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Fed Square Pty Ltd v Federation IP Pty Ltd

Fed Square Pty Ltd v Federation IP Pty Ltd

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Case Copied 15 May 2015 29 min read

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TRADE MARKS ACT 1995

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

Re:Opposition by FED SQUARE PTY LTD to registration of trade mark applications 1530330 FEDERATION CENTRES (AND DEVICE) and 1530335 FEDERATION CENTRES (35, 36, 37, 39, 40, 41, 42, 43, 44 and 45) - in the name of FEDERATION IP PTY LTD.

Delegate:	Heath Wilson
Representation:	Opponent: Ben Fitzpatrick of Counsel instructed by DLA Piper. Applicant: Susan Gatford of Counsel instructed by Clayton Utz.
Decision:	2015 ATMO 42 Applications for an extension of time under regulation 5.15 of the Trade Marks Regulations 1995 – extension of time refused – Regulation 21.19 applied.

Background

This matter concerns an application for extension of time in two trade mark opposition matters to provide evidence in support under regulation 5.15 of the Trade Marks Regulations 1995 (‘the Regulations’). As it will become relevant to the overall determination I will set out the procedural history to this matter below.
On 7 December 2012, CRL IP Holdings Pty Ltd applied to register the following two trade marks (‘the Trade Marks’):

TM No.	Trade Mark	Classes of Services
1530330	Various services in classes 35, 36, 37, 39, 40, 41, 42, 43, 44, and 45
1530335	FEDERATION CENTRES	Various services in classes 35, 36, 37, 39, 40, 41, 42, 43, 44, and 45

Examination of the Trade Marks followed and they were both advertised as accepted in the Australian Official Journal of Trade Marks on 29 August 2013.
Two months later, on 29 October 2013, notices of intention to oppose the Trade Marks were filed by Fed Square Pty Ltd (‘the Opponent’). A statement of grounds and particulars followed from the Opponent, particularising grounds of opposition under sections 42(b), 43, 44, 58, 59, 60 and 62A of the Trade Marks Act 1995 (‘the Act’).
Notices of Intention to Defend were filed by CRL IP Holdings Pty Ltd on 11 February 2014. The evidence stages commenced with evidence in support of the opposition being due on 13 May 2014.
On 12 May 2014, the Opponent applied for extensions of time of one month in which to file the evidence for each opposition. The reasons given for the extensions of time were brief and can be summarised as follows: the voluminous nature of the material that had been gathered to date, the difficulties in locating evidence with some of it as old as fifteen years, and the fact that a draft affidavit had then been prepared and forwarded to the Opponent for review. At that stage, the final affidavit was anticipated to be filed with IP Australia within the next 10 working days.
On 15 May 2014, a Delegate of IP Australia wrote to the Opponent indicating an intention to refuse the applications for extensions of time setting out the relevant parts of the Regulations. The Delegate wrote:
It is essential that the party seeking the extension presents sufficient information to justify the extension. Although you have explained what has been done recently in the…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2015] ATMO 42
Decision Date: 15 May 2015

CaseChat Overview and Summary

This matter concerned an appeal from a decision of the Registrar of Trade Marks regarding an opposition proceeding. The parties involved were Fed Square Pty Ltd (the Opponent) and Federation IP Pty Ltd (the Applicant). The dispute centred on the admissibility of certain evidence submitted by the Opponent in support of its opposition.

The primary legal issue before the court was whether Regulation 21.19 of the Trade Marks Regulations, which grants the Registrar a discretionary power to inform herself of any information available in the Trade Marks Office, could be used to admit evidence that had failed to meet the requirements for evidence in support or extensions of time under the amended legislation. Specifically, the court had to determine the intended scope and application of Regulation 21.19 following the 'Raising the Bar' amendments, particularly in the absence of the repealed further evidence provisions.

The court reasoned that the Explanatory Statement to the 'Raising the Bar' amendments clearly indicated that Regulation 21.19 was not intended to serve as a substitute for the repealed further evidence provisions. While the Registrar retains discretion to consider relevant information, the intention was for Regulation 21.19 to operate independently of the standard evidence stages. The court noted that prior to the amendments, Regulation 21.19 existed alongside the further evidence provisions, reinforcing its distinct purpose. In this instance, the court was being asked to exercise the discretion under Regulation 21.19 to allow evidence that had already failed to meet the stricter requirements for evidence in support and extensions of time. The court found that the Opponent's reliance on Regulation 21.19 was misplaced, as it sought to use the provision to admit evidence that would have been inadmissible under the previous regime and was not intended to circumvent the new evidentiary requirements.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Under the current legislation, where there are no further evidence provisions, there is reduced evidence in reply stage and there are more rigorous requirements for extensions of time, it was anticipated that regulation 21.19 may play a different role in trade mark oppositions than it had in the past. I refer to the particular wording in the Explanatory Statement to the ‘Raising the Bar’ amendments[11] which states (my emphasis):Current regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. Following the restructuring of the Trade Marks Regulations by item 11, the Registrar will still have the discretion to consider whether the information is relevant and whether it should be taken into account. However, it is not intended that the provisions of current regulation 21.19 be used as a substitute for the repealed further evidence provisions. [11] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) page 29. I also note that the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) may, on first inspection, appear to contradict the final sentence above:PLEASE NOTE: Further evidence is only applicable to opposition proceedings commenced before 15 April 2013 by filing a notice of opposition. For oppositions commenced on or after 15 April 2013, the provisions of reg 21.19 – ‘Registrar may use information available’ may apply in some circumstances.[12][12] Part 51.1.4 of the Manual. The clear intention is that Regulation 21.19 should not been interpreted as a substitute for the repealed further evidence provisions. The fact that prior to the ‘Raising the Bar’ amendments Regulation 21.19 existed concurrently with the further evidence provisions affirms that the original intent of the regulation was to stand apart from the regular evidence stages of the opposition. Parties should not assume an entitlement to the application of Regulation 21.19 and the presence of an evidence stage appropriate for that material will not assist the party applying. In the current matter, I am not considering evidence that may have been relevant under the repealed further evidence provisions. Instead I am being asked to exercise the discretion and allow precisely the same evidence under reg 21.19 that has failed the requirements under the extension of time provisions for evidence in support. The Opponent argued that there was an absence of case law on how to deal with situations such as the one before me where the repealed further evidence provisions do not apply. The decisions from the Trade Marks Office previously applying regulation 21.19 occurred within a system that allowed other opportunities to provide material.[13] [13] E.g. the MG Icon decision (while not concerned with the application of reg 21.19), was an instance where, despite the refusal of an application for an extension of time, the further evidence provisions were still available.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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