Fed Square Pty Ltd v Federation IP Pty Ltd

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and application of Regulation 21.19 following the 'Raising the Bar' amendments, particularly in the absence of the repealed further evidence provisions.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'Raising the Bar' amendments clearly indicated that Regulation 21.19 was not intended to serve as a substitute for the repealed further evidence provisions.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.