Drug House of Australia (Asia) Pte Ltd v Drug House of Australia Pty Ltd

[2003] ATMO 78

TRADE MARKS ACT 1995

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

Re:Application by Drug Houses of Australia Pty Ltd for leave to serve further evidence in the matters of opposed applications under section 92 by Drug Houses of Australia (Asia) Pte Ltd in relation to registration 197282, 229202, 229203 and 229204.

Background

1. In this matter Drug Houses of Australia Pty Ltd (here, "the applicant") has made application for leave to serve and file further evidence ("leave") in relation to the removal proceedings under section 92 referred to above.  The application for leave is the second such application and was made on 17 October 2003 - a formal Notice of Hearing in the substantive matter, setting the matter down down for hearing in Sydney on 30 October 2003 had been dispatched to the applicant on 15 October 2003 by facsimile letter.  In response to the application for leave, Drug Houses of Australia (Asia) Pte Ltd (here, "the opponent") objected to the grant of leave and on 21 October 2003, a delegate of the Registrar of Trade Marks emailed both the applicant and opponent and stated:

   "The application is made at a time that suggests that the opponent either wishes to frustrate the hearing of the substantive matter [the s92 matters] or has not approached the collection of the evidence, or the making of the application, with sufficient speed.  While I understand the implications of the decisions to which you [Ms Gail Hill, for the applicant] refer, I believe that they should be distinguished.  Accordingly, I do not propose to grant the permission sought." [parenthetical material added]

2. I will state now that in the opening two lines of the foregoing paragraph, the delegate refers to the effects of subregulation 21.15(3) which states:

   (3)       On request, or on his or her own initiative, the Registrar may:

   (a)       fix a time, date and place for the hearing; and

   (b)       give the parties to the hearing at least 10 days’ notice in writing of the hearing and of the time, date and place fixed for the hearing.

3. The delegate drew the attention of the applicant to its right to be heard.  The applicant waived its right to 10 days' notice of the hearing and I heard the matter of leave in Sydney on 30 October 2003 in lieu of the substantive matter.

4. At the hearing Carmen Champion of Counsel, instructed by Gail Hill of FB Rice & Co, represented the applicant.  The opponent relied on written submissions by its solicitor, Martin Pollock of Spruson & Ferguson.

   Submissions

5. Mr Pollock drew my attention to Oxon Italia SpA's Application [1981] FSR 408 and Kellogg Co v Societe des Produits Nestle SA (1999) 45 IPR 657 where the following general principles were enunciated:

   ·It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage

   ·The evidence must be such that it would probably have an important effect on the result of the case

   ·The evidence must be such as is presumably to be believed, it must be apparently credible, though not necessarily incontrovertible.

6. Mr Pollock submitted that the applicant has been aware since 17 October 2001 that the removal application is on foot and the evidentiary onus on it is a simple one - to show that the trade marks have been used or that there are circumstances which bring the issues within the Registrar's discretion.  The onus is one of some standing and the owner (the applicant) and its attorney would have been aware of it since 17 October 2001.

7. Ms Champion, for her part drew my attention to the nature of the evidence in support that the applicant has already put in and the nature of the further evidence that the applicant wishes to put in.  The further evidence is material which should go to the Registrar's discretion should the evidence in support not establish use of the trade marks within the relevant period (17 September 1998 until 17 September 2001) - viz - a large part of it deals with the applicant's use of its trade marks before and after the relevant period.

8. The opponent, says Ms Champion, has not filed removal applications against certain other of the applicant's registrations, which should in any event prevent use of the opponent's trade marks in Australia.  I gather that Ms Champion's point in bringing this to my attention is that whichever way the substantive matter goes, the status quo might prevail as regards the actual use of the trade marks in Australia.  However, these are issues for other days and places and should not affect my considerations here.

   Concerns

9. A major concern in issues surrounding these proceedings is whether the applicant has used the provisions of regulation 21.15(3) to stave off the hearing of the substantive matter in order that any slight use the applicant has made of the trade mark since 17 October 2001 might assume greater relevance in terms of the exercise if the Registrar's discretion[1].  In addition, how much is any such use brought on by the removal proceedings themselves?  And, if so, are these matters for me to determine now or is it for the delegate in the substantive matter to assess in the consideration of whether the beneficial exercise of the Registrar's discretion is appropriate?

   [1] Hermes Trade Mark [1982] RPc 425

   Reasons

10. Proceedings before the Registrar are original - Simac Spa Macchine Alimentari v Semak Electrics Pty Ltd (1985) 5 IPR 283 - there are no earlier proceedings in which material could have been tendered. Further, if the evidence does relevantly go to the issue of the exercise of the Registrar's discretion, it would be unfortunate to force the applicant into an appeal to the Federal Court, which would hear the matter de novo[2] and such evidence could then be adduced: Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858. Similarly, it would be unfortunate to force the applicant to an appeal to the Federal Court from this decision if it were not necessary.

    [2] : Jaffergee v Scarlett (1937) 57 CLR 115

11. Placed against this is the fact that the applicant has obviously been either ill-advised, badly organised or dilatory in its organisation of its evidence. The service and filing of the applicant's evidence in support took some nine months.  Evidence in reply by the applicant was served on 17 April 2003.  The first request for leave was filed on 10 July 2003 - close to the hearing that was set down for 24 July 2003. 

12. Ms Champion submits that the lack of diligence can be excused by the fact that the ownership of the trade marks has changed hands several times and that some of the evidence which is historical in nature is not easily located under such circumstances.  Nonetheless, I am left with a suspicion that the true source of the further evidence was the realisation on the part of the applicant and its advisors after the service of evidence in reply and not long before the first scheduled hearing of the substantive matter that with the evidence as it stood then, the matters might not be resolved in its favour.  It is not clear to me why the fresh historical evidence could not be located within the nine months it took the applicant to gather evidence in support and why it became available only after the service of evidence in answer.

13. Added to this are the unfortunate timings so close to the hearing dates of Ms Hill's requests for leave to submit further evidence.

14. However, it is with some reluctance that I have concluded that it is appropriate that leave be granted to serve and file this further evidence.  The evidence is now ready to be served and filed.  The evidence is such that it might arguably go to the exercise of the Registrar's discretion.  The assessment as to whether any recent use of the trade marks has been use in good faith and not merely to stave off the removal of the trade marks from the Register via an exercise of the Registrar's discretion is one that is, I believe, best left to the delegate who hears the substantive matters.  I have no doubt that the other party to the substantive proceedings will make submissions on this aspect.

    Decision

15. I allow the applicant in these proceedings leave to serve and file its further evidence.

    Costs

16. I do not order the applicant its costs.  The applicant, as I have said, has obviously either been ill-advised, badly organised or dilatory in its organisation of its evidence.  Added to this are the timings of the requests for leave, which are, as I have said somewhat generously, unfortunate. An award of costs against the opponent who, understandably, has objected to the applicant's behaviour, is quite clearly inappropriate.

    Ian Thompson
    Hearings Officer
    Trade Marks Hearings
    8 December 2003