Cecil Matsie v Sofi Zavitsanos
[2009] ATMO 53
•15 July 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by CECIL MATSIE to registration of trade mark application 1181649 (22, 44) - RAPUNZEL - filed in the name of SOFI ZAVITSANOS – Application to amend the Notice of Opposition under section 66.
Delegate: Bianca Irgang Representation: Opponent: Written submissions by Carol Kane of Watermark Patent and Trade Mark Attorneys.
Applicant: Written submissions by John McCormack of Griffith Hack.Decision: 2009 ATMO 53
Section 66: Request for permission to amend the Notice of Opposition to include an additional ground of opposition under section 58 – determined to be ‘fair and reasonable’ in all the circumstances of the case – request granted.
Costs – Awarded against the trade mark applicant.Background
On 14 January 2008, Mr Cecil Matsie (‘Mr Matsie’) filed the Notice of Opposition to the registration of the trade mark current details of which are set out below:
Trade mark: rapunzel
Application Number: 1181649
Owner: Sofi Zavitsanos
Priority Date: 14 June 2007
Class 22:Hair
Class 44:Consultancy services relating to personal appearance (hair, beauty, cosmetics)
The Notice of Opposition currently encompasses the grounds under sections 43, 58A and 60 of the Trade Marks Act 1995 (‘the Act’). The parties filed and served their respective evidence in support and evidence in answer as provided for under part 5 of the Trade Mark Regulations.
On 9 January 2009, a request to amend the Notice of Opposition to include section 58 as a ground of opposition was made under the provisions of section 66 of the Act. Mr Matsie declared that it was due to an error or omission on his part that he did not include the ground of opposition under section 58 at the time of filing its original Notice of Opposition. Specifically, Mr Matsie declared that he was seeking to preserve his rights and reputation in a trade mark in a cost effective manner and did not seek legal advice or assistance when preparing and filing the Notice of Opposition.
On 2 February 2009 a Delegate of the Registrar (‘the Delegate’) advised both parties that she had considered the request to amend the Notice of Opposition and that she intended to allow it. At that time the Delegate also offered the trade mark applicant an opportunity to comment on the matter.
On 12 February 2009 Mr Matsie served a copy of his evidence in reply on the trade mark applicant.
On 16 February 2009 the trade mark applicant objected to the Delegate’s intention to allow the amendment to the Notice of Opposition and provided a statutory declaration made by John McCormack along with copies of the correspondence between the parties dated 7 December 2007 and 14 January 2008.
On 24 February 2009 a Delegate reviewed the official file and proposed to direct that the matter of the requested amendment to the Notice of Opposition be dealt with at the hearing for the substantive issue since the evidence stages were complete. However, she offered the parties an opportunity to be heard regarding the requested amendment to the Notice of Opposition prior to the hearing for the substantive matter if they so desired.
On 5 March 2009 the trade mark applicant requested to be heard on the matter of the requested amendment to the Notice of Opposition. A hearing date of 29 May 2009 was appointed and the agents for Mr Matsie advised they would not be present at the hearing but would rely on written submissions.
On 26 May 2009 a statutory declaration made by Mr Cecil Kopano Matsie was filed in response to the statements made by the trade mark applicant in their objection on 16 February 2009 to the request to amend the notice on opposition.
It transpired that the trade mark applicant did not attend the hearing either and on 28 May 2009 it submitted written arguments by John McCormack, legal practitioner of Griffith Hack. Included in those submissions was the trade mark applicant’s initial objection to the amendment to the Notice of Opposition and all its supporting documentation.
On 29 May 2009 Mr Matsie made written submissions in response to the trade mark applicant’s written submissions. As a Delegate of the Registrar I have reviewed all the relevant material on file and must now decide whether to grant permission under section 66 to amend the Notice of Opposition to include the ground of opposition under section 58.
Reasons
Section 66 of the Act provides:
66Amendment of other documents
The Registrar may, at the request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the request of the person’s agent, amend the application, notice or document:
(a)to correct a clerical error or an obvious mistake; or
(b)if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
Thus, I must not grant permission to amend the Notice of Opposition unless it is to correct a clerical error or an obvious mistake or I determine that it is fair and reasonable in all the circumstances of the case to do so.
I believe it is essential to discuss the contentious issues surrounding this case which have come to light. On the 9 January 2009 Mr Matsie made an application to amend the Notice of Opposition to include a ground of opposition under section 58. In his first statutory declaration in support of the requested amendment, Mr Matsie advised that he did not seek any legal advice or assistance when filling out the Notice of Opposition.
As such, Mr Matsie advised that he approached the wording of the grounds of opposition in IP Australia’s official form with a layman’s knowledge. In particular, he states he was led to believe by the wording of section 58A - “Opponent has earlier use of the same of similar trade mark” - that this was the ground of opposition most suitable for a person who had prior use of the trade mark. Mr Matsie stated the other grounds in his Notice of Opposition were selected through much the same method.
Mr Matsie went on to explain that he then filed and served his evidence in support and that it was only upon being served with a copy of the trade mark applicant’s evidence in answer that he decided it would be prudent to seek some legal advice. To this end, Mr Matsie made an appointment at the Perth office of Watermark Patent and Trade Mark Attorneys and met with Ms Carol Kane on 28 October 2008. Mr Matsie advises that it was only after this meeting that he became aware that he may have inadvertently selected the wrong grounds of opposition on the Notice of Opposition. He then decided that it would be in his best interests to request an amendment to the Notice of Opposition to have section 58 added.
I turn now to the objection of the trade mark applicant and the copies of the correspondence between the parties dated 7 December 2007 and 14 January 2008 which it provided in its submissions. Both of these letters are from Mr Matsie and are addressed to the trade mark applicant.
· In the letter dated 7 December 2007 Mr Matsie advises the trade mark applicant that he has sought advice from IP Australia and a solicitor who both advised him to lodge an application pursuant to section 58A and 60 of the Trade Marks Act 1995. He goes on to request the trade mark applicant voluntarily withdraw their trade mark applications before he formally lodges his opposition so as to prevent any further unnecessary legal costs.
· Mr Matsie’s letter dated 14 January 2009 is short and advises the trade mark applicant that he has formally opposed trade mark application 1181649 and provides the trade mark applicant with a copy of the Notice of Opposition. The letter also advises that Wray & Associates have been instructed to compile a comprehensive ‘Evidence to Support Notice of Opposition’.
Mr John McCormack’s submissions for the trade mark applicant focused initially on the veracity of Mr Matsie’s explanation for requesting an amendment to the Notice of Opposition in light of the letters of the 7 December 2007 and the 14 January 2008. The validity of these letters has not been challenged by Mr Matsie. Indeed, the second Matsie Declaration dated 7 May 2009 made in response to the trade mark applicant’s objection confirms the correspondence is legitimate but goes on to explain that the reference to seeking legal advice was a “bluff” to convince the trade mark applicant to withdraw the trade mark.
Mr McCormack submitted the inconsistent actions and judgments of Mr Matsie are neither fair nor reasonable and that it would not be fair and/or reasonable to amend the Notice of Opposition under the circumstances described. Mr McCormack referred me to the decisions of Cusp Creative Pty Ltd v Kusp Limited[1] and Kiwi Munchies Pty Ltd v Kraft Food Holdings Inc.[2] Mr McCormack emphasized the 12 month time period which had elapsed between the filing of the Notice of Opposition and the amendment request. He argued that, if the Notice of Opposition was amended to allow an additional ground of opposition at this late stage in proceedings when the evidence stages had closed, the trade mark applicant would be put to the additional expense of gathering further information to answer the newly added ground of opposition.
[1] 2003 [AIPC 91-850]
[2] 66 IPR 620
The agent for Mr Matsie, Ms Kane, argued that it was not the case that Mr Matsie had sought to include the ground of opposition under section 58 as an unsubstantiated afterthought after reviewing evidence or having sought legal advice. She asserts that it was Mr Matsie’s intention all along, as demonstrated by the content of the evidence already served, to put forward a case of first use of the trade mark and that he made an error at the time of selecting the grounds of opposition due to his misunderstanding of the wording on the official form.
The arguments put forth by Ms Kane and Mr McCormack focus on sections 66(a) and (b) respectively. I am not going to make a decision under section 66(a) but rather, I will determine if I should exercise the Registrar’s discretion to amend the Notice of Opposition if it is fair and reasonable to do so given all the circumstances of the case.
For the Registrar to be fair and reasonable in exercising a discretion the following should be taken into account, according to Re the Application of Oddbins Corporate Beverage Suppliers[3]:
·Relative inconvenience to the parties;
·The public interest
·The desirability of operating the trade mark system efficiently and without unreasonable delays.
[3] (2001) 52 IPR 435
Ms Kane submitted that all of Mr Matsie’s evidence relating to section 58 had been served on the trade mark applicant as part of the evidence in support and that there was no intention to file or serve any additional evidence regardless of whether the Notice of Opposition was amended or not. A consideration of Mr Matsie’s evidence indicates that the trade mark applicant has had the evidence potentially relevant to the requestor’s section 58 claims in their possession since at least the 14 April 2008.
In Crown & Andrews Pty Ltd v All American Fremantle International Inc[4], the Delegate considered similar principles under section 66 and determined that it was not fair and reasonable to permit an amendment sought when there was clearly no intention to include the specified ground at the time the application was made. That is not the case here, Mr Matsie has established that it had always been his intention to pursue the opposition arguing that he had been the first user of the trade mark.
[4] (1997) ATMO 36; 38 IPR 595
Mr McCormack’s arguments that it would not be fair or reasonable to make the amendment and that Mr Matsie is attempting to unduly prolong and extend the opposition procedure do not ring true. Specifically, it was the trade mark applicant’s decision to request a hearing solely on the matter of the requested amendment to the Notice of Opposition. This hearing request, particularly in light of the trade mark applicant’s subsequent decision not to attend the hearing, has been the source of significant delay for both parties.
Therefore, I accept Ms Kane’s point that there is limited evidence supporting the contention that the trade mark applicant will be disadvantaged by the delay caused by the request to amend the Notice of Opposition, whereas the disadvantage to Mr Matsie should the Notice of Opposition not be amended could be severe. In Margaret Kerr Kent Sasse, Henry Arthur Sasse and Toddler Kindy Gymbaroo Pty Ltd v Invecon Australia Pty Ltd [5] Hearing Officer McDonagh determined in a similar situation that, while there is inconvenience to the trade mark applicant in having to revisit its submissions based on an additional ground of opposition, Mr Matsie would also be inconvenienced in not being able to canvass all grounds he believes he can support with the evidence already served.
[5] (2008) AMTO 102
A consideration of all the relevant material on file leads me to the conclusion that Mr Matsie’s intention to have the section 58 ground added to the Notice of Opposition is not an unsupported side issue that he is raising ‘just in case’. Rather, I suspect that, though partially concealed amongst Mr Matsie’s somewhat haphazard collection of information, there may be an arguable case under section 58 that deserves consideration by a Hearing Officer.
I am not persuaded by Mr McCormack’s arguments that the present situation is analogous to either Cusp Creative Pty Ltd v Kusp Limited[6] or Kiwi Munchies Pty Ltd v Kraft Food Holdings Inc[7]. There appears to be something much more substantial behind the present amendment request than a belated desire to pursue a side-issue started by an unsupported assertion, itself of insignificant weight, which the requestor came across in the trade mark applicant’s evidence in answer.
[6] 2003 [AIPC 91-850]
[7] 66 IPR 620
In coming to a decision in this matter I am inclined to follow the reasoning expressed by the Delegate in Gemini Marine CC v Gemini Inflatable (Aust) Pty Ltd[8]. Although that case dealt with an application under regulation 5.15 to serve further evidence, many of the issues discussed are relevant here. In particular, I refer to the Delegate’s consideration of Studio SrL v Buying Systems (Aust) Pty Ltd[9] where the Delegate of that decision commented:
... it is well established that an "appeal" from the Registrar is not an appeal in the strict sense at all but within the original jurisdiction of the court: Jafferjee v Scarlett (1937) 57 CLR 115. . The appeal is a hearing de novo and the court will not exclude further evidence or additional grounds.
... 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.
[8] (2009) ATMO 13
[9] (1992) AIPC 90-858
Weighing up the submissions from both the trade mark applicant and Mr Matsie in this matter, I find I have some sympathy with each of their arguments. I understand how the trade mark applicant might feel itself to be significantly put upon, to have finally arrived at the point of determination of the opposition, only to have the prospect of an additional delay thrust upon it. I also share some of the trade mark applicant’s concerns regarding Mr Matsie’s far from exemplary behavior.
Notwithstanding these reservations, I cannot help but conclude that the only reasonable course here, where much of Mr Matsie’s evidence served on the trade mark applicant clearly goes to the ground of opposition under section 58, is to ‘err (perhaps) on the side of caution’[10]. To decide differently, I would need to be persuaded that the addition of the section 58 ground of opposition was made in an unfounded and unsubstantiated attempt to bring additional and irrelevant material into these proceedings and that it was not therefore fair or reasonable to make the amendment. My initial considerations did not lead me in that direction, and the trade mark applicant’s submissions upon the topic have not persuaded me otherwise.
[10] Gemini Marine CC v Gemini Inflatable (Aust) Pty Ltd (2009) ATMO 13
Given all of the circumstances as outlined above, I consider it is in the public interest that trade mark applications are tested as completely as practicable by the Trade Marks Office at the examination and opposition stages. It should avoid increasing the probability of appeal, and the consequent additional costs to both parties. It is also in the public interest that the system operates as efficiently and quickly as possible. Therefore, I intend to allow Mr Matsie to add the section 58 ground to his Notice of Opposition, relying on the evidence already filed and served in the proceedings. The matter may now proceed without further delay, to a hearing on the substantive issues of this opposition.
Decision
In accordance with the requirements laid down in section 66, I am satisfied that it is reasonable and fair under all the circumstances to grant permission for the Notice of Opposition to be amended to include the ground of opposition under section 58.
Costs
The trade mark applicant asked for an award of costs in the event of success in this hearing. As the trade mark applicant did not succeed in this matter and there is nothing before me suggesting that costs should not follow the general rule, I award costs against the trade mark applicant in accord with the Trade Mark Regulations 1995.
Bianca Irgang
Trade Marks Hearings
15 July 2009
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