Cels Enterprises, Inc v Pausewang Nominees Pty Ltd

This matter came before Jock McDonagh, a delegate of the Registrar of Trade Marks, concerning an opposition by Cels Enterprises, Inc. (the opponent) to the trade mark application of Pausewang Nominees Pty Ltd (the applicant). The dispute centred on the opponent's attempt to introduce further evidence, specifically an adverse examination report relating to its own trade mark application, into the opposition proceedings. The applicant opposed the admission of this evidence, raising concerns about its relevance and potential policy implications.

The primary legal issues before the delegate were whether the further evidence sought to be adduced by the opponent should be admitted, and if so, what weight it should be given. The opponent relied on the criteria established in *Ladd v Marshall* for the admission of fresh evidence, arguing that the examination report was relevant to grounds of opposition concerning the similarity of goods and that an examiner's opinion carried significant weight. Conversely, the applicant contended that the examiner's opinion was not relevant to the opposition proceedings and that admitting such evidence, particularly when it appeared the opponent had obtained a trade mark for the purpose of generating this report, would set an undesirable policy precedent.

The delegate refused to admit the further evidence. Applying the *Ladd v Marshall* criteria, the delegate found that the evidence, which came into existence more than two years after the applicant's priority date and over a year after the notice of opposition was filed, was unlikely to have an important effect on the outcome as it was not relevant to the opposition proceedings. While acknowledging the opponent's submissions, the delegate also agreed that it would be an unwise policy to accept such evidence late in proceedings, even without direct evidence of ulterior motives for the opponent's trade mark application. The delegate then considered the grounds of opposition pressed by the opponent, ultimately finding that the opponent had not established its grounds, including those under sections 44, 60, 42, and 41 of the relevant legislation.

Consequently, the delegate ordered that the applicant's trade mark could proceed to registration one month from the date of the decision, unless an appeal was filed. The delegate also awarded costs against the opponent in favour of the applicant.