this opposition hearing, as making this evidence available to any outside party leaves [the Applicant] legally vulnerable.
Likewise, in producing our acceptance evidence in its entirety, the Applicant is being left vulnerable as the offending party referenced in Paragraphs 5 and 6 of this letter, is the Opponent.
With due respect, the Application process spans from initial Application to Registration, and it is not unlikely that the acceptance evidence be requested by the hearing officer as part of the decision in the Opposition in circumstances that don’t fall under the natural pattern.
The Department of Freedom of Information of IP Australia is now at odds with the Opposition & Hearings procedure of IP Australia, each giving the Applicant opposing instruction within the one application process.
Failure to inspect the Acceptance evidence for trademark 1655691 in its entirety in this Opposition process, (referenced chronologically in CONFIDENTIAL Annexure A) whilst we are legally bound not to present it, does severely disassemble the applicants rights to a fair hearing and outcome. [sic]
Due to the confidential nature of the Freedom of Information decision which also contains a comprehensive list of all of the redactions made, the original decision has been sent to the officer for Hearing of Trademark 1655691 exclusively.
Ms Schneider’s second email of 13 July was sent only to me and attached the FOI officer’s full 17 page determination of the FOI request dated 24 February 2017 (“the FOI determination”). The email itself stated:
Attached to this correspondence is the [FOI determination] and specifically identifies all of the redacted elements of the [s 44 evidence] as authorised by [the FOI officer]. [sic]
In accordance with this decision, we request that this document be held and treated as confidential within IP Australia to maintain the protection offered under this Freedom of Information decision. For this reason it is being distributed to the officer for Hearing of trademark 1655691 exclusively.
I acknowledged receipt of these two emails that day and said I would send a substantive response shortly. I meantime asked that the Applicant always in future copy the Opponent’s attorneys with any correspondence it sent me and I confirm that all correspondence between the parties and me since then has been so copied.
I sent a substantive response to Ms Schneider on 17 July, stating in part:
I regret that I cannot “reconsider my decision” as requested, if for no other reason than that I have not made any decision. I have merely agreed with [the Opponent] regarding a fundamental principle of the law, namely that a party may not rely on evidence that has not been filed in the proceedings or which has not been seen by the other party. In this regard what is often referred to as “natural justice” entitles each party to proceedings to see and, if it so wishes formally respond with its own evidence to, the evidence relied on by the other party.
In the present matter [the Opponent] would obviously not be able to respond to evidence it has not seen (or for that matter to evidence which it may have seen but which is not unequivocally identified). Indeed, although you have attempted to explain in your first email (copied to all concerned) “why no evidence was filed in the Opposition process” and have (as I understand it) tried to explain what evidence you do now seek to rely on, I am unable myself either to understand your explanation or to ascertain with any precision what that evidence might consist of. Your second email (sent exclusively to me) does not assist me in this regard.
Apart from natural justice considerations I do not believe it would be in either party’s interest for me to consider any material that is not clearly specified or which has not been seen by the Opponent. This is because doing so would on the face of it leave any decision I might eventually make on the actual grounds the Opponent is pressing in the opposition (based on ss 42(b), 44, 60 and 62A of the [Act]) open to challenge.
To conclude, I must confirm what I said in my email to [the parties] of 11 July last. As to your options at this point I can do no more as the eventual decision maker on the substance of the opposition to application 1655691 than recommend you seek advice from a trade mark attorney or legal practitioner experienced in the field.
On 23 July I was informed by Assistant Hearing Officer Drake of IP Australia that the Applicant had on 19 July requested a one month “extension of time to file evidence” in the opposition (from 19 July to 19 August 2018) under regs 5.15(2)(b) and 4(a). Ms Drake responded to the Applicant by email on 23 July, stating that the request was being sent to me for further response and continuing:
That said, please be aware that because the evidentiary stage of the proceedings ended some time ago it is not possible to apply for an extension of time to file evidence at this late stage. In addition, there are no longer any provisions for filing further evidence. The extension request is taken to be not receivable and you will receive a refund of the fee paid under separate cover.

I emailed Ms Schneider on 24 July confirming what Ms Drake had said, adding:
I do mention that it is in principle possible to request the Registrar to consider “evidence filed out of time” by relying on reg. 21.15(4) of the Regulations (which should be read in conjunction with reg. 21.19). Copies of these two regulations and of Part 51.2.6 of the TMO Manual of Practice and Procedure [“the Manual”], which discusses the issue of out of time evidence, are attached. As you will note from this, admission of the evidence in question is by no means guaranteed and, among other things, is contingent upon the Registrar (or her delegate) being satisfied that it is “crucial” to the eventual outcome of the proceedings. In order to assess the proposed evidence in this regard it is essential that it be clear precisely what it consists of. If the evidence is then allowed, the other party would be given the opportunity to respond with its own evidence and submissions.
In the present matter I understand the out of time evidence [the Applicant] now wishes to rely on is a heavily redacted version of some or all of [the s 44 evidence]. At this point (and notwithstanding the correspondence you have sent me and or IP Australia this month), however, it is not at all clear to me precisely what parts of the s 44 evidence [the Applicant] wants considered. A straightforward way to overcome this difficulty would be for one of [the Applicant’s] Directors to make a fresh declaration exhibiting the precise material in question, redacted as [the Applicant] sees fit.
That said, I understand reliance on s 44(4) was necessary because of the citation of [the Opponent’s] registration 1369408 (9, 41) BRILLIANCE AUDIO and its application 1551737 (9, 16, 41) BRILLIANCE PUBLISHING. While any observation I now make in relation to the s 44 evidence, (which at this point, I emphasise, I have not read), must of course be a preliminary one and subject to any submissions [the Opponent’s] attorneys might make, I tend to think its admission (in redacted form or otherwise) is unlikely to be relevant to my eventual decision in the opposition. In this regard please be aware that, for example, unlike with s 44, prior continuous use (if found) would not on the face of it prevent [the Opponent] establishing its s 60 ground of opposition (as the Federal Court has previously determined).
I also bring to your attention the fact that the Act is so structured that the examiner of application 1655691 was unable to consider ss 42(b), 60 or 62A of the Act, being three of the four grounds pressed by [the Opponent] in the present opposition.
My email went on to say:
To conclude, as the Registrar’s delegate and pursuant to reg. 5.19 I direct that, if it chooses to do so, [the Applicant] has until 4.00 pm (Canberra time) on Thursday, 26 July next to make an application in accordance with the procedure set out in Part 51.2.6 of the [Manual] and also to copy me and [the Opponent’s] attorneys with that application and the evidence in question by email.
Should such an application be made then I propose hearing [the Opponent’s] submissions on the issue at the commencement of the hearing on 1 August. Should I then determine to take the evidence in question into account I will allow [the Opponent] 14 days to file any evidence or submissions in response it wishes me to consider. There would not then be any right of reply from [the Applicant] and I would issue my decision on the substantive grounds pressed in the opposition as soon as I am able thereafter.
Ms Schneider replied that day confirming the Applicant’s intention to make such an application and on 26 July the Applicant did so (“the FE request”). The FE request was made by way of a five page letter from Lisa Holmes, the Applicant’s co-director, in which Ms Holmes referred to the matters specified in Part 51.2.6 of the Manual and which I will address presently. Accompanying Ms Holme’s email was a Statutory Declaration made by her that day exhibiting the further evidence sought to be admitted (“Holmes 2”), with Ms Holmes explaining in her declaration:
2. Evidence by way of Statutory Declarations and Supporting Exhibits by clients that Support the Applicants claims of prior use and continuous use since at least 1981 to date has been necessary, due to the extended historical period being challenged by the Opponent, which well precedes usual business record holding periods. [sic]
3. For the purposes of this court proceeding, almost all redactions made under the authority of Freedom of Information to protect the Personal Privacy s.47F (of FOi Act) and Sensitive Business Affairs s47G (of FOi Act) have been lifted to reveal all but personal and/or culturally sensitive and/or identifying information of clients who have provided Statutory Declarations. These declarations attest to early and continuous use of the ‘Brilliance’ mark since at least 1981 (PART C Exhibit CH-01), the ‘Brilliance Publishing’ mark since at least 1989 (PART A Exhibit PC-03, PC-04, PC-05, JT-04) and progression of the Opposed mark (logo) since at least 2004 (PART B Exhibit JT-05 and JT-06 Amendments) shown on products offered from declarant’s personal collections. [sic]
4. In support of these claims made by witnesses, the Applicant has provided Statutory Declarations and evidence of sales (PART A CONFIDENTIAL Exhibits LHB01 (1995 to 1999), LHB04 (1995 to 2001), LHB05 (2001 to 2007) and PART E CONFIDENTIAL CS01 (2004 to 2007) and PART E CONFIDENTIAL CS09 (2007 to 2010)), invoices (PART A CONFIDENTIAL Exhibits LHB03 (1995 to 2001), LHB06 (2001–2007)), inventory (PART E CONFIDENTIAL CS04 (2007–2014)) promotion and advertising (PART A JT03 (1993) and PART E). [sic]
There were three exhibits to Holmes 2 totaling some 1,670 pages,[6] identified as HL-01, HL-02 and HL-03. These exhibits are described below:
[6] The Applicant’s reg 21.15(4) request and accompanying evidence were filed as a single PDF document and in this decision I will specify pages within the document using the PDF pagination.
Exhibit HL01 (PDF pages 32-1664)
▪ Redacted Statutory Declaration by Ceinwen Schneider made 14 April 2016 with Exhibits (some marked “Confidential”) CS01 to CS24 and also exhibiting redacted versions of six further Statutory Declarations, some of the exhibits to these declarations and two “amendments” to the declaration by “JT” (“Schneider”).
I understand the original, unredacted Schneider declaration constituted the s 44 evidence which saw the acceptance of application 1655691 for possible registration under s 44(4) of the Act. I further understand that the original, unredacted versions of the six declarations exhibited with Schneider were filed with IP Australia as evidence in an earlier opposition or oppositions involving the same parties, or to secure acceptance for registration of one or more of the Applicant’s other trade mark applications under s 44(4). The six declarations, which in all but one case have the declarant’s name replaced with the declarant’s initials, are identified below:
▪ PC made 16 December 2015 with Exhibits PC02 to PC05 (“PC”);
▪ JT made 18 December 2015 with Exhibits JT01 to JT06, with “an Amendment to Exhibits JT05 and JT06” dated 14 January 2016 (“JT”);[7]
▪ HJ made 28 August 2015 with Exhibit HJ01 (“HJ”);
▪ Lisa Holmes made 21 December 2015 with Exhibits LHB01 to LHB06 (“Holmes 0”);[8]
▪ CH made 4 April 2016 with Exhibits CH01 to CH06 (“CH”);[9] and
▪ KH made 30 May 2013 (“KH”).[10]
Exhibit HL02 (PDF pages 1665-1675)
A copy of a decision dated 20 August 2014 by the World Intellectual Property Organization’s Arbitration and Mediation Centre. The matter concerned a complaint filed by the Applicant to the registration in April 2012 of the domain name <brilliancepublishing.com.au> by Amazon Corporate Services Pty Ltd (“ACS”). The complaint was upheld because ACS, albeit closely related to the Opponent, had not itself used a trade mark containing the word “brilliance” in Australia and the word was not contained within ACS’ corporate name. The decision nevertheless notes that had the domain name registration been in the Opponent’s name rather than that of ACS then the complaint would not have been upheld.
Exhibit HL03 (PDF pages 1676-1677)
A screenshot of an online book review of a book titled “Maximise Your Potential” published in the United States in 2013 by “Amazon Publishing.”
[7] The Applicant has not explained the provenance of the “amendments” to JT, although I note the amendments in question are the addition of two pages to each of the declaration’s Exhibits JT05 and JT06. Their significance appears to be that the four additional pages, (unlike the original exhibits), actually show the Opposed Mark.
[8] As noted by Mr Lang at the hearing, the original, unredacted PC, JT, HJ and Holmes 0 declarations were filed by the Applicant on 21 December 2015 as evidence in answer to an opposition by the Opponent to then application (now registration) 1507727 in Class 9 and full copies of the unredacted declarations were made available to the Opponent at that time. Mr Lang highlighted the fact that the Applicant’s covering letter to IP Australia which accompanied that evidence (a copy of which is contained within the Applicant’s proposed further evidence before me) specifically said of the then claimed confidential material it contained, “We understand that the [confidential material] will be available to the Opponent and their legal representatives.”
[9] Because of its redactions it is not possible to say what previous matter this declaration originally concerned. It may have been filed in an earlier opposition involving the parties, although Mr Lang did not confirm this at the hearing.
[10] This very short, two paragraph declaration has been redacted such that it is not possible to determine its original provenance. At the hearing Mr Lang was unable to say whether the Opponent may have seen a copy of the original, unredacted KH declaration in a separate opposition involving the parties, although I in any event agree with his submission that it has no relevance to the present opposition.
Following receipt on 26 July of copies of the FE request and of the proposed further evidence described above the Opponent’s attorneys emailed me that day confirming that they agreed with my proposal of 24 July to hear the Opponent’s submissions on admissibility of the evidence at the scheduled hearing on 1 August. The attorneys nevertheless noted that I had said I would allow the Opponent 14 days to respond to the further evidence if my decision was to admit it and that in this case the substantive hearing itself could obviously not proceed that day. Their email concluded:
If that occurs, then our client will have incurred unnecessary expense in relation to our and Mr Lang’s travel to Canberra[11] for a hearing which, through no fault of our client, may not proceed.
We therefore respectfully request that:
1. The hearing of our client’s submissions next Wednesday, 1 August 2018 in relation [to the Applicant’s] request take place via telephone; and
2. Following that hearing, once [the Applicant’s] request has been determined:
a. If the request is rejected, the opposition hearing be rescheduled for a date as soon as possible after 1 August 2018 convenient to the Hearing Officer and when Mr Lang is available; or
b. If the request is approved and the further evidence accepted, the hearing of the opposition be rescheduled on a date at least 14 days after the determination, convenient to the Hearing Officer and when Mr Lang is available. In the event that some or all of the voluminous evidence sought to be relied on by [the Applicant] is accepted, we reserve our client’s right to request additional time in excess of 14 days to properly deal with that evidence (noting that the evidence sought to be relied on exceeds 1,650 pages).
[11] Both the Opponent’s attorneys and Mr Lang are based in Sydney.
I responded to the parties on 27 July, agreeing to both of the Opponent’s attorneys’ requests.[12] Accordingly the hearing which took place on 1 August essentially concerned the Applicant’s FE request only, although it was also necessary to explore the Opponent’s substantive grounds of opposition to some extent in order to gauge the possible relevance of the proposed further evidence to them.
[12] Although in the event Mr Lang (instructed by Melissa Anderson of the Opponent’s attorneys) appeared at the hearing via video link rather than by telephone.
Determination of the Further Evidence Request
The FE request was made pursuant to reg 21.15(4), which is set out below:
The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.
For the sake of completeness I note that reg 21.19 says that if the Registrar does believe information available to her is relevant to the proceedings and proposes to take it into account in deciding the matter, then before making the decision she “must provide the information to the [other] party and give the party a reasonable opportunity to make representations about the information.”
Part 51.2.6 of the Manual, which sets out the Registrar’s current practice in relation to reg 21.15(4), relevantly states:
The decision in a trade mark opposition is an administrative decision and it is not final. The parties have the option of having the matter decided by a court. Proceedings in court are more expensive to conduct than proceedings before the Registrar and are likely to take longer. However, that is not sufficient reason to deviate from the principle that an opposition proceeding before the Registrar should be conducted as efficiently and predictably as possible. As a general rule evidence that is not filed in time is not considered by the delegate when deciding the opposition.
Nevertheless, there may be instances where the failure to consider that evidence is not in the public interest of the register being a true reflection of the marketplace. It is also undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party. The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account. The delegate may do so as he or she is not bound by the rules of evidence, but may be informed on any matter in a way that he or she reasonably believes to be appropriate (reg 21.15(4)).
The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered. The issues the filing party needs to address in its submissions include:
·     If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier
·     What the evidence shows
·     Why that information is crucial to the delegate’s decision
·     Why it is in the public interest to have the information considered
·     What is the balance of convenience for the parties if the information is considered.
As mentioned, the FE request was made by way of a five page letter from Lisa Holmes in which Ms Holmes addressed each of the five matters specified in Part 51.2.6 of the Manual. At the hearing on 1 August last Mr Lang made submissions on each point. These five matters are discussed below.
As to why the evidence was not filed earlier, Ms Holmes pointed to the FOI determination, submitting that:
1. Due to Freedom of Information concerns not yet established at the time of our Evidence in Answer to Opposition 1655691 responsibilities, we were not able to submit that evidence which substantiates our whole claim.
2. Duties relegated accordingly, this evidence has now become available for submission. The Applicant requests permission to file crucial evidence that validates the Applicants claims made in [the Applicant’s submissions]. As the evidence herein was crucial to the Acceptance of the opposed mark it is as equally crucial to this Opposition to gain a fair outcome for the Applicant. [sic]
3. Being mindful of the unreasonable adverse effect that would reasonably be expected to result from disclosure of this information, and the circumstances in which the information was communicated to IP Australia, and the responsibilities of [the Applicant] to protect client confidentiality and sensitive business affairs established under Freedom of Information rule, it has been beyond the Applicants control to in good faith submit this evidence for Opposition examination in its unredacted form until permissions and/or further legal counsel had been sought. [sic, with original emphasis]
4. Due to the sensitive and confidential nature of the statutory declarations provided by the witness declarants we have had no other alternative than to be cautious and diligent to our responsibility’s as health care professionals. [sic]
Ms Holmes goes on, essentially, to repeat the above matters, before concluding:
7. We have had particular difficulty in further establishing the legal ramifications of releasing particular relevant evidence to a third party and/or into the public arena. Evidence that is directly applicable to this Opposition made exempt from public disclosure through Freedom of Information has been stalled due to legal statutes and we have desisted in countering this until further appropriate legal advice was sought. [sic]
8. The Applicant has now sought further external legal advice as to its rights and the rights of our witnesses (declarants) on FOi exempt statutory declarations and evidences, which constitute a substantial proportion of our examination acceptance evidence and therefore our opposition evidence. [sic]
As to what the proposed evidence shows, Ms Holmes says no more than that it “substantiates all claims made in the [Applicant’s submissions]” and in particular that it “substantiates claims made in response to sections 44, 62A, 42 and 60 in the Applicants Submission and its rights to registration of the opposed mark.” (sic)
As to why the evidence is crucial to deciding the opposition, Ms Holmes says:
12. This evidence shows that the Applicant has used the Opposed mark BRILLIANCE PUBLISHING in its entirety since at least 1989. The Opponent has provided evidence of use with the mark BRILLIANCE AUDIO mark since 1999. The Applicants evidence shows use at least 10 years prior to the Opponents claim and shows unequivocally that the Applicant does have the right to registration of the relevant mark in AUSTRALIA. [sic]
13. The Applicants evidence shows prior and continuous use of the BRILLIANCE and BRILLIANCE PUBLISHING marks from as early as 1981, by way of product, service, sales and promotion. This evidence was submitted during the examination process for the Opposed mark, and contributed to the acceptance of the Opposed mark. Being unable to submit this evidence would cause a critical blow to the Applicants trademark rights and longstanding reputation in Australia. [sic]
14. As this evidence was crucial for an acceptance of the opposed mark under provisions of subsection 44(4) and/or Reg 4.15A (5), it is equally as crucial to defend against section 60 in response to opposition claims by the Opponent. [sic, with original bolding]
Therefore, it is crucial that the Applicant’s evidence be summitted to substantiate its prior use right and reputation of the opposed mark in order to reach an un-bias and fair decision. [sic]
15. If the Applicant’s evidence is not admitted and a decision is made without it, this will establish a false positive.
Ms Holmes goes on to say that, “If a bias and unfair decision is made through the omission of this crucial evidence, the Applicant’s mark will be left vulnerable” (sic), concluding:
17. It would be a tragedy for the Applicants business and solid long standing reputation if this crucial evidence was rejected for admission because of a missed filing date, which was out of the Applicants control, evidence that would have been accepted without question if filed in time. A life times work sacrificed for failing to comply with a administrative procedure, as BRILLIANCE is our product. [sic, original emphasis retained]
18. It is crucial that the Applicant’s BRILLIANCE and BRILLIANCE PUBLISHING evidence be admitted for late submission for this opposition to protect our business, our reputation, our family of BRILLIANCE trademarks and our extensive body of BRILLIANCE products and services that are founded on a 37 year legacy.

As to why it is in the public interest to admit the evidence, Ms Holmes says:
19. It is in the public interest and the interest of any parties involved in this opposition that these proceedings provide an accurate, un-bias and fair outcome. With the Admittance of the Applicant’s evidence this can be decided. [sic]
20. In denying the inclusion of the Applicant’s evidence an outcome falls indentured into a bias and prejudice result. Admittance of this evidence would secure the rights of this mark once and for all. [sic]
21. This evidence shows use of the opposed mark in its entirety and the dedication of the Applicant to keep the concepts in the hearts and minds of Australians for over three decades. By contrast the Opponent has only shown evidence of intention to use. If the decision was made without the inclusion of the Applicants evidence a false positive would result. [sic]
As to the balance of convenience, Ms Holmes submits:
22. The consideration of this evidence would give a complete overview of the evidence from both parties, to ensure that both parties have the balance of equality, rather than a decision being made on partial representation that would render an unbalanced and bias outcome that would fall in favour of one party and forfeit the true rights of the mark for the other. [sic]
In response Mr Lang firstly noted that the relevant amendments to the Regulations in 2013 were intended to remove the scope for late filed evidence and that reg 21.15(4) was not intended as a means of circumventing those amendments. Accordingly, he said, “where the evidence sought to be introduced via reg 21.15 essentially consists of material that could have been filed within time if the issue had been addressed with appropriate diligence,” then “considerable caution is to be exercised against the suggestion that it should be admitted under reg 21.15.” In particular, he submitted, two key matters would need to be clearly addressed by the Applicant, firstly “a frank and detailed explanation for the lateness of the evidence” and secondly “a proper explanation of its relevance.”
On the first point, he characterized the Applicant’s explanation for the lateness of the evidence as “difficult to comprehend.” Noting that the explanation “makes repeated reference to Freedom of Information processes and redaction of confidential material,” he questioned why the FOI determination should have any relevance at all to the issue. In this regard the Opponent originally made the FOI request in September 2016 and, after objections by the Applicant had been considered by the FOI officer, the material sought was eventually released to the Opponent with redactions on 6 April 2017. The Opponent then filed its evidence in support in May 2017 and the Applicant’s deadline for filing evidence in answer was set at 25 August 2017. This, as Mr Lang highlighted, was almost five months after the FOI determination. Moreover, the Applicant was obviously aware of its 25 August deadline because it filed Holmes 1 that day as constituting its evidence in answer.
Mr Lang also challenged the Applicant’s claim that the proposed evidence was provided to IP Australia “exclusively for the trademark examination process” relating to the opposed application. As regards Exhibit HL01 to Holmes 2, he highlighted the fact that complete, unredacted copies of at least four of the six declarations exhibited with Schneider and now sought to be relied on, (PC, JT, HJ and Holmes 0), were provided to IP Australia and to the Opponent in 2015 in an earlier opposition involving the Applicant’s now registration 1507727 in Class 9 for the mark BRILLIANCE. One of the remaining two declarations exhibited with Schneider, (KH), was made in May 2013 and, whereas Mr Lang was unable to confirm whether the Opponent had previously seen an unredacted copy, it too was originally filed with IP Australia in an earlier matter. As to the sixth exhibited declaration (CH) and Schneider itself, both originally filed with IP Australia in April 2016, the only redactions in the declarations now sought to be relied upon are inconsequential from an evidentiary point of view. In the case of CH the sole redaction is removal of the declarant’s full name. In the case of Schneider, the full names of the declarants referred to have likewise been replaced with initials and the only other redaction is excision of the name of a business which provided data recovery services to the Applicant in 2015 relating to a damaged computer hard drive.
Nor, Mr Lang pointed out, could the FOI determination explain why the material forming the remaining two exhibits to Holmes 2, Exhibits HL02 (a 2014 decision concerning a domain name dispute) and HL03 (a screenshot of a 2013 online book review), could not have been filed earlier. Both, he noted, consisted of material that had been publicly available well before the Applicant’s evidence deadline in August 2017 and neither had been redacted in any way.
Turning to the questions of what the proposed evidence shows and whether or not it would be “crucial” to my decision in the substantive opposition, Mr Lang noted, reasonably in my view it must be said, that the Applicant’s explanation “contained broad statements and was devoid of any detail as to its actual relevance to the present opposition.” As a consequence he submitted that both the Opponent and I “were put in a difficult position because there are over 1600 pages of material and the vagueness of the submissions force us to review it to divine its relevance.” Nevertheless, as he went on to explain, “It does appear that vast amounts of it are plainly not relevant.”
By way of example Mr Lang concentrated on Holmes 0 (PDF pages 121-1446), one of the six declarations exhibited with Schneider and which constitutes most of the proposed further evidence. This declaration was made in 2015 and concerns “My Brilliance sessions,” being lectures conducted by Ms Holmes from 1995 to 2007. He pointed out that of the more than 1,300 pages making up Holmes 0 none actually shows use of the Opposed Mark. In this regard I note Ms Holmes describes Exhibit LBH01 to Holmes 0 (PDF pages 126-132) as “show[ing] sales of Gift Vouchers between 4/8/95 and 29/12/99 for ‘BRILLIANCE WHERE DOES IT BEGIN FOR YOU’ sessions,” but that the only trade mark shown is that below:
“the BRILLIANCE tree mark”
In like vein, Ms Holmes describes Exhibit LBH02 to Holmes 0 (PDF pages 133-137) as the “BRILLIANCE inspiration pack,” also provided to session participants, “which contained an audibly rendered cassette tape titled ‘BRILLIANCE WHERE DOES IT BEGIN FOR YOU’ on the front and ‘YOUR PERSONAL TRANSCRIPT OF BRILLIANCE’ on the back and advertising flyers and an information booklet.” Again, the sole trade mark shown on these materials is the BRILLIANCE tree mark.
Mr Lang took me to several more examples. Specifically, he noted that none of the 350 odd pages forming Exhibit LBH03 to Holmes 0 (PDF pages 138-486), (described by Ms Holmes as “copies of invoices issued to clients that attended [these] sessions between 1995-2001, where each client received the inspiration pack displaying the BRILLIANCE mark on the product exhibited in LHB02”), bear the Opposed Mark. As mentioned, nor do the materials in the relevant “inspiration pack” shown in Exhibit LBH02. I would add that none of these invoices show any trade mark or for that matter the word “brilliance” in any form. Such is also the case with the declaration’s Exhibits LHB04 and LHB05 (PDF pages 487-497 and 498-519 respectively), being lists of names of people who apparently attended the sessions conducted by Ms Holmes from 1995 to 2001 and from 2001 to 2007. Ms Holmes says the attendees between 1995 to 2001 “received the inspiration pack that displays [the BRILLIANCE tree mark] on the product” and that attendees between 2001 and 2007 received an inspiration pack where “the mark displayed [below] was the mark used on that packaging and product”:
“the BRILLIANCE starburst mark”
As Mr Lang further noted, Exhibit LHB06 (PDF pages 520-1446), (described by Ms Holmes as “copies of client invoices from 2001-2007 who attended [sic] the ‘Unleash the BRILLIANCE Within’ Sessions”), do not bear the Opposed Mark either. In fact the invoices bear the BRILLIANCE starburst mark. Moreover, as Ms Holmes herself says, “the [BRILLIANCE starburst mark] was the mark used on [the] packaging and product” of the inspiration packs distributed to those attendees.
I do not consider it necessary or useful at this point to detail the similar deficiencies in the further five declarations exhibited with Schneider, which were made by attendees of various sessions or workshops conducted by Ms Holmes. I do nevertheless note for the sake of completeness that the Opposed Mark is shown in some of this material, being in the 14 January 2016 “amendments” to Exhibits JT05 and JT06 to the 2015 declaration by JT (at PDF pages 1450-1454) and in seven of the pages in the exhibits to the 2016 declaration by CH (at PDF pages 1492, 1495, 1497, 1503, 1507-8 and 1511), albeit that in both cases some of the examples shown appear to be repeats.
As to Exhibits CS01 to CS24 to the Schneider declaration (PDF pages 1518-1664), these are described by Ms Schneider as “demonstrating use and prior use of the BRILLIANCE brand[13] and BRILLIANCE PUBLISHING mark 1655691.” Use of the Opposed Mark is shown in a few instances in these exhibits, albeit not by any means for all of the wide range of goods and services claimed in the currently opposed application.[14] All of the material exhibited comes either from the internal records or stock of the Applicant or are screenshots downloaded from the Applicant’s website. None are redacted in any way and several exhibits, such as Exhibits CS13, CS19, CS21, CS23 and CS24, post-date the filing of the opposed application. Quite apart from the issue of their possible relevance to the present opposition, it is not apparent to me why any of the exhibited material could not have been filed in a timely manner.
[13] Ms Schneider does not say in the declaration what she means by “the BRILLIANCE brand.”
[14] The Opposed Mark can be seen, by my reckoning, in PDF pages 1528, 1534, 1537, 1540-1546, 1572-1575, 1577, 1581, 1586, 1600, 1602, 1607-1608, 1611, 1617, 1633 and 1655-1659. However, some of these instances appear to be repeats and several post-date the filing of the opposed application.
In summary, very little of the proposed further evidence shows significant use of the Opposed Mark in relation to the wide range of goods and services claimed and I am not in any event satisfied that the evidence in question could not have been filed by the Applicant’s August 2017 evidence deadline. Even were I so satisfied, I agree with Mr Lang’s submission that none of the material is, on the face of it, “crucial” to my eventual decision on the merits of the substantive opposition. In this regard Mr Lang referred to paragraph 14 of the FE request, quoted earlier, where Ms Holmes says:
14. As this evidence was crucial for an acceptance of the opposed mark under provisions of subsection 44(4) and/or Reg 4.15A (5), it is equally as crucial to defend against section 60 in response to opposition claims by the Opponent.
As Mr Lang highlighted, the Applicant’s reasoning on this point is simply incorrect. Notwithstanding the extent to which the proposed further evidence might be found to be crucial in defending the opposed application against the Opponent’s s 44 ground, (because it might be sufficient to make out a case for registration based on honest concurrent or prior continuous use under ss 44(3) or (4)), decisions of the Federal Court have in the past determined that use is not a defense against s 60 of the Act. These decisions include McCormick & Co v McCormick[15] (“McCormick”) and, more recently, Optical 88 Ltd v Optical88 Pty Ltd (No2)[16] (“Optical 88”).
[15] (2000) 51 IPR 102.
[16] (2010) 89 IPR 457.
In McCormick at [79] Kenny J noted that:
The Act deals with applications for registration in Pt 4 and opposition to registration in Pt 5. Division 2 of Pt 5 is headed “Grounds for opposing registration”.
With relevance to the present matter, s 44 is contained in Pt 4. Accordingly, when the opposed application was examined and originally accepted for possible registration the examiner concerned was able to consider that section.[17] Division 2 of Pt 5 begins at s 57, (which confirms that s 44 may also be raised in an opposition, as is the case here), before specifying further grounds, such as s 60, which may only be raised in an opposition. In this regard the Act is structured rather differently from the Trade Marks Act 1955 it replaced (“the 1955 Act”). Section 34 of the 1955 Act was in similar terms to ss 44(3) and (4) of the Act, dealing with “honest concurrent use or other special circumstances” and prior continuous use respectively. Section 28(a) of the 1955 Act was the (effective) equivalent of the present s 60. Bearing this in mind, Kenny J goes on to explain in McCormick at [93]:
[93]…the structure of the Act and the provisions with which this appeal is concerned differ markedly from the 1955 Act. Parts 4 and 5 of the Act relate to separate stages in the registration process. The reasoning that led Mason CJ, Dawson, Toohey and Gaudron JJ to hold[18] that s 28 was subject to s 34 of the 1955 Act does not apply under the new Act. Within Div 2 of Pt 4, s 44(1) provides for a ground for rejecting an application before acceptance by the registrar. Section 44(1) expressly states that it is subject to s 44(3), the honest concurrent user provision.[19] The whole of s 44 is expressed as an interlocking series of subsections. Section 60, which is part of a division specifically setting out the grounds for opposing registration, is directed to the position after acceptance. Section 60 is not expressed to be subject to s 44(3), any analogous limitation, or even the Act generally: contrast s 89(1). On its face, it is a stand-alone provision. Furthermore, s 60 is apparently intended to afford a ground of opposition that is additional to the grounds set out in Pt 4. Section 57 expressly states that the grounds of opposition may be “any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4” (which includes s 44). Sections 58–62 add further grounds for opposition. On its face, there is no honest concurrent user exception to s 60.
[17] In Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at [35] French J referred to “the preliminary screening nature of the acceptance process”, having earlier (at [34]) indicated that “the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.”
[18] New South Wales Dairy Corp v Murray Goulburn Co-Operative Co Ltd (1990) 18 IPR 385.
[19] I note s 44(1) (and, for that matter, s 44(2)) also expressly states that it is subject to s 44(4).
Her Honour elaborates on these points at [94]-[96] of her judgment,[20] but I do not think it necessary here to say more, other than to confirm my view that her comments are on the face of it clearly just as relevant to s 44(4) of the Act as they are to s 44(3). I would only add that, whether or not the Applicant were able to establish via the proposed further evidence that the Opposed Mark enjoys its own reputation in Australia, neither would this be relevant as far as s 60 is concerned.[21]
[20] See also the judgment of Yates J in Optical 88 at [186]-[187].
[21] Optical 88 at [188]-[190].
To conclude, I am not satisfied that the Applicant could not have filed its proposed further evidence by its original 25 August 2017 deadline. Nor am I satisfied that if it had been filed by the deadline, the evidence would have been “crucial”, or indeed relevant at all, to defending the opposed application against the Opponent’s s 60 ground. The FE request is accordingly refused.
Having so concluded, I do not now believe it is necessary that the Opponent attend a further hearing. I have the parties’ written submissions before me and I consider that the matter can be dealt with based on them alone.
Determination of the Opposition
As mentioned, the Opponent is pressing grounds corresponding to ss 42(b), 44, 60 and 62A of the Act. To succeed, the Opponent bears the onus of establishing at least one of these four grounds, with the standard of proof required being the ordinary civil standard based on the balance of probabilities.[22] The date for assessing the registrability of the Opposed Mark is the date it was filed, 30 October 2014 (“the Priority Date”).[23]
[22] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].
[23] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J at 595.
I have only found it necessary to consider the Opponent’s s 60 ground in deciding the matter and accordingly the remaining three opposition grounds are not discussed here. Nevertheless, should this decision be appealed, it would always remain open to the Opponent to plead any ground considered relevant in proceedings before the Court.
Section 60
Section 60 of the Act is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
The ground based on s 60 is indicated in the SGP as follows:
The Opponent’s name BRILLIANCE PUBLISHING has acquired a substantial reputation in Australia by reason of the Opponent’s business in Australia in relation to audiobooks, publishing, and online retailing of audiobooks, since at least 2013.
The Opponent also refers to the BRILLIANCE AUDIO trade mark cited in support of the section 44 ground of opposition above. The Opponent’s BRILLIANCE AUDIO trade mark has acquired a substantial reputation in Australia by reason of the Opponent’s extensive use of that trade mark in Australia in relation to audiobooks, publishing, and online retailing of audiobooks, since at least 1999.
Because of the Opponent’s reputation in BRILLIANCE PUBLISHING and BRILLIANCE AUDIO, the use of the [Opposed Mark] in relation to the goods applied for would be likely to deceive or cause confusion.
Whereas the s 60 ground as couched in the SGP refers to both “the Opponent’s name BRILLIANCE PUBLISHING [as having] acquired a substantial reputation in Australia” and to its trade mark BRILLIANCE AUDIO as having done so, s 60 itself is specifically limited to the likelihood of deception or confusion arising because of the reputation of an earlier “trade mark.” Nevertheless, the actual manner of use of the Opponent’s BRILLIANCE AUDIO trade mark here relied on (“the s 60 Mark”) and the context in which that use takes place are of course relevant to my consideration of the s 60 ground. In this regard the Opponent’s evidence shows that since changing its name to Brilliance Publishing, Inc on 9 January 2013 it has used the s 60 Mark in Australia in conjunction with the new name, with both appearing in close proximity. The Opposed Mark, for its part, shares the identical words “BRILLIANCE PUBLISHING” with the Opponent’s name. Indeed, these are the only words in the Opposed Mark and it would most likely be by these words that the mark would be principally recalled and referred to in speech. To that extent, then, I accept the fact that the Opposed Mark features the very words making up the Opponent’s name is a relevant factor in assessing the likelihood of deception or confusion arising because of the reputation of the s 60 Mark. It is convenient here to note that for the same reason I accept that the Opponent’s use of the domain name < through which Australian consumers have been able to purchase the Opponent’s publications since its name change, would also be a relevant factor in this assessment.

What needs to be considered in the case of s 60 is the notional use the Applicant might make of the Opposed Mark, assuming use in a “fair and reasonable manner”[24] for any of the broad range of goods and services covered by the opposed application. The question is thus not limited to whether the Applicant’s past or proposed use of the Opposed Mark would give rise to deception or confusion, but rather “must be based upon what the [A]pplicant can do if registration is obtained.”[25] The issue is whether such notional use would be likely to deceive or cause confusion amongst a “significant” or “substantial” number of people in the relevant market[26] as at the Priority Date in light of the reputation of the s 60 Mark at that time. I note that here the relevant market would principally include authors of books or other written content wishing to have their work published, Australian book distributors and re-sellers (of either printed or audio books), consumers of such products and Australian libraries and their users.
[24] These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101.
[25] Southern Cross per Kitto J at 595.
[26] Le Cordon Bleu B.V. v Cordon Bleu International Ltee (2000) 50 IPR 1 per Heerey J at [91]. His Honour’s observation was in the context of s 28(a) of the Trade Mark Act 1955 which, in the circumstances of that case, also required reputation to be established.
To successfully rely on s 60 then, the Opponent must, as a threshold issue, firstly establish through its evidence that the s 60 Mark had acquired a “reputation” in the relevant market as at the Priority Date. As far as establishing reputation is concerned, Kenny J said the following in McCormick at [86]:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant's marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
The evidence going to reputation is contained in the Pereira, Cully and Dickert declarations and, at close to 900 pages, is comprehensive. Much of the information provided, such as sales figures and other sales details, are claimed as confidential. I will not therefore describe the evidence in detail other than to say that I agree in the main with the following matters summarized in Mr Lang’s written submissions:
7. The Opponent’s audiobook products have been continuously supplied in Australia under the [s 60 Mark] since at least 1999 (Pereira [12]). The evidence provides a substantial number of examples of such use, including:
(a) distribution of the Opponent’s audiobook products under the [s 60 Mark] to customers in Australia by the Opponent’s authorised distributors since:
(i) at least February 1999 by Baker & Taylor (Pereira [13], Cully Confidential Exhibit DC-2); and
(ii) at least January 2003 by Ingram Book Group (Pereira [13], Dickert, Confidential Exhibits 1 and 2); and
(b) direct sales of the Opponent’s audiobook products to customers in Australia from its websites at <brillianceaudio.com> and <audiobookstand.com> starting in 2001 (Pereira [12], Confidential Exhibits MP-2 and MP-3).
8. Evidence of the Opponent’s use of the [s 60 Mark] in Australia includes Australian sales records of the Opponent, and its authorised distributors Baker & Taylor, Ingram Book Group and Bolinda, dating as far back as 1999, together with photographic images demonstrating the use of the [s 60 Mark] on products referred to in those sales records.
…
36. Presently, the Opponent publishes and sells over 13 million audiobooks under the [s 60 Mark], and using the company name Brilliance Publishing, Inc, to resellers and libraries throughout the world, including millions of recordings delivered directly to customers by online download. The active publishing list of the Opponent contains over 29,000 titles, covering genres such as romance, thrillers, science fiction/fantasy, classic literature, young adult, children’s, inspirational, self-help, business advice, memoirs, biographies, neuroscience and religion: Pereira [6].
37. In Australia the Opponent has made sales of audiobooks under the [s 60 Mark] through its authorised distributors, Ingram Book Group, Inc, Baker & Taylor, Inc and Bolinda, and through direct sales via its website at brillianceaudio.com. The sales through these channels have been very substantial. The authorised distributor Ingram Book group Inc sold over 36,000 units between 2007 and 2014 (Dickert [7]), a further 18,000 units were sold by Baker & Taylor in that period (Cully [8]). The Opponent made substantial further sales to Bolinda and to the Australian Broadcasting Corporation in the years from 2001 to the present day, comprising thousands of titles: Pereira Conf. Ex MP-3. As to direct sales, the relevant quantities are summarised at Pereira, Conf. Ex MP-2 p2.
38. Further, the Opponent’s audiobooks have been the subject of retail sale in Australia through a wide range of Australian book retailers and made available for borrowing through a large number of libraries throughout Australia. By way of example, Newcastle Libraries alone stocked 233 titles in the period prior to 2007: Pereira [16]-[20].
39. The [s 60 Mark] has been used consistently in relation to all of these products (Pereira [21]). As submitted, since 2013, the company’s name has been Brilliance Publishing, Inc. As would be expected, the name Brilliance Publishing is referred to by third parties in materials publicising the Opponent’s products: Pereira, Ex 1, Tab 17. The Opponent has also used the internet domain <Error! Hyperlink reference not valid.since 2013 (Pereira [22]).
I would just add that in addition to the sales to Newcastle Libraries mentioned by Mr Lang, Pereira also evidences significant sales of the Opponent’s BRILLIANCE AUDIO branded products to the State Library of NSW, Woollahra Libraries (NSW), Brisbane City Council Library Services, the City of Perth Library and the City of Melbourne Library, where I accept the products in question are likely to have enjoyed exposure to the wider public. In summary, I confirm I am satisfied, based on the Opponent’s evidence, that at the Priority Date the s 60 Mark had the kind of reputation contemplated by s 60 amongst a significant number of people in the relevant market. I must for the sake of completeness, nevertheless, briefly comment on the Applicant’s submissions to the contrary, which appear to me to be based on a number of incorrect premises. Those submissions relating to reputation are made separately in the contexts of the Opponent’s s 42(b) ground (Section “G” of the Applicant’s submissions) and its s 60 ground (Section “H”) and are set out separately below followed by my comments:
G. Applicants response to reputation:
35. It fails to become clear what the Opponent is suggesting in this submission claim.
In response the Applicant has used the BRILLIANCE mark and associated BRILLIANCE marks in Australia since at least 1981 and by reason of that use has acquired a substantial reputation in these trade marks. By virtue of the Applicants evidence, shown chronologically in CONFIDENTIAL Annexure A to this Submission, the Applicants reputation in BRILLIANCE PUBLISHING (Device and Word) and BRILLIANCE and associated BRILLIANCE marks is endorsed beyond argument or denial and proves that the Applicant is the true author and owner of the BRILLIANCE mark in the Australian Commonwealth. The Opponent has not proven in any way that the Applicant or its trademarks and the Applicants use of its trademarks are scandalous or contrary to law, as suggested in its Opposition claim.
This claim fails because all evidence provided by the Applicant has proven to the contrary to this claim, that they are the first user and author of the BRILLIANCE mark in Australia since at least 1981, which precedes the Opponents BRILLIANCE AUDIO evidence by 19 years.
[sic, original emphasis and formatting retained]
My comment on this submission is that, as discussed at paragraphs 46 to 49 above, whether or not the Applicant is the “true author and owner of the BRILLIANCE mark,” (or for that matter of the Opposed Mark), and whether or not any of the Applicant’s marks have acquired a reputation in Australia, is not relevant to the Opponent’s s 60 ground.
I have found the Applicant’s submissions insofar as they relate specifically to the s 60 ground somewhat more difficult to comprehend. Nevertheless, lest the Applicant believe those submissions went unconsidered, they are reproduced in full below,[27] followed by my comments:
[27] With original formatting, punctuation, spelling and emphasis retained.
H. Applicants response to Section 60 – Trade mark is similar to a trade mark which has acquired a reputation in Australia.
We question the grounds on which the Opponent has rights for 1551737,[28] when they have not used this mark as a trade mark in Australia. (no prior use or reputation in its own right.)
[28] I note that the Opponent’s currently pending application 1551737 (9, 16, 41) BRILLIANCE PUBLISHING has no relevance to the Opponent’s s 60 ground. Nor is the BRILLIANCE PUBLISHING trade mark per se relied on by the Opponent in support of the s 60 ground.
The Applicant questions, if this mark cannot be advanced to acceptance in its own right by the Opponent for over six years it cannot show evidence of prior use or reputation.
Also the Opponent has not provided the 1369408 evidence[29] to substantiate any prior use or reputation rights in the examination process of 1551737. Then why should the Opponents 1369408, 1551737 marks be allowed to be integrated during these proceedings?
[29] As mentioned earlier, the Opponent’s registration 1369408 (9, 41) BRILLIANCE AUDIO was unsuccessfully opposed by the Applicant and the Applicant’s subsequent appeal to the Federal Court was dismissed. I note that the Opponent has in fact filed copies of the relevant opposition evidence, being the Cully and Dickert declarations, in the present matter.
This ground fails for the following reasons.
Response to paragraph 22, paragraph 23 and paragraph 24 of the ‘Pereira Declaration’ to Opponents Evidence in Support of Opposition 1655691
Paragraph (22) page 6
37. Claim (1) “Opponent is also the registered owner of and uses the Internet domain name <brilliancepublishing.com.”
(a) The Applicant holds the domain name <brilliancepublishing.com.au> which was purchased in bad faith by the Opponents parent company in early 2012 and garaged with software company Mark Monitor until December 2012.
(b) The Applicants registered BRILLIANCE mark 1179855 (16 and 41) was cited in 2010 as barrier to the Opponents mark 1369408. The domain <brilliancepublishing.com.au> was purchased and garaged well prior to the Opponents first approach in 2012 to request to use mark 1369408 and revealed soon after the Applicant denied the Opponent permission to use, four months prior to filing Australian trademark application 1507727.
(c) On discovery of this the Applicant filed a Complaint with WIPO requesting a decision on ownership of the domain <brilliancepublishing.com.au>.
(d) On the 20th August 2014 WIPO decision DAU2014-0018 ruled that Opponent Brilliance Publishing, Inc. an Affiliate of the Respondent, the Respondent, its Parent and King & Wood Mallesons, the legal representative for all three, had collectively conspired with full knowledge of the Applicants Australian trademark rights to acquire the <brilliancepublishing.com.au> domain in Bad Faith.
(e) Upon registration of the Applicants mark 1655691 the Opponents <brilliancepublishing.com> will be breaching Infringement Laws from offshore.
Paragraph (23) page 6
38. Claim (2) “The Opponent and its publications have also received publicity in Australia. An example of an article published in Australia on the <smartcompany.com.au website which refers to the Opponent’s publishing name and to a book “Maximise Your Potential’ published by the Opponent behind tab 17 of Exhibit MP-1.
(a) The article dated July 14th 2014 does not make distinction or relationship between Brilliance Publishing as Brilliance Audio does not appear in the article and is not referenced.
(b) On investigation, the book publicised in this article is in fact published by Amazon Publishing not the Opponent and so lends no publicity to the actual ‘Brilliance Publishing’ name shown in Annexure B.
This claim fails because the evidence does not provide what the Opponent has claimed.
Paragraph (23) page 6
39. Claim (1) “As a result of the extensive sales of BRILLIANCE AUDIO products in Australia since 1999 use of the name Brilliance Audio from 1999 to January 2013, and use of its Brilliance Publishing name since January 2013 the opponent has developed a substantial reputation in the Brilliance Audio and Brilliance Publishing names, including in Australia, such that consumers of printed and electronic publications and audiobooks have come to identify those names with the Opponents goods and publishing serviced. I am of the view that consumers in Australia will assume that the use of the Trade Mark containing the words BRILLIANCE PUBLISHING in connection with the goods and services claimed by the Applicant is associated with, or authorised by, the Opponent.”
(a) The Applicant is the author and the owner of the mark since 1981 as shown in CONFIDENTIAL Annexure A. This has been a continuous development of the Applicants BRILLIANCE brand including the BRILLIANCE mark and the BRILLIANCE PUBLISHING mark which shows reputation at least 19 years before the Opponent traded in this country.
(b) It would be safe to say that the reputation around the BRILLIANCE mark and the BRILLIANCE PUBLISHING mark would more likely be attributed to the Applicants marks rather than the Opponents for the shear fact of longevity.
(c) The Applicant has show evidence of all of Class Claims for 1655691 that bear the relevant mark, to the contrary the Opponents mark 1369408 has only shown Audio Books and for 1551737 no evidence at all has been provided.
This claim fails as the continuous use and reputation of the Applicant far precedes that of the Opponent and the Opponent fails to provide evidence to the contrary.
I would firstly note that the Applicant’s success in the WIPO domain name dispute has no relevance to the Opponent’s s 60 ground. Moreover, the Applicant’s understanding of any wider significance the decision may have for use of the Opponent’s <brilliancepublishing.com> domain name as far as potentially “breaching Infringement Laws from offshore” is concerned appears on its face misconceived in any event.
As to the online review of the book “Maximise Your Potential” reproduced in the Opponent’s evidence, the Applicant’s submission claims that “On investigation, the book publicised in this article is in fact published by Amazon Publishing not the Opponent and so lends no publicity to the actual ‘Brilliance Publishing’ name shown.” In fact the review in question only refers to “Brilliance Publishing” and there is no reference in the review itself to Amazon Publishing. Whatever further “investigation” the Applicant may have made is not in evidence before me and, even if it were, would have been inconsequential as far as my assessment of the reputation of the s 60 Mark is concerned.
Finally, the Applicant’s submissions claim authorship and ownership of “the mark” and refer in this regard to “a continuous development of the Applicants [sic] BRILLIANCE brand including the BRILLIANCE mark and the BRILLIANCE PUBLISHING mark which shows reputation at least 19 years before the Opponent traded in this country.” As already discussed at paragraphs 45 to 49 above, even if I were satisfied that this was the case it would not be relevant to my consideration of the Opponent’s s 60 ground. While I disagree with the Applicant’s submission that either its properly filed evidence or the (excluded) further evidence “has show evidence of all of Class Claims for 1655691 that bear the relevant mark” (sic), nor would this be relevant to my decision on this ground. The Applicant’s last statement that, as I understand it, the Opponent’s evidence has “only” shown use of the BRILLIANCE AUDIO mark subject of its registration 1369408, (that is of the s 60 Mark), rather than of the mark subject of its later application 1551737, is likewise not relevant to my decision since it is the reputation of the s 60 Mark with which my decision is solely concerned.
As mentioned, I am satisfied the s 60 Mark had sufficient reputation in Australia as at the Priority Date to enliven the Opponent’s s 60 ground. What remains to consider is whether, in light of that reputation, the potential or “notional” use of the Opposed Mark for the broad range of goods and services claimed in the opposed application would be likely to deceive, or cause confusion amongst, a significant or substantial number of people in the relevant market. On balance I am satisfied it would, for the reasons discussed below.
Explaining the significance of the words “likely to deceive or cause confusion,” the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) said in The Coca-Cola Company v All-Fect Distributors Ltd:[30]
[39] …No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[30] (1999) 96 FCR 107; 47 IPR 481 at [39].
It is well established too that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J said in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:[31]
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at CLR 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 91 at 103–4.
[31] (1997) 38 IPR 495 at 501. Again, his Honour’s remarks were made in the context of s 28 of the 1955 Act, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court ((1998) 45 IPR 393), but not on this point.

Given the threshold for finding a likelihood of confusion is lower than that for a likelihood of deception I will focus on the former here. In this regard I note the well accepted guiding principles highlighted by French J (as he then was) in Registrar of Trade Marks vWoolworths Ltd:[32]
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
[32] (1999) 45 IPR 411 at [50], based on Kitto J’s formulation in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
In assessing the likelihood of confusion it is well established that allowance must be made for relevant consumers having an “imperfect recollection” of the s 60 Mark when they encounter the Opposed Mark.[33] In this regard, as Lord Radcliffe noted in De Cordova v Vick Chemical Co:[34]
In most persons, the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.
[33] See for example the judgment of the Full Federal Court (Moore, Sackville and Emmett JJ) in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 at [77].
[34] (1951) 68 RPC 103 at 106.
Here, as Mr Lang’s submissions note:
The Opponent has very substantial use of [the s 60 Mark][35] in the publishing field in which the dominant distinctive element is the word BRILLIANCE. That use has been made in relation to works in various media, including audio, electronic and print.
…
The only words in [the Opposed Mark] are BRILLIANCE PUBLISHING. They appear prominently. The word BRILLIANCE is distinctive. It is likely that the use of that word expressly in connection with “PUBLISHING” would, in the ordinary course, suggest that the goods/services offered by the Opposed Mark come from the same trade source as [those of the Opponent].
[35] Moreover, as emphasised by Mr Lang, since January 2013 the s 60 Mark has been used together with the Opponent’s name, Brilliance Publishing, Inc and domain name <>
Bearing these matters in mind, I find I am satisfied on balance that, because of the reputation of the s 60 Mark as at the Priority Date, use of the Opposed Mark for the goods and services claimed was likely at least to cause confusion (in the sense discussed in paragraphs 67 to 69 above) amongst a significant number of people, even if such confusion might not persist to the point of inducing purchases. The goods and services claimed are very broad and in this regard may reasonably be considered notionally the same as those in which the reputation of the s 60 Mark resides and in principle aimed at the same potential market. In sum I am satisfied the Opponent has established its ground of opposition under s 60.
Decision
Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in
respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1655691.
Costs
Mr Lang requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Regulations.
Michael Kirov
Hearing Officer
Oppositions and Hearings
12 September 2018

[2018] ATMO 144

12 September 2018

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