Gemini Marine CC v Gemini Inflatables (Aust) Pty Ltd

This decision concerns an application by Gemini Marine CC (the opponent) for permission to serve further evidence in trade mark opposition proceedings against Gemini Inflatables (Aust) Pty Ltd (the applicant). The applicant had opposed the opponent's application to register trade marks. The opponent sought to introduce further evidence, which the applicant argued should not be admitted due to delays and the nature of the evidence. The matter was heard by Claudia Murray, Hearing Officer, at the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether it was appropriate to grant the opponent permission to serve further evidence, despite the applicant's objections regarding the timeliness and relevance of that evidence. This required the Hearing Officer to consider the principles governing the admission of further evidence in trade mark opposition proceedings, particularly in light of the fact that proceedings before the Registrar are original and not strictly appeals.

The Hearing Officer considered the relevant provisions of the Trade Marks Office Manual of Practice and Procedure, which refer to a threefold test derived from *Ladd v Marshall* for the admission of further evidence: that it could not have been obtained with reasonable diligence earlier, that it is likely to have an important effect on the outcome, and that it is credible. However, the Hearing Officer also noted that Australian proceedings before the Registrar are original hearings, and an appeal to the court is a hearing *de novo*. Therefore, refusing an application for further evidence before the Registrar might simply force the unsuccessful party to appeal to the court, where the evidence could then be adduced. The Hearing Officer found that the evidence in question might arguably go to the exercise of the Registrar's discretion and that it was best left to the delegate hearing the substantive matter to assess its weight. While acknowledging the opponent's apparent delays, the Hearing Officer concluded, with some reluctance, that it was appropriate to grant leave for the further evidence to be served and filed.

The Hearing Officer granted the opponent permission to serve its further evidence. The opponent was directed to file its original consolidated evidence and serve it upon the applicant within one month. The applicant was then given one month to file and serve its evidence in response. Following this, the substantive oppositions would be in a fit state for hearing or decision. No order for costs was made.