Comvision Pty Ltd v Comvision Victoria Pty Ltd

TRADE MARKS ACT 1995

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

Re:Opposition by Comvision Pty Ltd to registration of trade mark application numbers 2352643 COMVISION AUSTRALIA and 2370494 COMVISION AUSTRALIA device (both class 35) – in the name of Comvision Victoria Pty Ltd

-and-

Requests by Comvision Pty Ltd for the Registrar of Trade Marks to issue to Comvision Victoria Pty Ltd Notices to Produce Documents

Delegate:

Anne Makrigiorgos

Representation:

Opponent: McCabe Lawyers

Decision:

2024 ATMO 192

Trade Marks Act 1995 (Cth) – s 202(c) – requests for Notices to Produce Documents in oppositions to trade mark applications - requests amount to fishing and defacto discovery - production refused

Background

1. Comvision Victoria Pty Ltd (‘Applicant’) is the applicant for registration of the following trade marks:

   Trade mark numbers:              2352643 and 2370494 (‘Applications’)

   Trade marks:                 COMVISION AUSTRALIA and  (‘Trade Marks’)

   Filing dates:                   28 Apr 2023 and 10 July 2023

   Specification: Class 35: B2B (business to business) IT management services; B2B (business to business) IT (information technology) support services being business consultancy, advice or guidance; business consultancy relating to the administration of information technology; business consultancy services relating to information technology (IT); compilation of information relating to information technology; business to business management services relating to software; business support services (‘Applicant’s Services’).

2. The Applications were advertised as accepted for possible registration on 7 November 2023 and were opposed by Comvision Pty Ltd. The requisite opposition documents were duly filed with five grounds of opposition in the Statements of Grounds and Particulars (‘SGPs’) being the same for both Applications, namely ss 42(b), 44, 58, 60 and 62A.

3. On 30 May 2024, the Opponent requested that the Registrar of Trade Marks (‘Registrar’) issue the Applicant with notices requiring the production of documents (‘Notices’) under the provisions of s 202(c) of the Trade Marks Act 1995 (Cth)[1]. At this point in time, the Opponent had not filed any Evidence in Support (‘EIS’) which was due on 13 June 2024 for trade mark number 2352643 and 23 July 2024 for trade mark number 2370494.

   [1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

4. On 7 June 2024, a Deputy Registrar of Trade Marks (‘Deputy Registrar’) notified the Opponent that it was not appropriate that the proposed Notices be issued and so did not intend to issue them (‘Intention to Refuse’).

5. The Notices as proposed would have required that the Applicant produce all documents in [the Applicant’s] possession or control, that evidenced:

• the creation of the Trade Marks;

• the clearance of the Trade Marks and their (un)availability [sic] for use and registration;

• the adoption, the decision to adopt and subsequently use, and the decision to apply for the registration of the Trade Marks;

• the forming of any intention to use in Australia either of the Trade Marks in relation to…