E & J Gallo Winery v Lion Nathan Australia Pty Limited [Sec=Unclassified]
[2009] ATMO 87
•31 October 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by E & J Gallo Winery to registration of trade mark application 1168037(32) - BAREFOOT - filed in the name of Lion Nathan Australia Pty Limited – and – Applications under Regulations 5.15 and 5.16 by E & J Gallo Winery and objection thereto by Lion Nathan Australia Pty Limited.
Delegate: | Debrett Lyons |
Representation: | Applicant: Matthew Darke (of counsel) assisted by Dale Brampton (also of counsel). Opponent: Michael Hall (of counsel) |
Decision: | 2009 ATMO 87 Regulation 5.15: Application for extension of time in which to serve evidence in support allowed. Applicant given one month to file evidence in support. Regulation 5.16: Application for suspension of opposition proceedings refused. |
Background
This matter is set against a background of ongoing litigation between the parties over use of the trade mark the subject of application number 1168037[1], first in the Federal Court of Australia[2] and now pending before the High Court of Australia.
[1] More exactingly, the use by Lion Nathan of the trade mark BAREFOOT RADLER. See later discussion.
[2] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2008) 77 IPR 69; E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27
On 23 March 2007, Lion Nathan Australia Pty Limited (‘Lion Nathan’) filed application number 1168037 for the trade mark BAREFOOT. The application was examined and accepted for possible registration in relation to the following class 32 goods: beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages[3].
[3] Gallo’s prior trade mark number 787765 for the word mark BAREFOOT registered 9 March 1999 for “wines” was not cited against the application. Registry practice, at the time, was to regard beer and wine as not being ‘goods of the same description’.
On 26 July 2007, advertisement of acceptance of the application appeared in the Australian Official Journal of Trade Marks. That same day, a Notice of Opposition to registration of the trade mark was filed by E & J Gallo Winery (‘Gallo’).
Federal Court proceedings commenced on 27 September 2007. The statutory deadline for Gallo to file evidence-in-support of its opposition, 26 October 2007, was periodically extended up to 26 April 2009 in view of those proceedings with Lion Nathan’s consent.
On 24 April 2009, Gallo sought a further extension of time to 26 July 2009[4]. The Office proposed to grant this time, on condition that no further extensions be requested, and subject to objection from Lion Nathan. Lion Nathan did object, and made representations about why the extension should not be granted.
[4] The same letter also sets out Gallo’s preferred position, that the opposition be suspended until the Federal Court proceedings were resolved.
On 25 May 2009, the Office granted the requested extension to 26 July 2009, subject to the condition that Gallo complete filing of its evidence within that period. Gallo was given an opportunity to be heard about that condition.
On 3 June 2009, Gallo, the applicant for extension, requested to be heard. I conducted the hearing in Sydney on 10 July 2009, under delegation from the Registrar of Trade Marks.
Mr. Matthew Darke, of counsel, assisted by Ms Dale Brampton, also of counsel, represented Gallo. Mr. Mathew Hall of counsel represented Lion Nathan.
The legal framework
Paragraphs 5.15 and 5.16 of the Trade Mark Regulations 1995 state:
5.15Extension of period to serve evidence and service of further evidence
(1)A party to the opposition proceedings may apply to the Registrar:
(a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or
(b)for permission to serve a copy of further evidence on the other party.
(2)The Registrar may grant an application on reasonable terms specified by the Registrar.
(3)The Registrar must not grant an application unless the Registrar:
(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
(b)has given the parties a reasonable opportunity to make representations concerning the application; and
(c)is reasonably satisfied that:
(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and
(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;
is appropriate.
(4)For the purposes of paragraph (3)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
(5)If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.
(6)Subregulations (2), (3) and (4) apply to an application under subregulation (5).
5.16Conduct of opposition proceedings generally
(1)The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.
(2)A direction given under subregulation (1) must not be inconsistent with these regulations.
(3)The Registrar must not give a direction unless the Registrar:
(a)is reasonably satisfied that parties to the proceedings have been notified of the proposed direction; and
(b)has given the parties a reasonable opportunity to make representations concerning the proposed direction; and
(c)is reasonably satisfied that the proposed direction is appropriate.
(4)For the purposes of paragraph (3)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
Gallo properly served a copy of its application on Lion Nathan and the parties made written and aural representations. If the extension is to be granted I must be reasonably satisfied that a suspension or extension of time is appropriate.
In ABW Australia Pty Ltd v Sears, Roebuck and Co (1998) 42 IPR 468, the hearing officer stated that there are five matters to be considered when determining whether the grant of the application for extension of time is appropriate:
· the length of time already allowed;
· the reasons put forward to justify the granting or rejection of the extension application;
· whether the opponent has established that its opposition is serious;
· the inconvenience likely to be suffered by the parties;
· the public interest.
Likewise, the guidelines developed from earlier decisions including Vangedal-Nielsen v Smith (Cmr of Patents) (1980) 1A IPR 731 and Lyons v Registrar of Trade Marks (1983) 1 IPR 416 can be summarised as follows:
· the applicant seeking the extension of time has to make out a proper case;
· there must have been no undue delay on the part of the potential opponent;
· the private interests of the applicant and the opponent as well as the public interest are considered by ensuring that invalid rights are not granted and that proceedings are not protracted;
· there is a serious opposition in train.
In Cadbury UK Ltd. v Registrar of Trade Marks [2008] FCA 1126 the Federal Court heard an appeal from the Registrar’s decision to suspend an opposition by Darrell Lea Chocolate Shops Pty Ltd to a number of trade mark applications made by Cadbury UK Limited for shades of the colour purple in relation to chocolate and related products. Prior to that appeal, Cadbury had brought an action in the Federal Court against Darrell Lea for passing off. Because of that suit, the registrar had suspended the opposition proceedings. The question on appeal was whether the decision to suspend was lawful.
Finkelstein J. said:
The first point to observe is that while there is a provision permitting the Registrar (or his delegate) to adjourn a hearing (reg 21.15(9)) there is no express power to suspend or temporarily stay opposition proceedings. But, subject to the requirements of the Trade Marks Act and the Regulations, because the Registrar has control over the procedures of opposition proceedings he may presumably suspend or temporarily stay proceedings for proper reasons. At any rate this case was argued on the basis that the Registrar had the relevant power. The question here then is not whether the power to give the direction exists but whether it has been properly exercised.
In my view the effect of the Trade Marks 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.
…
Sometimes there will be circumstances in which it is appropriate to delay opposition proceedings and await a court’s resolution of disputed facts that may be relevant in opposition proceedings. It is not possible to say with any precision what those circumstances might be. They would include (a) the degree of similarity of the issues involved, (b) the significance of the issues to the opposition proceeding, (c) whether the Registrar has more evidence than the trial judge, (d) the likelihood of the judge’s findings being challenged, and (e) whether it may be unfair (ie a breach of the rules of natural justice) to rely on the judge’s findings or the evidence on which those findings were based. In particular cases other matters will be taken into account.
The guidelines given by the Trade Marks Office
The relevant benchmarks for extensions of time are set out in Part 4 of IP Australia’s approved form for application for extension of time under regulation 5.15 of the Trade Marks Regulations 1995. Part 4 specifies that:
Extensions that will take the time beyond the benchmark for the respective evidence stage may be granted on a case by case basis but only if there are compelling reasons to do so…A request for an extension beyond the benchmark must be supported by a full and frank disclosure of all the relevant facts. It is highly unlikely that any more than one such extension will be granted. (Emphasis in original.)
I note, too, the requirements set out in Part 51.3.2 of the Trade Marks Office Manual of Practice and Procedure, and referred to in Dermatech Laboratories Pty Ltd v Johnson & Johnson (2000) 49 IPR 419, at 423, where the Hearing Officer discussed the two applicable principles of a ‘rising onus on the applicant for the extension with the passage of time’ and the need for ‘greater detail of the circumstances as the time extended accrues.’
Submissions and reasoning
It was Mr. Darke’s submission, on behalf of Gallo, that the decision of the High Court will have an influence on the trade mark opposition proceedings sufficient to merit their suspension. Before looking to those submissions in detail, or to Mr. Hall’s response thereto, it is helpful to lay out the development to date of the related court actions.
The Federal Court proceedings: first instance
Gallo contended that it sold wine in Australia under the trade mark BAREFOOT and that Gallo’s registration number 787765 was infringed by Lion Nathan’s trade mark use of the words BAREFOOT RADLER in relation to “radler” beer.
By way of cross-claim, Lion Nathan alleged non-use in Australia of the registered trade mark by Gallo and it sought an order for removal of that registration pursuant to s 94(2)(b) of the Trade Marks Act 1995 (the Act).
The trial judge, Flick J., held that the impression based on a recollection of the sign used by Lion Nathan and a recollection of Gallo’s trade mark would lead to a likelihood of deception or confusion, however he did not consider that radler beers were ‘goods of the same description’ as wine.
As to the non-use claim, there was no evidence that Gallo had exported BAREFOOT wine to Australia or caused it to be sold or offered for sale in Australia during the relevant 7 May 2004 to 8 May 2007 period.
Flick J. heard that in early 2006 there were discussions between Gallo and McWilliams Wines Pty Ltd for the sale of BAREFOOT wine in Australia. As a result of those discussions bottles of BAREFOOT wine were placed on the market in Australia by McWilliams in September 2007, but not before Lion Nathan had lodged an application for removal of the Gallo trade mark for non-use.
Prior to September 2007, a limited quantity of BAREFOOT wine originating from California had been sold in Australia by a Melbourne wine wholesaler, Beach Avenue Wholesalers Pty Ltd. It was not contested that some of those sales had been during the relevant for the purposes of the removal application.
It was contended by Gallo that there has been use of the registered mark because Beach Avenue Wholesalers’ offer to sell and actual sale of BAREFOOT wine in the non-use period was use of the trade mark which could be ascribed to Gallo. It was also contended that Gallo had used the mark in good faith between September 2006 and the end of the non-use period in its negotiations and preparations for Australian distribution of the wine by McWilliams.
The actual sales of BAREFOOT wine during the relevant non-use period was traced to wine originally exported from the United States to Germany in 2001 and later imported into Australia. The German purchaser had placed an order for 60 cases of wine. Some of that wine was imported from Germany by Beach Avenue Wholesalers in July 2002. During the relevant period there was a sale of a dozen bottles of that BAREFOOT wine to a tavern in Queensland in October 2004. There was also a sale of three bottles of the same wine in Victoria in December 2004. There was a cash sale of a single bottle in July 2005[5].
[5] In addition to these sales there was the supply of BAREFOOT wine during the non-use period to a company related to Beach Avenue Wholesalers, Centre Euro Wines. Centre Euro Wines was supplied some wine free of charge and some was supplied at a price comparable to other sales. Gallo also argued that there was an "offering for sale" established by drawing an inference from the fact that wines were in fact sold during the non-use period. The court considered that inference should properly be drawn.
It was accepted by the primary judge that Beach Avenue Wholesalers had BAREFOOT wine in stock during the non-use period and sold that wine during that period. The unexplored legal question, and the question upon which the High Court will deliberate on appeal, arose from the fact that Gallo had no knowledge that the wine exported to Germany in 2001 may ultimately find its way to Australia. Gallo relied on Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254 for an argument that such knowledge was irrelevant[6]. Lion Nathan, on the other hand, says that knowledge and contemplation of Australian sales is of the essence if Gallo is to claim the Australian use as its own.
[6] “Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.” per Windeyer J.
Flick J. concluded that Estex Clothing did not support Gallo’s broad contention. He said that:
it is not considered that there was any "use" of the BAREFOOT trade mark by the registered proprietor in Australia arising merely by reason of the fact that the BAREFOOT wine, or some of the wine exported originally to Germany, by some unexplained circuitous route ultimately arrived on Australian shores and was thereafter available for sale in Australia.
…
In the circumstances of the present proceedings, and leaving intention or knowledge aside, there are no objective criteria comparable to those that existed in Estex Clothing such that it can be concluded that the registered proprietor of the trade mark "projected" its goods into any market other than Germany.
In the result, Flick J. determined no declaratory relief was justified and ordered removal of the registration for non-use.
The Federal Court proceedings: appeal to Full Court
Justices Moore, Edmonds and Gilmour heard the appeal and cross-appeal to the Full Court. Two issues arose on appeal. First, whether and from what date the registration should be removed from the Register for non-use, and secondly, whether there had been infringement.
Gallo challenged the primary judge's conclusions about (i) non-use of its trade mark, (ii) whether the goods were of the same description and (iii) whether the actual use of the allegedly infringing mark by Lion Nathan was likely to deceive or cause confusion. An amended notice of contention filed by Lion Nathan submitted that BAREFOOT RADLER was not deceptively similar to BAREFOOT.
As a preliminary matter, the Full Court noted that the actual sales of BAREFOOT wine during the non-use period were not challenged on appeal. The Court went on to say that:
In our opinion, the conclusion of the primary judge was correct. The contention of Gallo that an owner of a registered trademark uses the mark in Australia simply because goods to which the owner (or an authorised user) has affixed the mark are traded in the ordinary course of trade in Australia should be rejected.
…
We think fairly plainly what the Full Court [of the High Court] was saying [in the Estex case] was that for there to be use in Australia of the mark by the owner, the owner of the mark must have engaged in conduct of some type which the owner might reasonably contemplate would result in dealings with its goods marked with its mark in Australia while the goods were in the course of trade.
On the issue of infringement, the Full Court reversed the primary judge’s finding that wine and radler beers were not goods of the same description. It then considered whether BAREFOOT RADLER is deceptively similar to BAREFOOT, concluding that:
Notwithstanding the inclusion of the word "RADLER" in Lion Nathan's mark, the word "BAREFOOT" remains prominent and there is an obvious and clear link between that word and an imperfect recollection of Gallo's registered mark such as to "likely deceive or cause confusion": s 10 TM Act.
Coupled with other considerations not relevant to this discussion, the Full Court found that Lion Nathan had infringed Gallo’s trade mark registration.
Special Leave to appeal to the High Court
Subsequently, Gallo made application for special leave to appeal to the High Court. Special leave was granted after a hearing on 31 July 2009.
As a result, Lion Nathan has applied for special leave to cross-appeal. The hearing of that application is set down for 8-9 December, 2009.
Gummow and Heydon JJ heard Gallo’s special leave application. From Gummow J’s interrogation of counsel for the parties, it is clear that so far as the non-use question is concerned, the Estex case will be revisited[7] and the High Court will be concerned to answer at least one question on which there is no direct authority. The following exchanges are from the transcipt[8] of the hearing of the special leave application:
Gummow J: What is said to be the critical factual distinction between Estex and this case?
Mr. Jackman: The critical factual distinction is that there are two propositions. The first proposition is that in Estex the United Kingdom manufacturer of the goods knew and intended that the goods be sold in Australia. The Full Federal Court stated that “use in Australia involved or comprehended some act that was known either to have had, or potentially have, the result that the goods to which the mark was attached would be dealt with in some way within Australia in the course of trade.” The first point of distinction is that there was no evidence in the present case that the United States owner or authorised user knew or intended the mark be used in Australia. The second point of distinction is even more radical and that can be found in the reasoning at paragraphs 55 and 56 where the Full Court says that what Sir Victor Windeyer had said at first instance in Estex is a requirement that the course of trade in Australia be a course of trade between the owner on the one hand, and a trader in Australia, and it is then pointed out in paragraph 56: There was, objectively considered, no course of trade between Gallo and BAW or any other party in Australia – because the goods had passed through the hands of an intermediary. We say that is novel, it would have astonished Sir Victor Windeyer to have that proposition attributed to him…
Gummow J: If you succeeded in getting a grant, would that bring with it the prospects of other issues?
Mr. Jackman: It will not bring with it the prospect of infringement issues, unless my learned friend is successful in getting special leave to cross-appeal, because the Full Court has found infringement in our favour…
[7] That has not assisted the subsequent utility of Estex. People have been wondering what it meant for years. [per Gummow J. from the High Court transcript of Gallo’s special leave hearing: see fn 10 below].
[8] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] HCATrans 180 (31 July 2009)
The suspension application
That is so much of the background law and facts which assist me. I base my decision on it, the parties’ aural and written submissions, and on the assumption I will make that in December this year the High Court is more likely than not to grant Lion Nathan special leave to cross-appeal on the issue of infringement.
The factors which Finklestein J. said it was appropriate for the registrar to consider in determining an application for suspension of trade mark opposition proceedings are:
(a) the degree of similarity of the issues involved,
(b) the significance of the issues to the opposition proceeding,
(c) whether the Registrar has more evidence than the trial judge,
(d) the likelihood of the judge’s findings being challenged, and
(e) whether it may be unfair (ie a breach of the rules of natural justice) to rely on the judge’s findings or the evidence on which those findings were based. In particular cases other matters will be taken into account.
So far as (d) is concerned, the High Court’s decision is the end of the appellate process. The remaining four factors in common require study of Gallo’s submission that the High Court ruling will either determine or have some lesser significance to the matters on which the registrar must cogitate.
Therefore, assuming as I say that the High Court does hear Lion Nathan on the question of infringement, the key issues for the High Court will be (i) whether Gallo made bona fide use of the trade mark BAREFOOT in Australia at any time in the period 7 May 2004 to 8 May 2008, (ii) whether wine and beer, or wine and ‘radler’ beer, are goods of the same description, and (iii) whether BAREFOOT and BAREFOOT RADLER are deceptively similar trade marks.
As best as I can ascertain, the High Court has not been asked to decide and, in my respectful opinion, seems unlikely to consider in detail, questions of whether wine and beer, or wine and ‘radler’ beer, are “the same kind of thing”; whether the trade marks are substantially identical, rather than deceptively similar; whether Gallo has a reputation in its trade mark in Australia; what lesser or other rights Gallo may have enjoyed at 7 March 2007, the priority date of the application under opposition; anything to do with the validity of the trade mark application; or any alleged acts of bad faith.
I turn, then, to the Notice of Opposition.
The Notice of Opposition is couched in extremely broad terms, however Mr. Darke submitted that it was Gallo’s intention to press only those grounds under sections 42(b), 44(1), 58, 59, 60, 62 and 62A of the Act.
Section 42(b)
As laid out by Mr. Darke, this ground hinges on section 52 of the Trade Practices Act 1974, which in turn hangs on proof of reputation of Gallo’s trade mark with the Australian public. Mr. Darke states, correctly, that for the purposes of section 42(b), “it will be necessary to consider whether there has been ‘use’ by Gallo of the BAREFOOT mark as at the filing date of the application for registration” so as to determine “reputation at the relevant time”.
What is missing from his argument is how the High Court’s decision might conclude that matter. The High Court will not be considering reputation, either for the purposes of the validity of the registration or in its assessment of infringement. In any event, the priority date is 27 March 2007. The licensing arrangement between Gallo and McWilliams Wines Pty Ltd did not result in Australian sales of BAREFOOT wine until September 2007. Of the 60 cases of wine originally exported from California to Germany in 2001, some of which later made their way to Australia, less than twenty bottles had been sold here before the priority date. All the High Court might decide of relevance to section 42(b) is that use of the trade mark resulting from those sales should properly be ascribed to Gallo.
Section 60
Mr. Darke’s section 60 argument follows essentially the same path and I would repeat my observations on section 42(b).
Section 62A
Schedule 1, Part 1, item 36 of the Trade Marks Amendment Act 2006 provides that this newly introduced ground of opposition applies to applications made after the commencement date of the Amendment Act, 23 October 2006. The subject application was filed on 23 March 2007.
Mr. Darke submitted that “prior use of the BAREFOOT mark by Gallo is potentially relevant” to the ground of opposition that Lion Nathan’s trade mark application was made in bad faith.
The issue of bad faith was not before the Federal Court and consequently is not part of the appeal to the High Court. The possibility that the High Court may find that the 2004-2007 sales of BAREFOOT wine in Australia constitute use of that trade mark by Gallo would be only one of a number of factors that this tribunal might take into account in deciding whether the trade mark application had been made in bad faith or not.
Section 58
Gallo alleges that Lion Nathan is not the owner of the trade mark. Mr. Darke submitted that “Gallo was first to use the mark in Australia and the goods on which Gallo used the mark are ‘the same kind of thing’ as those for which registration is sought.”
I cannot see that the High Court ruling will have any impact on section 58 for two reasons – first, because the infringement claim has so far rested on a consideration of whether the trade marks under comparison are deceptively similar and the High Court will not be asked to decide if the are substantially identical (as they must be for Gallo to succeed under section 58) or not. Secondly, because although the High Court will revisit the question of whether beer (or ‘radler’ beer) and wine are goods of the same description, it will not answer the different, and narrower, question of whether those goods are the same kind of thing (again, as they must be for Gallo to succeed under section 58).
Section 44
Mr. Darke’s submission in relation to section 44(1) was “that the opposed mark is substantially identical with Gallo’s BAREFOOT mark which is registered in respect of similar goods”. As previously stated in relation to section 58, I cannot appreciate that the High Court will be asked to determine substantial identity. That issue is not on appeal. It is possible, however, that the High Court might find that the trade marks are deceptively similar and that the goods are of the same description.
Section 59
Gallo alleges that Lion Nathan does not intend to use the trade mark, or authorize another to use the trade mark, in Australia.
There is nothing raised on appeal which impugnes Lion Nathan’s intentions with regard to its own mark and no further supporting argument from Mr. Darke as to how the High Court’s ruling could have any influence on the section 59 ground of opposition.
Section 62
Gallo alleges (a) that the trade mark application, or a document filed in support of the application, was amended contrary to the Act; and (b) that the Registrar accepted the application on the basis of evidence or representations that were false in material particulars.
There is nothing raised on appeal which bears on those allegations and no further supporting argument from Mr. Darke as to how the High Court’s ruling could have any influence the section 62 ground of opposition.
In the result, the grounds of opposition can be cast into one of three categories:
(1) those grounds on which the High Court decision will have no bearing, namely, sections 42(b), 59, 62 and 60;
(2) those grounds on which the High Court decision may have a limited bearing, namely, sections 58 and 58A; and
(3) that ground - section 44 - where the High Court’s decision could reverse the Full Federal Court’s finding on whether the trade marks are substantially identical and/or whether the goods are of the same description.
Mr. Darke’s submission that there is a significant commonality of issues between the grounds of opposition which he indicates will be pressed and the matters for consideration by the High Court does not stand examination. Of the seven grounds which Mr. Darke states that Gallo will press out of the original thirteen grounds originally listed in the notice of opposition, it is only section 44(1) where the High Court’s ruling will be significant. Even in relation to that ground, I note Mr. Hall’s comment that Gallo’s position is not about to be improved upon by the High Court since the Federal Court has already found in Gallo’s favour on infringement. Moreover, I do not understand that the section 44 ground of opposition will require evidence beyond what has been prepared for the Federal Court. The evidence which may or may not determine whether the goods are of the same description has been amply filed in the Federal Court and the question of whether BAREFOOT and BAREFOOT RADLER are deceptively similar is a question of law.
Given the lack of connectivity of issues before the High Court and the grounds of opposition to the application, the registrar is likely to have more (and indeed, sometimes the only) evidence of many matters. I can not perceive that it is in any fashion unfair to ask Gallo to prepare its opposition case and file its evidence in advance of the High Court decision.
For these reasons I find that it is inappropriate to suspend the trade mark opposition proceedings. Gallo’s request for suspension under regulation 5.16 is therefore refused.
The extension of time application
I have already set out the factors which I should take into account in granting more time for the service of Gallo’s evidence in support of its opposition.
Clearly, there is a serious opposition in train. In terms of relative inconvenience to the parties, Lion Nathan is the applicant for registration and it wants the opposition to proceed. Gallo, as is made plain by the analysis of the suspension request, would suffer no greater inconvenience were it to serve its evidence in support now compared with service after the High Court decision. The public interest is met by the expeditious progress of the opposition. Gallo has had two years to prepare its evidence. Notwithstanding Lion’s Nathan’s agreement over much of that time to periodic extension requests in view of the Federal Court proceedings, I am of the opinion that Gallo has had ample time to prepare its evidence.
Having regard to all of the above factors, and to the reasons given by Gallo in support of its 24 April 2009 request for more time, I am nonetheless satisfied that Gallo should be granted the extension of time to 26 July 2009. The further application Gallo made last week is redundant in view of the decision I make here, being that Gallo has one month from date of my decision to serve a copy of its evidence in support.
Decision
The suspension request is refused. Gallo has one month from the date of this decision to serve a copy of its evidence in support of the opposition. The evidence itself should then be filed with the Office as soon as practicable thereafter.
Costs
Gallo to pay Lion Nathan’s costs according to the scale set out in the Regulations.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
30 October 2009
0
6
0