Comvision Pty Ltd v Comvision Victoria Pty Ltd - [2024] ATMO 192

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

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’).
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.
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).
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’).
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 the Applicant’s Services;
the knowledge by the Applicant, on or prior to 28 April 2023, of the trade mark COMVISION used and registered by the Opponent; and
the knowledge by the Applicant of any actual confusion in the marketplace between the trade mark COMVISION used and registered by the Opponent and the Trade Marks or the names Comvision Victoria or Comvision Australia,

The request accompanying the proposed Notices stated that, in the SGPs, the Opponent indicated that it would be pursuing the grounds of opposition under s 62A (which had foreshadowed that the Opponent planned to ask that the Applicant produce certain documents), s 42(b) and s 60.
In summary, the SGPs state as follows under the ss 62A, 42(b) and 60 grounds:
The application was filed in bad faith (s62A)
1. The Opponent repeats and relies on the particulars set out in relation to the grounds of opposition under s 58 (Opponent first user and owner of the trade mark COMVISION) and s 60.
2. An honest and reasonable person acting in good faith would carry out an adequate search, seek professional advice or take reasonable precautions to ascertain the ability to use and register a trade mark.
3. With the view of establishing this ground of opposition, the Opponent intends to seek that, in accordance with section 202, the Registrar request the Applicant to produce documents relating to the adoption of the Trade Marks.
PARTICULARS
(i) The Opponent will be requesting that, among others, the Applicant produce the evidence of any searches carried out by the Applicant; and any professional advice obtained by the Applicant at the relevant time.
4. The Opponent will prove that:
(a) any searches conducted by the Applicant were inadequate; or
(b) conversely, the Applicant was fully aware of the Opponent’s trade mark COMVISION on the basis of its searches and/or professional advice; but
(c) had adopted and applied for the Trade Marks regardless, such conduct as falling short of acceptable commercial behaviour.
Use of the trade mark would be contrary to law (s42(b))
Competition and Consumer Act 2010; Tort of passing off
Trade mark is similar to a trade mark that has a reputation in Australia (s60)
The trade mark COMVISION had acquired a reputation before the priority date of the Trade Marks
In its Notices, the Opponent discussed the arguable relevance of the documents as regards the bad faith ground. The Opponent did not discuss the arguable relevance of the documents as regards the grounds under ss 42(b) or 60, which is consistent with the SGPs. The Opponent asserted:
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application (our emphasis). The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards (please refer to DC Comics v Cheqout Pty Ltd [2013] FCA 478).
The practice of registering trade marks for speculative, exploitative or defensive reasons may constitute bad faith within the meaning of section 62A of the Act (please refer to Home Box Office Inc v Florenca [2010] ATMO 99 at [22]–[24]; Marvel Characters Inc v Charles [2011] ATMO 92, [24]; The Coca-Cola Company v Teavolution Pty Ltd [2017] ATMO 126 at [42]).
Further, evidence that the use of a mark is likely to cause confusion or deception may be persuasive in considering whether the application to register a mark was in bad faith (please refer to DC Comics v Cheqout Pty Ltd [2013] FCA 478).
The Opponent also stated that the documents requested were properly particularised in the Notices, as their nature was clearly specified.
In the Intention to Refuse, the Deputy Registrar pointed out that s 202 was a discretionary provision and the Registrar would not issue a Notice to Produce unless satisfied that:

the documents are arguably relevant to proceedings (i.e., there is some evidence that a case exists in relation to the matter at issue);
the documents are described with sufficient precision so that the other party can easily identify them; and
the documents are within the other party’s possession or control.

The Deputy Registrar concluded that it was not appropriate that the proposed Notices be issued as:
·     the proceedings were still in their infancy with the Opponent’s Evidence in Support yet to be filed and there has therefore been no opportunity for the Opponent to seek to establish its grounds of opposition and for the Applicant to respond to any evidence led by the Opponent. In this context, leaving to one side the broad range of documents sought, requesting that the Applicant produce documents to the Registrar before the Opponent has filed any evidence is not reasonable or relevant.
·     the Opponent bears the onus to establish each opposition and it should not be seeking to reverse that onus before any evidence has been filed.
·     the Opponent was reminded that a notice to produce is not intended to be a de facto discovery process.
On 21 June 2024 the Opponent requested to be heard on the proposed Notices initially by way of oral submissions but later on 15 August 2024, requested that the matter instead be heard by written submissions. The Opponent filed written submissions drafted by Gus Skavronskas of McCabes Lawyers on 17 September 2024.
I am a delegate of the Registrar of Trade Marks and I have decided this matter based on the written submissions of the Opponent. To this end, I am deciding this matter as of the date of this decision and not the date of the Notices or the Intention to Refuse.

Legal Framework

Section 202 provides:
Registrar’s powers
The Registrar may, for the purposes of this Act:
(a)summon witnesses; and
(b)receive written or oral evidence on oath or affirmation; and
(c)require the production of documents or articles; and
(d)award costs against a party to proceedings brought before the Registrar; and
(e)notify any person of any matter that, in his or her opinion, should be brought to the person’s notice.
Note:For the awarding of costs see section 221.
The Registrar’s powers under s 202 are, for the purposes of the Act, defined in s 6 to include the Regulations. Given that the matters for which the Notices have been made are in respect of oppositions to the registration of the Trade Marks, the Notices are for the purposes of Part 5 Opposition to registration in both the Act and Regulations.
Part 54.3 of IP Australia’s Trade Marks Office Manual of Practice and Procedure (‘Manual’) relevantly refers to the Production of Documents as follows:
The Registrar is authorized by section 202 of the Trade Marks Act 1995 to require the production of documents or articles. In most instances the Registrar issues such a notice as a result of a request from a party to proceedings before the Registrar. In deciding whether to exercise this power the Registrar must be satisfied that the production of the documents is for “the purposes of this Act”, that is the documents are relevant to the proceedings. Since the Registrar is empowered by the Act to order “production” and not “discovery” of documents (see part 54.3.3.2 below), she must also be satisfied that what is being requested does not amount to a de facto request for discovery.
3.1 Relevance of documents to the proceedings
Before acceding to a request for the issue of a notice for production of documents (or articles), the Registrar must be satisfied that the request relates to proceedings under the Act and that the documents (or articles) sought are relevant to those proceedings. The test to be applied is one of adjectival rather than substantive relevance. That is, the Registrar is required to consider whether the documents could be relevant rather than would be relevant to the issues to be determined in the proceedings.
The issue of relevance was considered by the Federal Court in GS Technology Pty Ltd v The Commissioner of Patents (1997) 39 IPR 583 in relation to a notice requiring production of documents under section 210 of the Patents Act. The court said that:
… whilst it would be appropriate to reject a request for the issue of a summons on the ground that the request is fanciful or purely speculative, it is true nonetheless that an applicant for the issue of a summons need not show that the documents requested are actually relevant to the matter at hand. It is sufficient, in accordance with the conventional test in this area, that the material sought by the summons is, on reasonable grounds, arguably relevant to the issues in the litigation.
In Taco Bill Mexican Restaurants (Australia) Pty Ltd v Taco Bell Corporation (1999) IPR 613 the Deputy Registrar concluded that the documents sought were arguably relevant to one of the grounds of opposition.
3.2 Production or discovery?
The following definitions given in The Oxford Companion to Law, Clarendon Press, Oxford 1980, demonstrate the distinction between production and discovery.
Production. In England the High Court has power to order a party to produce any documents relating to the matter in issue, or to produce any documents for the inspection of another party.
Discovery. The process by which parties to a civil cause in England may, within limits, obtain information of the existence and contents of all documents relevant to the matters in dispute between them. The object is to elicit documents before the trial so as to eliminate surprise at the trial and promote fair disposal of the case.
In court proceedings it is common to order discovery to find out what documents exist, and to order production to enable inspection of relevant documents. However, the Registrar is only empowered to order production, and the documents to be produced must therefore be identified with a degree of particularity. While this does not necessarily require the identification of individual documents, the nature of the documents being sought must be clearly specified.[2]
3.3 Issue and service of a notice for production
Only a person connected with the proceedings before the Registrar may legitimately request him or her to require production of documents. The requestor should provide all the necessary details of the person on whom the notice is to be served, a description of the documents required and an explanation of the relevance of the documents to the proceedings.
The Registrar will then consider the request and decide whether the material sought “could” be relevant to the proceedings and whether it is identified with “reasonable particularity”. If the Registrar is not satisfied that the notice should issue, the requestor will be advised of the reasons and given an opportunity to respond. If the Registrar is satisfied that the notice should issue, the requestor will be asked to provide a notice in the appropriate format for execution by the Registrar.
…
3.6 Registrar’s consideration of produced documents
If the documents are produced during the relevant statutory period allowed for the requestor to file its evidence, the requestor should inform the Registrar and the other party that the documents form part, or all, of its evidence.
…
If the documents are produced after the period allowed for the requestor to file its evidence has ended, they may still be taken into account by the Registrar when the merits of the proceeding are determined as the Registrar is not bound by the rules of evidence (reg 21.15(4)). However the requestor needs to establish a compelling case for the documents to be considered (see part 51.2.2.6).
[2]Guidance on the "degree of particularity" required in specifying the documents is provided in court decisions dealing with subpoenas - see for example Small v Commissioner of Railways (1938) SR (NSW) 564 at 573, Spencer Motors Ltd v LNC Industries Ltd [1982] 2 NSWLR 921 at 929 and Lucas Industries Ltd v Hewitt (1978) 18 ALR 555.
The Manual clearly states that the Registrar must be satisfied of the following:

the documents could be, as opposed to would be, relevant to the issues to be determined in the proceedings (‘Adjectival Relevance’). Here the documents are claimed to be relevant to the Opponent’s s 62A ground of opposition.
what is being requested does not amount to a de facto request for discovery and therefore the nature of the documents being sought must be clearly specified (‘Document Specificity’).

There are few judicial decisions or substantive decisions by the Registrar regarding notices requiring the production of documents (‘NTP’) under s 202. One such decision is Structureco Inc v Registrar of Trade Marks (‘Structureco’)[3] which concerned a review of the Registrar’s decision to summon a declarant in removal proceedings to give evidence and to require the registered owner to produce certain documents. In respect of the summons, the removal applicant claimed that the decision to issue the summons was an improper exercise of the power conferred by s 202 in that the Registrar failed to take into account certain relevant considerations including, inter alia, that the guidelines for issuing a summons in Part 54.1 of the Manual. In respect of the NTP, the removal applicant claimed that the decision to issue the NTP was an improper exercise of the power conferred by s 202, in that the NTP was similar in scope to an order for discovery rather than a notice for production of documents.
[3] [2003] FCA 1290 (Sundberg J). Of note is that the Request was filed after the removal opponent filed its evidence in support.
In respect of Part 54.1 of the Manual, the court held that the guidelines therein have no statutory or regulatory basis but their structure, their language and the manner of their promulgation makes it clear that they are a relevant consideration the Registrar is required to take into account. However, while the Registrar is bound to take the guidelines into account, there is no obligation to apply them correctly. As stated by Sundberg J:
It is not appropriate to read the guidelines as if they were a statute. They are only guidelines and, as I have said, do not purport to lay down a rule of general application.[4]
The court does not find an error of law as a result of unhappy phrasing or looseness of language. This is, I think, especially so when what is in question is not a statute but a set of guidelines, and when the particular guideline does no more than state an approach to be adopted in the usual case (“usually only where there is contradictory evidence”).[5]
[4] Ibid [24].
[5] Ibid [25].
Given the courts comments on Part 54.1 of the Manual, there is no reason that these comments do not equally apply to Part 54.3 of the Manual.
Further, in Beling v Sixty International S.A., Mortimer J said of the Manual:
There does not appear to be any statutory power in the Act to issue such a manual and it is clearly no more than a set of administrative guidelines.[6]
[6] [2015] FCA 250, [10].
A NTP must have a legitimate forensic purpose. For this purpose, it must be shown that it is likely the documentation will materially assist on an identified issue, or there is a reasonable basis beyond speculation that it is likely the documentation will.[7] Where there is no legitimate forensic purpose for the issue of a subpoena or notice to produce, then it may readily be seen to be a fishing expedition.[8]
[7] ICAP Australia Pty Ltd v BGC Partners (Australia) Pty Ltd [2009] NSWCA 307 (Tobias and Basten JJA and Handley AJA).
[8] Colombini v De Berigny [2021] NSWSC 374 (Ward CJ).
Determining whether there is a legitimate forensic purpose requires reference to the particular case, or identified issue, that the documentation sought is reasonably expected to be likely to assist. As Nicholas J said in ICAP Pty Ltd v Moebes:
… the legitimate forensic purpose of a subpoena necessarily depends upon identification of the case which is likely the documentation will assist. The task in meeting the test will become difficult where the issue relied upon cannot be identified because either it has not been included in the pleadings or particulars, or the terms in which it has been expressed are obscure and imprecise.[9]
[9] [2009] NSWSC 306, [33].
In McIlwain v Ramsey Food Packaging Pty Ltd, Greenwood J helpfully set out the principles in relation to the granting of leave to issue subpoena which include that:
The documents must be relevant to an issue raised on the pleadings and be used to elicit documents to support the applicant’s existing case. It cannot be used for purposes of “fishing” or for the purpose of determining a preliminary question as to whether the party has a supportable case (Hennessy v Wright (1888) 21 QBD 509)…[10]
[10] [2005] FCA 1233, [35].

Fishing was described by Jordan CJ in Commissioner for Railways v Small as ‘endeavouring, not to obtain evidence to support his case, but to discover whether he has a case at all.[11] In WA Pines Pty Ltd v Bannerman Lockhart J said:
In Associated Dominion Assurance Society Pty Ltd v John Fairfax & Sons Pty Ltd, Owen J said: ‘A "fishing expedition", in the sense in which the phrase has been used in the law, means, as I understand it, that a person who has no evidence that fish of a particular kind are in a pool desires to be at liberty to drag it for the purpose of finding out whether there are any there or not’. ...[12]
[11] [1938] NSWStRp 29; (1938) 38 SR (NSW) 564, 575.
[12] [1980] FCA 79; (1980) 41 FLR 175, 190.
In the language of Lord Wilberforce in Air Canada v Secretary for State for Trade,[13] there must be something beyond speculation, some common ground for belief that takes the case beyond a mere fishing expedition.
[13] [1983] 2 AC 394, 439.
In Mandic v Phillis, which concerned production of documents pursuant to subpoenas duces tecum, Conti J stated:
Nevertheless, the courts have, at times, approached the question of fishing by ascertaining the relevance of the documentary or other material sought by the disputed process, and further ascertaining whether the benefit of receiving that material, or the effort involved in obtaining it, is out of proportion to its relevance: see Bailey at [30], Dorajay at [34]; and Spatialinfo Pty Ltd v Telstra Corporation Ltd [2005] FCA 455 at [46] (Spatialinfo). I do not accept, however, the notion that the introduction of O 15A of the Federal Court Rules has rendered “less obnoxious” (see Spatialinfo at [42]) the notion of fishing as explicated in earlier authorities universally; there remains the need to take into account the particular facts and circumstances and the stage of the proceedings at which the disputed process is issued. The present circumstances are an apt demonstration of the need for courts to be vigilant to prevent parties to litigation impermissibly using the court’s processes to coerce the production of documents, particularly from strangers to litigation, in circumstances where the “proceeding is essentially speculative in nature” (WA Pines Pty Ltd v Bannerman (1980) 41 FLR 175 at 182 ; 30 ALR 559 at 567 , per Brennan J (WA Pines)).[14]
[14] [2005] FCA 1279, [49] (‘Mandic’).
The Opponent’s submissions state that the Opponent has reviewed 38 Trade Marks Office decisions in which a NTP is mentioned, and submits that these decisions affirm that, in the vast majority of cases, the Registrar has not been exercising any discretionary powers under s 202(c) beyond the Adjectival Relevance and Document Specificity determinations.
The Opponent refers to the recent decision of Trafalgar Group Pty Ltd v Boss Fire & Safety Pty Ltd (‘Trafalgar’),[15] where the delegate of the Registrar refused to exercise his discretion on the basis that the return timeframe of 2-days set by the requestor for the documents, was unreasonable. The Opponent claims this decision is readily distinguishable due to a set of highly specific facts and that the discretion exercised by the Registrar was essentially derived from the finding that the documents the subject of the NTP would have lacked sufficient Adjectival Relevance. The Opponent submits that this decision does not prove that the Registrar has a broad general discretion under s 202(c).
[15] [2024] ATMO 122 (Hearing Officer Brown). Of note is that the Request was filed after the parties had filed their evidence in support, answer and reply.
In Trafalgar, I note that the delegate stated:
Section 202 is a discretionary provision, and the Registrar will not issue a notice unless satisfied that it is reasonable to do so. In this matter, the Notice to Produce afforded the Removal Applicant less than 2 days for the documents to be produced. This was not a reasonable time frame for a party to produce documents. Furthermore, I was not satisfied that there was a compelling reason to issue the Notice to Produce at such a late stage in the proceedings.[16]
[16] Ibid [10].
I too have considered the 38 Trade Marks Office decisions in which a NTP is mentioned, and while in the vast majority of cases the Registrar has not been exercising any discretionary powers under s 202(c) beyond the Adjectival Relevance and Document Specificity determinations, the Opponent’s submissions fail to appreciate, or to consider, that the timing of the NTP, including in Trafalgar, were after the Opponent’s evidence had been filed and in many of the cases, after all the evidence for both parties had been filed.
The Opponent appears to suggest that the Registrar’s discretion is limited under s 202(c) solely to the Adjectival Relevance and Document Specificity determinations referred to in the Manual, but I do not consider this to be correct. The Act and Regulations do not specify any factors which the Registrar must consider in exercising her discretion under s 202(c) and nor do they exclude any factors. I consider that the Registrar’s discretion is not limited to the factors stated in the Manual and this is reinforced by Trafalgar, where the Registrar exercised discretion to reject a request for a NTP based on a time frame being considered unreasonable and the proceedings being at a very late stage.
The Opponent submits on the basis of Seven Network (Operations) Limited v Giorgio Armani S.P.A., Milan, Swiss Branch Mendrisio[17] that ‘a potent factor to be weighed into the balance whenever the Registrar exercises discretion under the legislation that has the potential to exclude evidence critical to an opposition outcome’ and ‘a serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision’. These references however concerned an application for an extension of time to serve evidence in an opposition. There was, therefore, the potential to exclude the entire support of the opponent’s case. Here, at the time of the Notices, the Opponent still had the opportunity to file evidence in support and the applicant to answer that evidence. And, as at the time of writing these reasons, the Opponent’s evidence in support has been filed. The present matter is, quite plainly, not a case of ‘excluding’ evidence of any sort, critical or otherwise. Rather, this matter concerns when it will be appropriate to exercise a coercive power.
[17] [2013] ATMO 70, [16] (Hearing Officer Murray).
The Opponent submits that temporal considerations are extraneous and/or irrelevant to the exercise of the Registrar’s discretion and the Intention to Refuse on the ground that the Notices were premature, and therefore, not reasonable or relevant is in direct conflict with the Registrar’s substantive duty to take all necessary steps to get opposition proceedings ready for hearing as soon as practicable, referring to Cadbury UK Ltd v Registrar of Trade Marks, where Finkelstein J noted:
[The] effect of the Act and the Regulations is that the Registrar must take all necessary steps to get opposition proceedings ready for hearing as soon as practicable and thereafter hold the hearing. The merits are determined on the evidence before the Registrar and on the law as it is when the hearing takes place.[18]
[18] [2008] FCA 1126, [13].
The Opponent also submits that there is no principle emerging from the cases that a request for a NTP filed at the early stages of opposition proceedings may warrant the Registrar exercising a discretion to refuse to issue the NTP. The Opponent relies on two Federal Court decisions concerning the issuing of subpoenas. The first being Bailey v Beagle Management Pty Ltd (‘Bailey’), where the Full Court held that:
There is no requirement that to avoid the stigma of fishing, a party must already by in possession of some evidence before issuing a subpoena.[19]
[19] [2001] FCA 60, [28] (Heerey, Branson and Merkel JJ).
The second being Gloucester Shire Council v Fitch Ratings, Inc where Wigney J stated:
[W]here, as here, the proceeding is at a very early stage and the issues have not been clearly defined, the question whether documents sought by a subpoena have apparent relevance should not be approached too narrowly or rigidly. In such circumstances, the court should be wary of too readily excluding the possibility that a document or class of documents might at the end of the day be relevant to a fact in issue in the litigation. The court should not lose sight of the fact that the public interest requires that in the interests of a fair trial litigation should be conducted on the footing that all relevant documentary evidence is available. [20]
[20] [2016] FCA 587, [23]. (citations omitted).
I observe however that Wigney J went on to state that:
A subpoena also cannot be used for the purposes of “fishing” or conducting a “fishing expedition”. A finding of “fishing” amounts to a finding that the subpoena has no legitimate forensic purpose because the documents are sought to discover if the issuing party has a case, not to support a case that has already been articulated.[21]
[21] Ibid [24] (citations omitted).
I also note that in the decision at first instance in Bailey, Goldberg J stated:
There is a clear distinction to be drawn between a notice to produce which involves a fishing expedition and a notice to produce which does seek to obtain evidence to support a party's case. I read The Commissioner for Railways v Small (supra) as being authority for the proposition that where a subpoena or notice to produce is served to obtain evidence to support a party's case then the subpoena or the notice to produce will not be regarded as fishing or as an abuse of process or as vexatious and will not be set aside. That will only occur where a party is in fact seeking to discover whether the party has a case at all.[22]
[22] [2000] FCA 1577, [7].

On the question of timing of a NTP, the Opponent correctly submits that neither the Act nor the Regulations contain any temporal limitations or constraints on the exercise of the Registrar’s discretion. Part 54.3.6 of the Manual specifically contemplates the situation where documents are produced during the relevant statutory period allowed for the requestor to file its evidence stating that in this situation, the requestor should inform the Registrar and the other party that the documents form part, or all, of its evidence.
I consider that, notwithstanding this absence of legislative constraint, the timing of the Notices themselves is a relevant factor to consider in the exercise of the Registrar’s discretion, as it was in Trafalgar. I refer to the comments of Conti J in Mandic v Phillis where he stated:
…there remains the need to take into account the particular facts and circumstances and the stage of the proceedings at which the disputed process is issued …[23]
[23] Mandic (n 14).

The Opponent submits that the Intention to Refuse ‘on the ground that no evidence has been provided to satisfy the Registrar that a case exists in relation to these opposition proceedings’ fails to apply the correct test of Adjectival Relevance and instead applies an incorrect test of substantive relevance. Firstly, the Deputy Registrar did not state in her Intention to Refuse that no evidence has been provided to satisfy the Registrar that a case exists in relation to these opposition proceedings. The Deputy Registrar stated that ‘there has been no opportunity for the Opponent to seek to establish its grounds of opposition and for the Applicant to respond to any evidence led by the Opponent’. The Deputy Registrar was on my reading quite clearly not stating that she must be satisfied that a case exists in relation to the opposition proceedings or that there must be substantive relevance. Rather her decision was that at this early stage in the proceedings, there happen to be no facts upon which she could find there is Adjectival Relevance in relation to the documents sought.
On the question of Adjectival Relevance, the Opponent submits that this is addressed by primarily considering:

the nature of the documents sought on the face of the Notices relying on R v Barton.[24]
the issues raised by the SGPs, which are stated to be akin to pleadings by Mortimer J in Beling v Sixty International S.A.;[25] and
the legal principles governing each of the grounds of opposition in support of which the documents are being sought under the Notices.
[24] [1981] 2 NSWLR 414 (Cantor J) cited with approval by Beaumont J in G S Technology Pty Ltd v The Commissioner of Patents [1997] FCA 1460.
[25] [2015] FCA 250, [64].

The Opponent also submits that the Notices identify a legitimate forensic purpose for which the documents were being sought and establish their relevance by:

referencing the three grounds of opposition particularised in the SGPs; and
referring to the case law, in which various kinds of evidence (including of the kind the subject matter of the Notices), had been found relevant, probative and sufficient to establish these grounds of opposition, or their individual component elements.

On the issues raised by the SGPs, the Opponent submits that the range of documents sought in its Notices has to be viewed in the context of the opposition’s complexity, which rests upon five nominated grounds. While the Opponent has nominated five grounds, the Opponent states in the Notices that in the SGPs the Opponent indicated that, among others, it will be pursuing the grounds of opposition under s 62A and ‘foreshadowed seeking that [the Applicant] produce certain documents’. Whilst the Opponent also referred to the ss 42(b) and 60 grounds, the Opponent did not foreshadow the seeking of any documents from the Applicant for these grounds nor the other two nominated grounds.
Neither the Opponent’s SGPs nor the Notices provide any particulars which offer any freestanding support for the s 62A ground. Rather the SGPs and the Notices merely recite what the Opponent believes to be legal principles which had been found to establish the s 62A ground of opposition with no reference at all to the facts of this case, or to Applicant. One clear example of this is the Opponent’s assertion in the Notices that ‘The practice of registering trade marks for speculative, exploitative or defensive reasons may constitute bad faith within the meaning of section 62A of the Act...’. There is no fact or particular provided by the Opponent specific to the Applicant, and therefore no reason to suggest that the Applicant was in the practice of registering trade marks for such reasons. In addition, rather than requiring documents from the Applicant, a simple search of the Trade Mark Register would reveal the answer as to whether the Applicant had a history of such a practice.
While not strictly required in these reasons, I cannot help but note that some of these recitations are not supported in law. For example, the Opponent asserts that ‘a person acting in good faith would carry out an adequate search, seek professional advice or take reasonable precautions to ascertain the ability to use and register a trade mark’. While the absence of such behaviour has led to courts refusing to apply the good faith defences to infringement,[26] I am not aware of any similar findings in relation to s 62A. This is to be expected since, in this field of law, ‘bad faith’ is not the absence of ‘good faith’ (or vice versa) – each are terms of art, not simple opposites.[27] The Opponent has not provided me with anything that would suggest there is a legal principle which states that the absence of these steps constitutes bad faith for the purposes of s 62A.
[26] See, eg, Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, [116] (Beach J).
[27] For example, an explanation of the differences between the concept of bad faith under s 62A and good faith under s 92 was offered in Epistar Corporation v RGBLink Pty Ltd [2019] ATMO 81, [52]-[54] (Hearing Officer Worth).
Further, the Opponent states that the Opponent will prove that the Applicant was fully aware of the Opponent’s trade mark COMVISION on the basis of its searches and/or professional advice but had adopted and applied for the Trade Marks regardless, such conduct as falling short of acceptable commercial behaviour. It is well accepted law that mere knowledge of the existence of another trade mark is not, of itself, sufficient to support a finding of bad faith.[28]
[28] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 [167] (Dodds-Streeton J).
The statements in the SGPs regarding establishing the s 62A ground of opposition and the intention to seek a NTP are nothing more than a wish list of factors which may, in law, possibly be relevant to s 62A ground. The Opponent has, on an objective reading of the documents it has filed in relation to the present request, no idea whether any of the documents requested either exist, or, if they exist, are actually relevant as no evidence has been filed to indicate the possibility of relevance and the Opponent has not provided any actual facts or particulars to indicate their relevance. The Opponent’s evidence in support might have been an opportunity to present evidence that goes to these issues, yet, despite that evidence having been filed at the time of hearing of this matter, the Opponent did not take me to any aspect of that material. The Opponent’s request relies on an abstraction – it suggests that merely because s 62A can be established using certain evidence, the Registrar should require the Applicant reveal what evidence there is. This is a quintessential example of fishing as it is set out in the decided cases quoted above. The Opponent does not know whether it has any case to make under s 62A, and is trying to find out if it might. As such while it is at least arguable that the type of documents sought by the Opponent are relevant to s 62A in general, in the absence of any relevant facts, it is impossible to conclude whether the nature of the documents sought have Adjectival Relevance to the s 62A ground in the present opposition.
I consider the Opponent is relying solely on obtaining a NTP to seek out any particulars at all which may hopefully support the s 62A ground as the Opponent has no facts upon which to base this ground. Here the Opponent is conducting an ‘if and then’ exercise. If the range of documents I am seeking exist, and if they are produced, and if they are relevant, then I can support a s 62A ground. A NTP properly issued requests documents which have Adjective Relevance. Here the Notices are so premature that there are no facts upon which the Opponent can claim any relevance, let alone Adjectival Relevance.
The proposed Notices are nothing more than a ‘fishing expedition’. The Opponent has made a bare allegation that s 62A is a ground of opposition that is relevant to this opposition and now seeks documents which may or may not exist in the hope of discovering a case under that ground.
The Notices can also be defined as purely speculative. In the words of Cantor J in R v Barton ‘the court will act realistically and not require the production of documents which would only have a bearing upon an issue on an unreal, fanciful or speculative basis’.[29]
[29] [1981] 2 NSWLR 414, 420.
Further, the Deputy Registrar stated in her Intention to Refuse that ‘a notice to produce is not intended to be a de facto discovery process’. While the Deputy Registrar indicated this using the word ‘reminder’, given I have concluded the proposed Notices were a fishing expedition, I consider that the proposed Notices can also be categorised as an attempt at de facto discovery.
Contrary to the Opponent’s submission, in my opinion the Notices do not identify a legitimate forensic purpose. The particulars of the s 62A ground in the SGP are merely recitations of law and as such, the Opponent’s case cannot be identified particularly as the terms in which it has been expressed are obscure and imprecise.

The Opponent refers to the decision of Hearing Officer Williams in McDonald’s Corporation v Future Enterprises Pte Ltd (‘McDonald’s’).[30] In McDonald’s, the applicant’s declarant made an unsupported assertion that the Macintosh computer, or “Mac”, inspired its maccoffee trade marks and they were adopted to give a sophisticated and western impression to the applicant’s original markets for coffee in Russia and Vietnam. McDonald’s Corporation opposed the trade marks and sought to challenge the truth of the assertions by requesting a NTP all documents in the applicant’s possession or control evidencing the applicant’s adoption and decision to adopt the maccoffee marks, its intention to use those marks and its knowledge of McDonald’s Corporation’s mccafé mark. McDonald’s Corporation claimed that they would be relevant to the ss 44 and 59 grounds of opposition. The NTP was issued and the applicant objected to the enforceability of the NTP.
[30] [2006] ATMO 80.
In respect of the NTP, Hearing Officer Williams stated the following:
There is judicial sympathy for the view that, the very absence of a discovery procedure will require that a more generous approach be taken regarding notices under s 202. Particularly, once the documents are suitably particularised and are both of arguable relevance and (potentially) within its own possession or control, I find that Future has very little scope for restricting what might otherwise seem a trawling exercise by McDonald’s.[31]
Once it is accepted that the motives of the applicant in adopting the trade mark are arguably relevant, there is no issue of discovery. Further, it is not clear that the lack of a discovery process is a fetter on the issue of a notice to produce. The absence of such a procedure might just as well suggest that the registrar should take a more generous approach to such notices, rather than limiting their scope.[32]

and in respect of the ground of opposition under s 59, he stated:

It would seem, even so, that McDonald’s is able to require the production of arguably relevant documents, and this test of arguable relevance is not filtered by asking upon whom the burden of proof falls.[33]
[31] [2006] ATMO 80, [19].
[32] Ibid [16].
[33] [Ibid [30].

I consider the facts of the present matter to be distinguished from McDonald’s because, in that earlier matter, there had been an unsupported assertion made by the applicant in its evidence in answer which led to McDonalds Corporation seeking issue of the NTP. In the present matter, there is nothing from the Applicant at all and indeed nothing from the Opponent other than its recitations relating to legal principles in the SGPs.
The Opponent submits that the Intention to Refuse on the ground that ‘the Opponent bears the onus to establish each opposition and it should not be seeking to reverse that onus before any evidence has been filed’ does not take into account Adjectival Relevance of the documents sought to be produced as they could, on reasonable grounds, be arguably relevant to the issues in the opposition proceedings. The Opponent also submits that the Intention to Refuse does not take into account that the test of arguable relevance is not filtered by asking upon whom the burden of proof falls.
I consider that the Deputy Registrar’s statement in the Intention to Refuse that ‘the Opponent bears the onus to establish each opposition and it should not be seeking to reverse that onus before any evidence has been filed’ was a statement made to highlight the fact of the prematurity and timing of the Notices and the lack of any basis enabling a conclusion on relevance of the documents, rather than a statement that onus is, of itself, a relevant factor in the exercise of the Registrar’s discretion. On the basis of the findings in McDonald’s the question of onus is clearly not, of itself, a relevant factor.
Finally, the Opponent provides several examples of NTPs that have been issued by the Registrar. While they may have been of some assistance in deciding whether the Opponent’s proposed Notices, for example, identify the documents sought with sufficient particularity, they have little relevance to the question of Adjectival Relevance, given that the Opponent has not offered any submissions in relation to the circumstances surrounding the issuance of the NTPs in these examples.
In conclusion, I am not satisfied that the necessary factors are present to allow the Notices to be issued under s 202(c). I therefore agree with the Deputy Registrar’s view that it is not appropriate that the proposed Notices be issued. I therefore refuse the Opponent’s request that the Registrar issue the proposed Notices.

Anne Makrigiorgos

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

8 October 2024