FKP Sojuzplodoimport v Spirits International BV

[2010] ATMO 62

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

Re:Directions suspending opposition by FKP Sojuzplodoimport to protection of International Registrations Designating Australia 932465, 932471 and 934031 and others - STOLICHNAYA ELIT and others- in the name of Spirits International BV.

Delegate:	Terry Williams
Representation:	Opponent: Angus Lang of counsel, instructed by Catherine Mooshi, solicitor, of Sagacious Legal Applicant: Patrick Flynn of counsel, instructed by Mallesons Stephen Jaques
Decision:	2010 ATMO 62 Reg 5.16 suspension of opposition: relevance of court case going to ownership of earlier registrations, relevance of evidence therein, length and complexity of proceedings, balance of convenience, opposition proceedings to resume.

Background

1. Spirits International BV (“Spirit”) has registered various trade marks on the International Register at the International Bureau.  These international registrations designate Australia as a country in which protection is sought under the Madrid Protocol, thus becoming “IRDAs”. 

2. The relevant IRDAs have been examined, and accepted for possible protection of the trade marks in Australia.  Protection has been opposed[1] by FKP Sojuzplodoimport (“FKP”).  IRDAs 932465, 932471 and 934031 were opposed in 2006.  All three trade marks incorporate the words STOLICHNAYA ELIT, with or without Cyrillic characters, and set out either in plain type or in script form:

   [1] Opposition to protection is the Madrid analogue of opposition to registration under s 52 of the Trade Marks Act 1995 (“the Act”). Part 17A of the Act authorises reg 17A to make the necessary adaptations of the Act but these are, for present purposes, immaterial.

3. Since then, FKP has opposed protection (“the opposition proceedings” or “the oppositions”) of a number of other IRDAs of which Spirit is the holder.  These are set out in Attachment 1 and are all opposed by FKP on the basis of matters that, as I will explain, mesh with court proceedings to which I will come in due course.  Essentially, the IRDAs, in classes 32 or 33, all include a trade mark element arguably similar to the words STOLICHNAYA, STOLI or MOSKOVSKAYA.

4. The Registrar of Trade Marks is required to conduct oppositions within the broad framework provided by the regulations under the Trade Marks Act 1995 (“the Act”).  Regs 5.7 and 5.8 allow an initial period of three months for the service and filing of evidence in support by an opponent.  Thereafter, regs 5.9 and 5.10 allow for the service and filing of evidence in answer by the holder/applicant and reg 5.12 allows for the service and filing of evidence in reply by the opponent.  The process of those evidence stages is itself subject to regulation 5.15, which governs how a party may apply for an extension of time for the service of evidence and how the Registrar must deal with that request.

5. In the related court proceedings to which I have referred (“the court proceedings”) FKP has, by way of a cross-claim made against Spirit in 2004, challenged the validity of a number of existing trade mark registrations (“the existing registrations”) which stand now in the name of Spirit.  The existing registrations are in class 33, and (relevantly for the present matter) include the words STOLICHNAYA, STOLI or MOSKOVSKAYA.  The existing registrations were entered in the Australian (rather than the Madrid) register at various times between 1976 and 1996.  In the court proceedings, FKP seeks, among other things, an order that it, rather than Spirit, be recorded as the owner of the existing registrations. 

6. On 4 December 2006 the lawyers for FKP asked the Registrar of Trade Marks to suspend the opposition proceedings in relation to IRDAs 932465, 932471 and 934031 while the court proceedings were resolved.  The direction given by a delegate of the Registrar has the effect of suspending opposition to protection of those IRDAs at a stage where FKP has yet to file or serve evidence in support.

7. The present dispute is about that action, and about action taken subsequently to suspend opposition to the remainder of those IRDAs set out in Attachment 1, until the court proceedings are resolved. 

   Suspension of oppositions

8. A suspension of the opposition involves a direction under reg 5.16.  This provides as follows:

   5.16   Conduct 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.

9. This power allows the Registrar’s delegates to ensure that, within the broad framework set by the opposition provisions in Part 5 of the regulations, to which I have referred in paragraph 4, efficiency and procedural fairness are both ensured in the management of opposition cases.  At its most mundane level, reg 5.16 would allow the Registrar to propose and make directions that would compensate a party for undue delays in deciding an extension of time application.  Such delays can arise from the simplest of causes, such as the loss of a letter or some other unfortunate circumstance arising at the Trade Marks Office or elsewhere. 

10. Where an appropriate case exists and proper process is followed, directions of a more significant nature can be given under reg 5.16.  The provision can thus be used to suspend an opposition - in other words, to defer (albeit only when appropriate and to a limited degree) the due date for evidence or for determination on the merits.  The Registrar’s experience is that, used in this way, a suspension can be an efficient alternative to repeated applications under reg 5.15 for extensions of time for serving evidence[2].  However, as Finkelstein J pointed out in Cadbury  UK Ltd v Registrar of Trade Marks [2008] FCA 1126, (“Cadbury”) the Registrar has a statutory duty to decide oppositions, per s 55 of the Act and, more specifically per s 204, “as soon as practicable”. Therefore, the Registrar cannot suspend an opposition indefinitely but, in the performance of the duty referred to in Cadbury, there is (as here) considerable scope for debate about the appropriateness of suspension in any particular case.

    [2] Illustratively, in the present matter, FKP’s request for suspension incorporated also an application for an extension of time to serve evidence in support and both the suspension and the extension request draw their documentary support from common material.

    Registrar’s practice in suspending

11. Where both sides agree that suspension is appropriate and if a prima facie case is made for suspension, the Registrar’s practice is to give directions to bring this about.  I will refer specifically to Cadbury in what follows but the main administrative decisions in this regard[3] acknowledge that it is undesirable to have the same or a very similar issue dealt with both administratively and in the court.  It is also clear that adversarial examination of evidence in court proceedings will generally assist both the parties and the Registrar to get a better understanding of critical facts and issues and may thus, if properly applied to issues in the administrative forum, help to illuminate the Registrar’s decision-making.

    [3] Beyond Properties Pty Ltd v Andrew Knight [2006] ATMO 87, Silhouette International Schmied AG v Aust Opthalmic Supplies Pty Ltd [2001] ATMO 124, Ayrton Senna Promocoes v Senna Racing (1998) 41 IPR 395, Outrigger Hotels v Evangelista (2000) 49 IPR 164

12. Where one party disputes the need to suspend, and within the limits set out in Cadbury, it becomes necessary to take into account the balance of convenience[4] as between the parties.  Regard must also be had to administrative convenience and to the public interest.  The latter will tend to lie with the efficient running of the intellectual property system at the Trade Marks Office and in the courts, though regard may also need to be had to the interests of third parties (if any).  Subject always to what was said in Cadbury, it remains the case, as Hearing Officer Thompson pointed out in Beyond PropertiesPty Ltd v Andrew Knight [2006] ATMO 87 that delay in finalizing an opposition at the Trade Marks Office is prejudicial to an applicant only where, first, the opposition decision is likely to favour the applicant, secondly, it can be assumed that the decision will not itself be appealed by the unsuccessful opponent; and, thirdly, and in the absence of such an appeal, a significant further delay would be caused by awaiting the decision of the court.

    [4] Or, as it was put in Re Applications by Yamazaki Mazak Corp (1992) 24 IPR 321, causing “minimal prejudice”. Delay in such matters is, in fact, more often a balance of inconvenience.

    Reasons for suspensions

13. FKP provided, shortly after filing its notices of opposition to the protection of IRDAs 932465, 932471 and 934031, a brief account of the cross-claim in the court proceedings.  Other details have since emerged.  It is alleged by FKP in the Federal Court that the ownership of the existing registrations was obtained in various ways that are all, very loosely, contrary to law or fraudulent.  The cross-claim goes to who can appropriately claim to be the successor in title of the true and original owner of the existing registrations, the earliest of which, as I have said, dates back to 1976.  The arguments involve issues of foreign law, fraud, and (by way of counter-claim) acquiescence.  The complexity, and potentially the duration, of these matters must not be under-stated:  in the analogous court proceedings in the Netherlands, FKP has informed me that 10 to 20 lay and expert witnesses gave evidence as to the questions arising under the laws of the USSR.  The Federal Court will consider how it will deal with the relevance of the decision in the Netherlands in August this year.  Counsel for Spirit has said that a decision in the substantive matter before the end of 2011 is unlikely.

14. FKP requested that the three oppositions be suspended.  Prima facie it did not appear to be desirable that both the courts and the Registrar traverse the relevant issues independently and therefore a delegate of the Registrar wrote to both parties, proposing to suspend the oppositions and allowing the parties 21 days to make representations on that issue.  On 15 February 2007, in the lack of any representation from Spirit, a delegate of the Registrar of Trade Marks made the decision (“the first decision”) to suspend the oppositions in relation to IRDAs 932465, 932471 and 934031. 

15. Immediately they received the letter advising of the first decision, the lawyers for Spirit wrote to the Trade Marks Office, asking for additional time to address the issue.  The relevant submissions on which Spirit relied were subsequently filed, on 16 March 2007.  On 16 April 2007, another delegate, having considered these submissions, made a decision (“the second decision”), refusing to lift the suspension.

16. Since then, Spirit has protested the continued suspension.  I decided on 27 July 2007 (“the third decision”) that the suspension would continue.  Spirit has initiated a review under the Administrative Decisions (Judicial Review) Act 1977 (Cth) of the first, second and third decisions. That review has been deferred in view of negotiations between FKP and Spirit aimed at settling the entire dispute between them. While those negotiations were going on, I gave directions suspending all of the remaining oppositions set out in Attachment 1. Settlement has not so far followed and Spirit has sought to have the suspensions reviewed yet again. On 5 February 2010 I therefore wrote to FKP and Spirit in the following terms:

    The Registrar is aware, post-Cadbury, of the need to approach suspensions with particular caution.  That is not to say that the suspension of the present matter must be ended.  Cadbury is clearly distinguishable from the present matter where, among other things, the state of the register itself will be at issue.  See also E & J Gallo Winery v Lion Nathan Australia Pty Limited 2009 ATMO 87.  However, ... (it) is now clear that there is little hope of resolution of the Federal Court proceedings between the parties … by negotiated settlement.  It is probably also a safe inference that the rectification matter could drag on for a very considerable time.

    ·     On the face of it, therefore, I believe that the proper course would be to lift the suspension of these matters unless FKP can show good reason to maintain it.  However, reg 5.16 provides for a process to be followed.  I will therefore allow FKP 14 days from the date of this letter to make representations on that question. 

    ·     Beyond that, and in the lack of a convincing argument from FKP for the continuance of the suspension, it would be necessary to give directions to re-start the opposition by setting due dates, in the near future, for evidence in the various matters (“the Further Directions”).  My aim would then be to establish a timetable that brings into alignment the due dates for as many as possible of the evidence stages of the various oppositions.  Therefore, each party may also make written submissions as to what the Further Directions should be. 

17. To this, FKP was able to reply only that it needed more time to make submissions on why the status quo should continue.  It appeared that FKP’s current lawyers, acting in the opposition matters since 2007, had yet to receive, from FKP’s former lawyers, the files relating to the oppositions.  I therefore directed that the matter be listed for hearing in Sydney as soon as this could be arranged.  At that hearing, FKP was represented by Angus Lang of counsel, instructed by Sagacious Legal.  Spirit was represented by Patrick Flynn, also of counsel, instructed by Mallesons.

    Reasons for decision

18. At the outset, I must agree with Mr Flynn that it is for FKP to show why a suspension should continue.  I reject both Mr Lang’s characterization of the matter on which he appeared as “Spirit’s third attempt at opposing a suspension” and his suggestion that Spirit bears the onus in doing so.  The onus lies with FKP.

19. Both parties made submissions about Cadbury. For Spirit, Mr Flynn argued that there were two principles identified at [9] in Cadbury that would negate any possibility of a suspension.

    The first is that to delay opposition proceedings for an indeterminate period, a period that could stretch out to three, four or even more years, amounts to a refusal by the delegate to hear those proceedings. The second reason is that the delegate was asked (and appears to have been prepared) to give too much significance to findings of fact made by the Federal Court.

20. As per [21] in Cadbury Mr Flynn conceded that

    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.

21. However, he argued that [21] itself sits within the limits posed by Finkelstein J as constituting the “first error”.  Mr Flynn argued that the judgment of Finkelstein J sets up something of a code governing suspensions.  In his view, taking paras [12] and [13] together, the Registrar’s statutory duty is defined and his/her ability to suspend oppositions is sharply constrained.  As, for example (and with due apologies for the liberty I have taken with the relevant paragraphs in the judgment):

    But subject to the requirements of the Act and the regulations (the effect of which 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) because the Registrar has control over the procedures of opposition proceedings he may presumably suspend or temporarily stay proceedings for proper reasons.

22. He thus argued that, even confronted by circumstances that were within [21], the Registrar could not indefinitely put off the hearing of an opposition.  With this I have to agree, if only to a limited extent.  The oppositions are presently suspended until any appeal from the judgment at first instance is decided.  This goes too far.  It is clear, post-Cadbury, that if the oppositions are to remain suspended, the terms on which this has presently been done must be modified.  At most, the oppositions could be suspended only until the Federal Court decides, at first instance, the matter before it. 

23. Mr Flynn argued strongly that, on the present facts, any further suspension would amount to an abdication of the statutory duty because of the time that has already passed combined with the inevitable remoteness of the end-point.  However, I do not agree.  Such a suspension would not be a denial of justice to Spirit because, for reasons that will emerge, the oppositions themselves simply cannot be readied for hearing any time soon.  See, in this regard, Cadbury at [15] and [16]. As Mr Lang pointed out, a suspension, even one with a history as vexed as this one, does not necessarily amount to a denial of justice; this must be determined on the facts of each case, where various offsetting factors require careful weighting and balancing.

24. Mr Lang, in support of the suspension, disagreed with Mr Flynn’s analysis.  In his view, with which I agree, [21] was a “general summing up” and Cadbury could not be reduced to some simple formula like “two years is not indefinite, therefore is permissible, but four years is not”. 

25. Relevantly, Mr Lang put the matter as follows, using the headings applicable in [21]:

    (a) and (b): the issues before the court and before the Registrar (fraud, misappropriation etc) are “identical” and a decision in FKPs favour in either forum decision would be “determinative” of the oppositions.

    (c): in theory, there might be additional evidence relied on before the Registrar, material that was, for instance, inadmissible in court.  However, Mr Lang argued that there was no basis on which to expect that the Registrar would have access to material that was not provided as part of the court proceedings.

    (d): it is unlikely that the judge’s findings, for example as to the state of Russian law in 1992 would be challenged before the Registrar, and it would be “appropriate for the Registrar’s delegate, while still deciding the matter for him or herself, to give due weight to the findings of the trial judge”.

    (e): it would be unfair (ie a breach of the rules of natural justice), or prejudicial in its ordinary sense, to force FKP to run its oppositions at the Trade Marks Office ahead of the conduct of the court matter.  Decisions in both forums were effectively locked, he said, to the same evidence.

26. I think that with respect to (a) and (b), Mr Lang possibly overstates the matter, though in his oral submission he carefully qualified the written submissions that Sagacious filed just before the hearing.  Even so, while before the Registrar, and for the purposes of s 58, FKP would almost certainly argue that it is the common law owner of, for example, the trade mark STOLICHNAYA.  Of course, the extent to which that would bear on the fate of “derivative” trade marks like STOLICHNAYA ELIT remains to be decided on the basis of arguments that are yet to be put.  Even so, argument about ownership of STOLICHNAYA could not be avoided in deciding if FKP had established a ground of opposition under s 58.[5]  Mr Flynn argued, briefly, that s 22, which deals with rights given to a registered owner of a trade mark, would prevent such an argument succeeding.  I note his position but must respectfully disagree.  Section 22, as he said, deals with a registered owner’s rights to deal with “a trade mark”.  However, the extent to which that provision would, or could, completely shut down any further debate under s 58 is less than clear to me.

    [5] A similar conclusion would be likely to apply with respect to FKP’s ground of opposition under s 42, where FKP alleges that use of the trade marks in question by Spirit would be contrary to law.  However, rather than try to anticipate such arguments, it will be convenient to focus on s 58.

1. Beyond this, as I noted in the third decision, any decision(s) ultimately made by the court to rectify the Register of Trade Marks would have a huge impact on FKP’s opposition cases under s 44 when these are conducted before the Registrar.  I will have more to say about this aspect in what follows.  For the moment, it will be sufficient to say, for the purposes of both (a) and (b), that there is significant overlap of issues.

2. As to (d), I need to deal very cautiously with FKP’s submission.  Finkelstein J, in Cadbury, was critical of what he apprehended might be the practice that is adopted by delegates of the Registrar.  Therefore, let me say plainly that, in the event of there being a decision in the Federal Court in the matter between Spirit and FKP, any delegate of the Registrar would approach the court’s judgment with appropriate caution in deciding the oppositions.  Where a delegate is confronted with facts or issues that require it, the delegate would assess, or temper, the findings of the court to the extent necessary.  Either party, moreover, in seeking to maximize its own case, would be very unlikely to fail to draw the delegate’s attention to any divergence between the alignment of issues, law, and fact in the court and the opposition matters.  On the other hand, however, where the facts and issues align, and to the extent that they align, it would naturally be “unlikely” (Beyond Properties, supra, noted also by the delegate who made the decision reviewed in Cadbury) that a different outcome would ensue in the Trade Marks Office. 

3. As to (e), Mr Lang’s written submissions suggest that FKP could be forced, in the absence of a suspension, to run the opposition proceedings “in advance” of the court matter, without benefit of sufficient procedural safeguards.  Here, his submissions refer to the discovery process and to the scope the parties would enjoy to bring on preliminary motions, such as the one dealing with the effect, or otherwise, of judgments such as the one in the Netherlands.  These, he said, adequately protect the rights of both parties.  I understand his point but no concern need arise on that score as I agree that the oppositions cannot be decided until the parties have gotten to the evidence that is at the heart of the court matter and to the complexities of international law that run through it.  This finding is unchanged by Mr Flynn’s observation (as to (c)) that there may well, due to different rules of admissibility, be differences between the totalities of the court and the opposition evidence.

4. That the evidence in the two matters cannot be separated is not to say that the Registrar would “go behind”, as Spirit once put it, in an earlier round of written submissions, the evidence and draw her own conclusions about, in particular, who should (or should not) be recorded as the owner of the prior registrations.  It would be grossly improper for the Registrar to approach the matter on the basis that the register “should” or “will” show the holder to be someone other than Spirit, whether or not the parties themselves were litigating that very point.  FKP is on shaky ground in basing a suspension request on a claim that the details in the register might change next year, or the year after.  That in turn is because Spirit, for its part, has given an undertaking to bring on its own evidence as regards s 44(3) or (4) expeditiously, should it need to do so.  Thus the matter can, in terms of s 44, be ready for hearing quite expediently and s 44, on the facts of this case, is a questionable basis for a delay in the hearing of the substantive matter.  However, s 44 can be put to one side in the case before me.  Any suspension of these oppositions would be based on s 58.

5. For that purpose it would be sufficient for FKP to succeed in its oppositions if the Registrar was satisfied that:

   (a) whatever the state of the register, either now or in the future, Spirit was not the common-law owner of, for example, the trade mark STOLICHNAYA at the priority dates of the IRDAs and that
   (b) despite the obvious differences in trade marks, this defect in ownership precluded Spirit’s present claim to ownership of, to continue the example, STOLICHNAYA ELIT. 

6. The latter argument is, as Spirit realizes, a long bow.  It is not, however, impossible.  See, for instance, Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242 and the consideration, at 247, of relevant authorities. The argument is one of real substance, such that it would be inopportune to resolve it in favour of either party at this point. Thus, at this stage, I agree with Mr Lang that the opposition decisions, as they relate to s 58, cannot be severed from the evidence necessary for an adequate investigation of the issue of common-law ownership, with which the Federal Court is concerned.

7. Mr Lang went on to assert that his client should not be put off from its chosen course by a “fraudster” who has coined “derivative” trade marks after having misappropriated the originals.  However, the entire question of the “derivative” nature of the IRDAs cannot be severed from resolution of the s 58 questions, as I have just explained.

8. I must agree with Mr Flynn about another aspect of the so-called “derivatives”.  Spirit is the registered owner of a number of trade marks.  It is, prima facie, entitled to coin derivative trade marks and to apply to register them.  I have, in the third decision, suggested that Spirit ought to be able to rely on the rights flowing from the earlier registrations to protect itself with respect to the mis-appropriation of “derivative” marks, either by FKP or by a third party.  With hindsight, this may have oversimplified that issue, which Mr Flynn further addressed at the hearing. 

9. The system for registration of trade marks expects that applications, including IRDAs, will proceed to registration (protection, in the case of an IRDA) unless there is some good reason to the contrary.  FKP has opposed registration of the IRDAs, which carries with it an obligation to support its oppositions.  FKP is entitled to argue for extension(s) of time for the service of its evidence in support of any of those oppositions and these would be granted if the Registrar is satisfied that it is appropriate (reg 5.15).  But the consequence of this is that Spirit is entitled to be appraised of why the extensions are sought, and make representations as to the contrary if it is minded to do so.

10. The matters with which the court would deal are potentially very relevant to the oppositions, though (leaving s 44 aside) the Registrar will ultimately have to consider, with the assistance of argument from both parties, the true extent of the relevance.  In the meanwhile, FKP is entitled to put its case, under reg 5.15, for why it cannot yet file and serve a copy of its evidence in support of the oppositions.  Given what I have said about the relevance of evidence that will be ultimately before the court, and/or of such matters as the court will deal with in August this year, perhaps this will not be too onerous a task for FKP.  It is, clearly, a task for which there is a process under the regulations.  As to the action of that process, there is no reason to apprehend that Spirit would be over-zealous in objecting to such extensions of time. 

11. FKP has argued that it is “unfair” that it be forced to follow the process set out in the regulations when, so it asserts, the work involved in doing so would be attributable to a fraudster.  However, the regulations simply require FKP to explain itself in order to account for the delay that it wishes to inflict on Spirit.  If FKP finds this process irksome, that would be understandable, but its reaction would by no means show that the process is unfair.  It may be (as Mr Flynn suggested at the hearing) that FKP would decide to withdraw the oppositions in such a case, and deal with all of those matters in the judicial forum.  On the other hand, as Mr Lang noted, FKP is fully entitled to exercise its rights at the Trade Marks Office.  Mr Flynn’s view, in that case, was that FKP should not look to Spirit for co-operation in reducing the procedural burden under the regulations[6]. 

    [6] Mr Flynn described the strategy adopted by FKP in conducting oppositions at the Trade Marks Office as well as litigating related matters in the court as “fundamentally ill-conceived”.

12. On the face of it, then, due process must be followed and FKP must adopt one of two alternatives: either begin to file regular extension of time applications and serve a copy of each and every one on Spirit, or (given that it cannot complete its opposition evidence at present) see its oppositions fail, with a significant increase in the number of registrations that FKP may then need to challenge in the Federal Court.  

13. Is there, perhaps, a better way?  Need reams of paper be sacrificed under reg 5.15 simply to avoid the proliferation of rectification actions in the Federal Court?  Once it is said that the relevant evidence is locked to that of the court proceedings, the value of requiring FKP to “go through the motions” of regular three-monthly applications for extensions of time perhaps becomes questionable. 

14. It is not, as I have said, unfair to expect FKP to expend extension of time fees and additional lawyers’ costs in making such applications.  That is part and parcel of the system though, since Spirit already knows a great deal about the court process, it may not advance Spirit’s cause at the Trade Marks Office to see copies of FKP’s extension applications on a regular basis under reg 5.15.  In such a situation, the extension of time process might appear to be something of a charade, played out at the behest of Spirit, to no good purpose other than to inflict on FKP an administrative chore of fairly inconsequential proportions when seen against the international litigation on which FKP is engaged.  That view, however, is not mine.  The question here should not be “what is the value of the process under the regulations?” so much as “what do the parties require, in order to deal with the dispute between them?”

15. The extension of time process is designed to deal effectively with disputing parties that do not, for quite understandable reasons, wish to co-operate with each other.  Under other circumstances a suspension until the issue of the court’s judgment at first instance would be an ideal solution.  I believe I have the power to suspend the oppositions for such a defined and appropriate term and that such a suspension would be a legitimate exercise of the discretionary power under reg 5.16.  However, I do not intend to allow the suspension to continue at the present time because of two factors which I believe must be included in the balance.  Firstly, it is possible to discern a degree of reluctance on the part of FKP to come to grips with the opposition process at the Trade Marks Office.  That is not to say that FKP has in any way slighted the process.  Even so, the submissions of Mr Lang suggest that FKP wishes to save itself what might be crudely called the administrative chore, and the related expense, of extension of time applications.  That is in itself understandable but such a view should perhaps carry less weight when it apparently springs at least partly from a belief that both the chore and the expense are unjustified, if not an injustice, simply because of FKP’s perception that Spirit is an undeserving usurper.  That same perception, it seems to me, leads FKP to under-value the detriment the delay in the registration of the IRDAs may potentially inflict on Spirit.  Given the very considerable time that has passed, for which FKP has not had to bear any expense by way of extension of time applications or fees, it is appropriate to now give more weight to the second factor, the need to recognize and allow for the legitimate expectation of Spirit under the regulations:  that it be kept appraised, and be able to have input, in deciding whether FKP should be allowed to draw out the evidentiary timeframe even further.

16. Those things being so, it seems to me that a strict application of the process in the regulations is the more appropriate course.  I direct that, by a date three months from the date of this decision (‘the new due date”) FKP either file and serve its evidence in support, in respect of each of the oppositions[7], or file applications seeking an extension of time beyond the new due date.  Given the time that has gone by since the oppositions were commenced, it is appropriate that any such applications be supported by an appropriately detailed declaration.

    [7] That date, three months from the date of this decision, would thus become the due date for evidence in support for all of the oppositions

17. In the circumstances, I make no award of costs.

    Terry Williams
    Hearing Officer
    Trade Marks Hearings
    15 July 2010

    Attachment 1

IRDA number (and class, where not 33)	Trade mark
932465	STOLICHNAYA ELIT
932471
934031	(as above, on device of bottle)
1111247
1122391
1122393	(as above, with “Ohranj”[orange] and devices of oranges instead of “Strasberi” and devices)
1122394	(as above, but with “Vanil” [vanilla] and devices)
1122410	(“Razberi” and devices)
1122496	(“Blueberi”)
1122497	(“Peachik” )
1137285 and 1137288 (classes 33 and 32 respectively)
1137290 and 1137291 (classes 32 and 33 respectively)
1122406 (class 32)	STOLI