Brioni S.r.l v Brian Jones Shoe Co Pty Ltd

[1996] ATMO 41

TRADE MARKS ACT 1955

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

Re:      Application by BRIONI S.R.L. for Special Leave to Adduce Further Evidence            in the opposition by BRIAN JONES SHOE CO. PTY. LTD. to Application
           number 423270 in the name of BRIONI S.R.L.           

As set down by the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, the authority I refer to is the Trade Marks Act 1955.

This matter concerns an application under paragraph (b) of sub-regulation 47(1) by Brioni s r l (the applicant) for special leave to adduce further evidence in answer to an opposition by Brian Jones Shoe Co Pty Ltd (the opponent).  The application was made on 15th March 1996.  The Registrar proposed to refuse the application on the ground of lack of diligence on the part of the applicant, but allowed fourteen days within which to apply for a hearing on the matter.  The applicant then requested further consideration of the application by providing a supplementary declaration which set out a brief timetable of events which occurred since the evidence in reply was served and lodged on 6th January 1995.  The information contained in the supplementary declaration satisfied the Registrar, who proposed to grant the special leave.  On 21st May 1996, however, pursuant to sub-reg 47(5), the opponent gave notice of objection to granting of the special leave.            

The opposition, prior to the making of this application, had proceeded as follows.  The acceptance of the series of trade marks was advertised in the Official Journal of Trade Marks on 17th September 1992, the notice of opposition was lodged on 27th November 1992.  The service of the evidence in support was completed on 10th August 1993.  Following the granting of several extensions of time, the applicant completed serving of the evidence in answer on 8th July 1994.  The evidence in reply was served on 6th January 1995.  In an official letter of 10th August 1995, the applicant and the opponent were advised that either party may request a hearing on the opposition.  In response, the applicant was successful in having the hearing of the opposition postponed until further notice as negotiations were underway to settle the opposition.  In the absence of advice on the progress of the negotiations, an official letter was sent to the applicant requesting a reply within two months from the date of the letter which resulted in lodgment of the application for special leave to adduce further evidence, the subject of the present proceedings.

The matter was set down for hearing in Melbourne on 4th June 1996.  The applicant was represented by Mr Ben Fitzpatrick, solicitor, assisted by Mr Adam Sears, both of Davies Collison Cave, patent and trade mark attorneys of Melbourne.  The opponent’s attorneys, Griffith Hack & Co, lodged written submissions.

The statutory declaration in support of the application for special leave is by Adam Matthew Sears, an employee of Davies Collison Cave, the applicant’s attorneys.  Mr Sears first states that the subject mark has been assigned by the applicant to Brioni Roman Style S p A and that an application has been lodged at the Trade Marks Office to record the assignment.  He then declares that, in a statutory declaration by Brian James Jones, which constitutes the evidence in reply, Mr Jones has made certain allegations calling into question the applicant’s honesty in recommencing use of its marks in or about 1982.  These concern an alleged visit by Mr Jones of the applicant’s shop in Rome where he is purported to have explained that his company was the proprietor of the subject series of marks in Australia.  The applicant also wished to provide an updated list of retailers who sell garments under the subject series of marks, up-to-date sales figures of goods bearing the marks and a book released in 1995 containing references to use of the marks in Australia, including the year 1973, all of which were not available at the date of lodgement of the evidence in answer.  In addition, it intended to provide figures in relation to sales of the goods throughout the world.

In the supplementary declaration, also by Mr Sears, is listed a timetable of events, involving initial discussions with the opponent’s attorneys concerning the evidence in reply, settlement negotiations and preparation of the further evidence. 

By referring to Trade Marks Office decisions Simac Macchine v Simac Electrics (1985) 5 IPR 281, Studio S r l v Buying Systems (Aust) Pty Ltd (1992) AIPC 90-858 and Weller v TGI Friday’s Inc (1994) 29 IPR 61, Mr Fitzpatrick advanced the view that the principles in relation to admission of further evidence, which were outlined in Oxon Italia S p A’s Appn [1981] FSR 408, were not strictly applied by the Registrar. The office decisions, he said, could be distinguished on the basis that the Oxon Italia case concerned an appeal, a hearing de novo, and therefore the court considered all the issues afresh.  He drew the conclusion that the Registrar did not appear to have set down guidelines on the precise criteria to be applied to the matter at issue and submitted that the appropriate test should be something more akin to that regarding extension of time for service of the evidence. 

Turning to the nature of the further evidence, Mr Fitzpatrick pointed out that the alleged visit in 1979 by Mr Jones to the applicant’s retail premises had been completely unknown to the applicant before receipt of the evidence in reply.  Since the allegation cast doubt on the honesty of the applicant’s recommencement of using the mark in 1982, this issue was of central importance to the applicant.  Employing the criteria espoused in Oxon Italia, supra, as a guide, he said that the evidence could not have been obtained at an earlier stage as the applicant was not aware of this issue before service of the evidence in reply.  Given that the issue was to be argued in support of the opponent’s case, the rebuttal evidence would have an important influence on the result of the opposition.

In relation to the updated sales figures, Mr Fitzpatrick argued that at the time of lodgment of the evidence in answer it was only possible to include sales figures for the retail value of sales of the applicant’s goods for the period up to and including June 1993.  Again, relying on the criteria applied in Oxon Italia, supra, the sales figures for 1994 and 1995, which the applicant now intended to include in the further evidence, were not available prior to completion of the evidence in answer.  Mr Fitzpatrick argued further that part of the applicant’s case relied on use of its mark subsequent to lodgment of the application and the applicant wished to utilize the special circumstances provisions of sub-s 34(1) of the Act.  In support, he directed my attention to Dinning v New Balance Athletic Shoe Inc (1992) AIPC 90-931. The updated sales were important in establishing that, if a new application were to be lodged at this stage, sufficient use would enable the application to be accepted. In these circumstances, the inconvenience to the applicant in disallowing the present application would significantly outweigh the inconvenience to the opponent in allowing it.

Concerning other material included in the additional evidence, Mr Fitzpatrick explained that the updated list of retailers was to serve the purpose of clarifying the extent to which the applicant’s goods bearing the series of marks were available in Australia and again referred to the Dinning case, supra.  The applicant’s book, released in 1995, reinforced the reputation of the subject marks in Australia at or around the end of the 1960’s and 1970’s and in particular, it contained a reference to use of the marks in 1973.  The world-wide sales figures confirmed the degree to which the marks were famous throughout the world.  He submitted that, by providing this material, the tests set out in Studio v Buying Systems and Weller v TGI, both supra, were satisfied in that the public interest required that all available material be presented to the Registrar.  He also reminded me that, given the Registrar was making a determination regarding monopoly rights in the series of marks which could last in perpetuity, there was an overwhelming and overriding public interest.

In relation to inconvenience caused to the opponent, should the further evidence be allowed, Mr Fitzpatrick stated that the opponent had requested extensions of time for approximately twelve months in total for lodgement of the evidence in support and evidence in reply.  Although the applicant had also required a number of extensions, the delay must be apportioned equally between the applicant and the opponent.  The extra time, he asserted, was not unduly oppressive.  In the applicant’s opinion, there had been active prosecution of the opposition by the applicant in terms of initial discussions with the opponent’s attorneys, settlement negotiations and preparation of further evidence, as indicated in Mr Sears’ declaration.  He equated the present situation with that in Studio v Buying Systems, supra, where the period between the evidence in support and the special leave application had been in excess of twelve months.  In that case the necessity to file further evidence had been based on certain conversations and meetings.  Furthermore, the applicant was an Italian company represented in Italy by its own attorneys, therefore delays in dealing with an overseas company through its Australian attorneys were inevitable, particularly where the level of English was not high.  Mr Fitzpatrick also stressed that, as the additional evidence had already been lodged, there would be no further delays and cited Jamieson v American Dairy Queen (1985) 5 IPR 551 as authority.

In its written submissions, the opponent expressed objection to the exercise of the Registrar’s discretion to grant the requested special leave on the grounds that: the service of the further evidence was unduly prejudicial to the opponent, that most of the further evidence had no major bearing on issues of the case, and that the applicant had lacked diligence in the matter.   

With reference to Mr Sears’ declaration of 15th March 1996, the opponent submitted that the issues of honesty of recommencement and abandonment of the trade mark related to actions of the applicant and therefore should have been clear to it from the outset of the opposition.  The updated list of retailers in the further evidence, was considered by the opponent to be an attempt to belatedly improve the quality of the applicant’s evidence.  The granting of special leave should not be exercised merely to allow the applicant to patch up deficiencies in its evidence.  In the opponent’s opinion, similar remarks applied to the updated sales figures, reference to the recently released book and sales figures throughout the world.  The updated sales figures were not relevant to the current opposition because the assessment of the relative positions of the parties had to be made as of the date of the present application, 5th March 1985.  If the Registrar were to allow this sort of further evidence, then both parties could be seeking leave to adduce the evidence right up to the date of the hearing, resulting in a protracted and unnecessary extension of the opposition procedure.  The opponent conceded, however, that the applicant might not have known of the opponent’s visit to the applicant in Italy in 1979. 

Concerning Mr Sears’ supplementary declaration, dated 30th April 1996, the opponent submitted that, according to the statements in the declaration, a recommendation was made to the applicant on 15th March 1995 to seek special leave to submit further evidence and, on the assumption that instructions to do so were received from the Italian associates on 20th March 1995, the applicant had given no explanation for one year’s delay between 20th March 1995 and 15th March 1996 when the present application was actually lodged.  The opponent stated further that it was clear from the correspondence between the parties that took place between March 1995 and March 1996 that there was a wide gulf between the settlement terms and it was highly unlikely that the opposition would be settled.  The applicant had been aware of this and had every opportunity to diligently and promptly seek leave to further its case. 

Commenting on the applicant’s further evidence, the opponent believed considerable amount of evidentiary material included in Mr Umberto Angeloni’s declaration was not relevant to the opposition.  The other material merely filled the gaps or improved the quality of the applicant’s earlier evidence. 

With reference to the threefold test outlined in Ladd v Marshall (1954) 1 WLR 1489 as to the Registrar’s practice on applications for leave to adduce further evidence, the opponent contended that the evidence concerning sales figures in 1994 and 1995 could have been obtained and served in those years, and the evidence concerning the alleged visit by the opponent in 1979 could have been addressed in 1995 when the evidence in reply was served. Whilst the updated sales figures may have a bearing on the issue of honest concurrent use, this issue was not a consideration in the current opposition. The issue of this opposition was whether the applicant was entitled to registration of an application lodged in 1985. In disputes concerning proprietorship it was the date of the application that was the relevant point of comparison, as considered by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Moreover, the issue of public interest and the effect of refusing the application for special leave forcing the unsuccessful party into an appeal to the court was not a concern in this case because this opposition was not about the applicant’s reputation post 1985.

Responding to the opponent’s written submissions, Mr Fitzpatrick said that, if it was so clear that the issues of honesty of use of the series of marks were central to the opposition, then the opponent should have placed considerable reliance on the alleged opponent’s meeting with the applicant in 1979 by raising it in the evidence in support. 

Both parties sought costs in the matter, Mr Fitzpatrick adding that the applicant was prepared to wait for the decision on costs until the final determination of the opposition proceedings.

Discussion
In deciding the issue in point, consideration should be given to the three factors quoted by Dillon J in Oxon Italia, supra, at p 409, extracted from the judgments of Lord Denning in Ladd v Marshall, supra, and Cross J in Thornhill & Co Ltd’s Application [1963] RPC 13, namely:

(1)         that it must be shown that the evidence could not have been obtained               with reasonable diligence at an earlier stage;

(2)         the evidence must be such that, if given, it would probably have an   important influence on the result of the case;

(3)         the evidence must be such as is presumably to be believed, that is, it                 must be apparently credible, though not necessarily incontrovertible.

These principles, however, must be modified in light of Studio v Buying Systems, supra, as argued by Mr Fitzpatrick. 

The proposed further evidence comprises a statutory declaration with accompanying exhibits, by Umberto Angeloni, chief executive officer of the applicant company, and satisfies last of the above criteria. 

The book ‘Brioni, 50 Years of Style’, released in 1995 to coincide with the 50th anniversary of the sale of the goods bearing the subject marks in different countries, is said to contain references to use of the mark in Australia and confirm in particular the marks’ use up to and including the year 1973.  This publication, as well as the updated list of retailers, the sales value of the goods in Australia for the years 1994 and 1995 and the world-wide sales figures for the same period, all of which supplement Mr Angeloni’s declaration, dated 27th April 1994, obviously could not have been included as part of the evidence in answer lodged on 10th May 1994, nor was the information in relation to Mr Jones’ alleged visit to the applicant’s premises in Rome in 1979 available to the applicant at the time of preparing the said declaration.

While the correspondence between the applicant’s and the opponent’s attorneys may reveal the unlikelihood of a settlement between March 1995 and March 1996, as suggested by the opponent, from Mr Sears’ supplementary declaration it appears that negotiations between the parties were still in train at least in May 1995 when the opponent’s attorneys communicated terms of settlement to the applicant’s attorneys.  The fact that the negotiations had apparently broken down becomes evident from the instructions received on 27th October 1995 from the applicant’s Italian attorneys, to the effect that further evidence was to be prepared for lodgment under the provisions of sub-reg 47(1).  Even though more expeditious responses might have been expected from the applicant’s Italian attorneys in relation to the settlement offer, I consider some allowances should be made for the time periods involved in communications by the Australian attorneys with their overseas associates as well as apparent language problems, as was indicated by Mr Fitzpatrick. 

In the circumstances, I do not believe excessive delays were caused by lack of effort on the applicant’s part in presenting the above material earlier than it was done.  Certainly, the material could not have been included in the evidence in answer.       

As to the question of including in the proposed evidence the sales figures in relation to use of the series of marks in Australia spanning the years 1994 and 1995, the international sales figures, and the current list of retailers in Australia through whom the goods bearing the subject marks are available, I consider this information constitutes additional evidence which is relevant for purpose of determining the present conflict between the parties concerned.  The selected pages from the applicant’s publication of 1995 cannot be regarded as fresh evidence, but are merely an adjunct to the statements of Mr Umberto’s information   

The opponent has acknowledged that the applicant would be justified in seeking special leave to adduce further evidence concerning the statement by Mr Jones in his declaration forming the evidence in reply in relation to his visit to the Brioni shop in Rome on 7th March 1979.  Mr Fitzpatrick emphasized the critical importance of this issue in clarifying the situation in relation to recommencing use of the mark in 1982.  As stated by Mr Sears in his declaration of 15th March 1996, the opponent intends to make submissions at the opposition hearing that “the suspension of use of the trade mark in the 1970’s amounted to an abandonment of the trade mark and that the subsequent re-commencement of use in or about 1982 amounted to a re-adoption of the trade mark, allegedly with knowledge of the use of the trade mark BRIONI by the opponent”.  If the applicant has decided to challenge those allegations, as submitted, then, unequivocally, it must be provided with an opportunity to appropriately respond in a declaratory form before the actual hearing of the substantive opposition.

In Studio v Buying Systems, supra, the Registrar’s delegate, Mr Homann said, at p 38,210:

“The effect of refusing an application for special leave may therefore be to force an unsuccessful party to the opposition before the Registrar into an appeal to the court where the evidence, if admissible, would not be excluded.  Obviously it would be preferable for the matter to be finally decided by the Registrar if the admission of further evidence would allow this to be done.

The above point is closely related to the public interest in the proper resolution of opposition proceedings where the issue of deception and confusion likely to be caused by the use of the mark in suit is raised.  This consideration was emphasized by the court in the Thornhill case (supra) and by the Court of Appeal of New Zealand in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd (1979) RPC 410 where, at 435 Richardson J said:

“...

Within reasonable limits it furthers that public interest to allow consideration of any available evidence that will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception and confusion.  Second, the evidence sought to be adduced is evidence that would assist in resolving ambiguities in material furnished to the Assistant Commissioner.  Except for the evidence of Mr Waymouth, it does not attempt to break new ground and Mr Waymouth’s evidence provides, from official sources, relevant information as to the size of the market of goods covered by the mark applied for.  And, as it was put by Ungoed-Thomas J in Bali Trade Mark [1966] RPC 387 at 393:

‘... the proper course is to attach the main weight to the desirability of having the substantial issue satisfactorily and fully investigated.’ ”

In view of the above directives, I must also be mindful of the necessity for the Registrar to have all the relevant evidence before him to enable a full disclosure of the fact of the case.

Decision
Having considered the application in suit, together with the submissions from both parties, in light of the pertinent criteria outlined in Oxon Italia and Studio v Buying Systems, both supra, I have decided that special leave to adduce further evidence is to be granted in respect of all the proposed further evidence.  As the evidence has been served on the opponent, however, I allow the opponent one month from the date of this decision to reply to the granted further evidence. 

Concerning the costs arising specific to the application for special leave, I award costs in favour of the applicant.     

Vija Zars
Hearing Officer

12th August 1996