Campomar Sociedad Limitada and Campomar S.L. v Nike International Ltd

[2010] ATMO 122

TRADE MARKS ACT 1995

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

Re:Australian Trade Mark Registration No. 452183 NIKE in the name of Campomar Sociedad Limitada - and - Application for Removal by Nike International Ltd

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Opposition thereto by Campomar Sociedad Limitada

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Australian Trade Mark Registration No. 585204 NIKE in the name of Campomar S.L. - and - application for Removal by Nike International Ltd

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Opposition thereto by Campomar S.L.

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Application to file Further Evidence

Delegate:	Debrett Lyons
Representation:	Campomar: Andrew Fox of counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys Nike:  Khajaque Kortian, solicitor, of Spruson & Ferguson, Patent & Trade Mark Attorneys.
Decision:	2010 ATMO 122 Regulation 5.15:  Application to serve further evidence allowed.

Background

1. In this decision I refer to both Campomar Sociedad Limitada and Campomar S.L. as ‘Campomar’ and Registration Nos. 452183 and 585204 as ‘the Registrations’.

2. The Registrations are subject to removal applications by Nike International Ltd (‘Nike’) for non-use under section 92(4)(a) and (b) of the Trade Marks Act 1995 (‘the Act’).

3. With respect to section 92(4)(b), the relevant period is three years ending on 24 March 2008 (‘the Non-Use Period’).

4. Campomar opposed the section 92(4) applications and served and filed evidence in conformity with the legislative framework.  Nike has not filed any evidence.

5. The matter was set down for a hearing before me in Sydney on 18 November 2010 but on 9 November 2010, Campomar filed an application to lodge further evidence (‘the Application’).  The Application was supported by two statutory declarations of Mr Albert Terry, Campomar’s Trade Mark Attorney.

6. I directed that if the hearing was to proceed as scheduled then I would only hear the parties on the question of the merits of the Application, not the substantive matter, and I gave the parties the opportunity to indicate whether they still wished to be heard.  They did and at the hearing Campomar was represented by Andrew Fox of counsel, instructed by Griffith Hack, Patent & Trade Mark Attorneys and Nike was represented by Khajaque Kortian, solicitor, of Spruson & Ferguson, Patent & Trade Mark Attorneys.

7. It is noteworthy that the parties have already been to the High Court in dispute over the same trade mark.

   Discussion

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

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

9. Paying particular regard to sub-paragraphs 5.15(3)(b) and 5.15(4), the parties have been given the opportunity to be heard.  Sub-paragraph 5.15(3)(c) provides that, as the Registrar’s appointed delegate, I must not grant the Application unless I am satisfied that the admission of further evidence is appropriate in the circumstances.  Factors of relevance in making that determination include (i) whether, with reasonable diligence, the evidence could not have been obtained earlier; (ii) whether the evidence is likely to have an important effect on the outcome; and (iii) whether the evidence appears credible.[1]

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

10. Mr Terry declares that on 12 October 2010 he received instructions from Campomar’s attorneys in Spain that Campomar had appointed an Australian company, Brandpoint Pty Ltd, as its local distributor and that goods bearing the NIKE trade mark were being sold through Woolworths stores and chemists in Queensland and Western Australia.  Exhibits show orders for NIKE branded goods from 3 August 2010 and invoices for sales of goods to Australian chemists in August and September 2010.

11. If the Application is allowed, Campomar proposes to serve a declaration from Campomar detailing its relationship and dealings with Brandpoint Pty Ltd, plus a declaration from the Australian company detailing the sales of Campomar’s goods pursuant to its appointment as Campomar’s local distributor.

12. Compomar’s counsel, Mr Fox, submitted that the further evidence is relevant to exercise of the Registrar’s discretion[2] under section 101 of the Act and that the company and its attorneys had acted promptly in relation to the implications of the new appointment for the purpose of these oppositions.

    [2] See, for example, Pioneer Computers Australia v Pioneer KK [2009] FCA 135 at [167]-[169].

13. In reply, Mr Kortian argued that (i) Campomar did not act reasonably diligently in relation to this new evidence because the August sales would naturally have been predated by relevant negotiations, (ii) the sales come more that two years after the end of the Non-Use Period and lack relevance for section 92(4)(b), and (iii) the sales can have no bearing on exercise of the section 101 discretion since they are made in full knowledge of the removal applications.

14. My view is that the proposed further evidence appears to come from credible declarants and is or may be relevant to section 101 when the Registrar comes to exercise his discretion. I consider that Campomar and its advisors acted with reasonable expedition in relation to the new developments in the Australian market.

15. It is also relevant that I pay attention to the inconvenience which might be caused to the opponent should the application be allowed however Mr Fox indicated his client’s preparedness to serve the evidence within one month. 

    Decision

16. In these circumstances and bearing in mind that the opponent has not, to date, expressed any serious urgency that the opposition be resolved quickly, my decision is to allow the Application.  I decide that in recognition of the facts that these parties have already been up to the High Court in dispute over the same trade mark; both parties have long been aware of the vulnerability of the Registrations for non-use; Campomar’s ongoing frustrations to establish a lasting relationship with an Australian distributor; and, in this case more than many, an interest that a complete picture of the matter comes before the delegate of the Registrar who finally determines the case.

17. I direct that Campomar serves the further evidence foreshadowed by the Application (and none other) by 7 January 2011 and that Nike responds to the further evidence, if at all, no later than 7 March 2011.

    Costs

18. I make no award of costs.

    Debrett Lyons
    Hearings Officer
    Trade Marks Hearings
    7 December 2010