k-Tec, Inc v Healthy Foods, LLC - [2016] ATMO 4

TRADE MARKS ACT 1995

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

Re:Opposition by K-Tec, Inc. to registration of trade mark application 1544596(7) - Spiral (Device) - in the name of Healthy Foods, LLC
-and-
Request by K-Tec, Inc. to amend statement of grounds and particulars

Delegate:	Adrian Richards
Representation:	Decision on the written record
Decision:	2016 ATMO 4 Section 52 opposition to registration: request under reg 5.12 to amend statement of grounds and particulars by adding s 58A ground — consideration of the availability of s 58A where application was not accepted under s 44(4) — delay in seeking amendment — request refused

Background

This decision is in relation to a request (‘the request’) under reg 5.12 of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’)[1] to add a new ground to the statement of grounds and particulars (‘the SGP’). Pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) [2] registration of trade mark application 1544596 (‘the application’) in the name of Healthy Foods, LLC (‘the applicant’) has been opposed by K-Tec, Inc (‘the opponent’). The opponent now seeks to add a ground based on s 58A to the grounds of opposition that currently appear on the SGP which are based on ss 42(b), 44, 58 and 60.
[1] Except where other legislation is specifically identified, any reference below to a regulation is to the Regulations.
[2] Except where other legislation is specifically identified, any reference below to a section is to the Act.
Both parties have met the various procedural requirements in prosecuting their respective roles in this opposition, including the filing of the required forms and evidence as prescribed in Part 5 of the Act and the Regulations. On 15 February 2015 the opponent requested an oral hearing on the merits of the opposition (‘the substantive matter’). The applicant subsequently gave notice that it planned to attend the hearing. A date for hearing was set for 29 July 2015, and the parties informed by way of a letter dated 11 June 2015.
I am a delegate of the Registrar of Trade Marks (‘the Registrar’) and I was charged with hearing and deciding on the substantive matter on 15 June 2015. Having reviewed the official file I sent a routine email to the parties on 18 June 2015 reminding them of their obligations to file an outline of their submissions prior to the hearing date. The request had been filed on 17 June 2015, but had not been placed on file at this time. It was eventually brought to my attention on 7 July 2015. I sent a second email to the parties the same day, acknowledging the request and seeking urgent comment from the applicant.
The applicant responded to my email on 15 July 2015, objecting to the amendment on several bases which are summarised below. I wrote to the parties once more, asking the opponent to either file submissions in rebuttal to the applicant’s objections or withdraw the request, noting that the first option could potentially require me to vacate the hearing date.
Over the following days, the parties sent me several emails relating to the request, copying in the other side on each occasion. It had become clear that this issue was unlikely to be resolved in time for the hearing, so on 23 July 2015 I proposed the following directions:
·The hearing date of 29 July 2015 is now vacated, and will be rescheduled once the request has been finally disposed of. For clarity, should the amendment be allowed, the hearing will not be rescheduled until after the parties have been given an opportunity to lead evidence on the s 58A ground.
·By 5pm Canberra time 30 July 2015, the Opponent will provide its reasons in full for making the request, including representations in response to the issues identified in the Applicant’s letter of 10 July 2015.
·By 5pm Canberra time 6 August 2015, the Applicant will provide any representations in response to the Opponent’s full reasons for making the request.
·Upon receipt of these representations, I will determine this preliminary issue and, should the circumstances require, set out a timetable for the filing of evidence.

The applicant responded on the same day indicating its consent to these directions, and proceeded to follow them. The opponent did not offer its express consent, but it did comply.

Relevant provisions

The following provisions of the Act and Regulations are relevant to the request:
Section 44 Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)     the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)     a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)    a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)     the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1:       For deceptively similar see section 10.
Note 2:       For similar goods see subsection 14(1).
Note 3:       For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)     it is substantially identical with, or deceptively similar to:
(i)     a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)    a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)     the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:       For similar services see subsection 14(2).
Note 3:       For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

…

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i)the similar goods or closely related services; or
(ii)the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

Section 57 Registration may be opposed on same grounds as for rejection
The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.
Note: For this Act see section 6.

Section 58A Opponent’s earlier use of similar trade mark

(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

(a) subsection 44(4); or

(b) a similar provision of the regulations made for the purposes of Part 17A.

Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first—mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

(a)first used the similar trade mark in respect of:

(i)similar goods or closely related services; or

(ii)similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

(b)has continuously used the similar trade mark in respect of those goods or services since that first use.

Note:For predecessor in title see section 6.

Regulation 5.12 Amendment of statement of grounds and particulars
(1)An opponent may request the Registrar to amend the statement of grounds and particulars to:
…
(c) add a new ground of opposition…
(2)The Registrar may grant the request on terms that the Registrar considers appropriate.
(3)However, the Registrar may grant a request to:
…
(b) add a new ground of opposition;
only if the Registrar is satisfied that the … addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
(4)If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.

Submissions

The application was not accepted under the provisions of s 44(4) and the request relevantly states:
Section 58A is only available where an application has been accepted under the provisions of section 44(4). The opposed application was not accepted under these provisions and accordingly the Opponent could not have relied on section 58A at the time it filed the SGP. Following lodgement of the Applicant's evidence in answer however, new information became available which may allow for the application of section 44(4). Accordingly, in light of this new information, the Opponent seeks to add the section 58A ground of opposition.

Given that the Applicant's evidence in answer was filed after the lodgement of the SGP, the Opponent could not have been reasonably aware of this information at the time of its filing.

A preliminary issue identified in the above excerpt is the regulatory limitation on the availability of amendment to an SGP[3] — it is impossible to add a ground of opposition to the SGP unless the Registrar finds that the opponent could not reasonably have been aware of the information under which that new ground arises, at the time the SGP was filed. The applicant has not contradicted the opponent’s submissions on this point, and I see no reason to doubt that the applicant’s evidence in answer was the catalyst for the opponent filing the request. Since the evidence in answer was available to the opponent well after the filing of the SGP, I find that amendment to the SGP is not barred by reg 5.12(3). As such, my reasoning below is confined to the question of whether it is appropriate to amend the SGP in line with the request.
[3] Regulation 5.12(3).
The applicant’s letter of 10 July 2015, in summary, objects to the amendment on four bases:
(a) If an application was not accepted by the examiner pursuant to s 44(4) (as has happened here), s 58A cannot form a ground of opposition (‘statutory interpretation’).
(b)   Deciding oppositions without undue delay is in the public interest. The opponent has not offered any explanation of the significant delay between its receipt of the evidence in answer and making the request (‘public interest and delay’).
(c)    The applicant would suffer prejudice if the amendment was made (‘prejudice’).
(d)   The evidence of prior use put on by the opponent for its earlier registered trade mark is ‘nonexistent’ (‘want of purpose’).

10. The opponent’s submissions of 30 July 2015 address the first three bases:

(a) On statutory interpretation, where consideration of s 44(4) is to be had during opposition proceedings, it will also be appropriate to consider s 58A, regardless of the provision under which the examiner originally accepted the application. This proposition is supported by two earlier decisions of this office: Roger Maier v AsosPlc[4] and Rubelli SpA v Virtual Couch Industrie SDN BHD.[5]
(b) On public interest and delay, reg 5.12 does not impose a time limit on amendment and,
…the real public interest is in the Delegate making his decision as to whether to refuse or register the Opposed Application on the basis of a full consideration of the Application in light of each relevant ground of examination and of opposition available under [the Act]…

(c) On prejudice,
…any prejudice to the trade mark Applicant arising out of the notification of the SGP Amendment Request on 17 June 2015, has and will be dealt with by the Delegate’s directions to vacate the hearing and to set out a timetable for filing relevant evidence, if the amendment is allowed.
[4] [2014] ATMO 7, [41]-[44] (‘Maier’).
[5] [2011] ATMO 3, [11]-[12] (‘Rubelli’).

11. The applicant’s response of 8 August 2015 provides more discussion of the first two bases:

(a) On statutory interpretation, s 58A(1) should be given a literal construction as in, MACH Systems Pty Ltd v Bluescope Steel Limited[6] and DNA Products Aust Pty Ltd v Botany Essentials Pty Limited.[7]
(b) On public interest and delay, the opponent has not provided an explanation as to why it delayed making the request for nine months. Paraphrasing the Explanatory Statement accompanying the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) (Cth) (‘Raising the Bar’), the submission notes that a purpose of the amending legislation was ‘to reduce delays in the resolution of oppositions with regards [sic] patent and trade mark applications and to streamline the opposition process by reducing time frames.’

[6] [2013] ATMO 40, [19].

[7] [2013] ATMO 82, [34].

Preliminary matters

12. The opponent did not attempt to rebut the applicant’s objection based on want of purpose. The applicant was right to identify this as a relevant consideration in weighing the Registrar’s discretion under reg 5.12(2). This is because the request seeks an indulgence, and should be granted only if it has some effect. That said it is undesirable, as a matter of course, to decide on the strength of one party’s evidence on a particular ground of opposition in order to deal with a question of procedure (though this will be unavoidable in some circumstances). I have elected not to evaluate the opponent’s s 58A evidence, because other factors militate against making the amendment.

13. The statutory interpretation issue raised the potential lack of availability of s 58A in these proceedings. This could again mean that the requested amendment would be of no effect. However, this question can be answered without reference to any material filed by the parties in the substantive matter. I have therefore treated this as a threshold issue.

Reasons

Threshold issue: availability of s 58A

14. Section 58A(1) appears to require for its operation an application for registration which has been accepted because of either s 44(4) or reg 17A.28. The Act contemplates that acceptance will come about as a result of examination.[8] The applicant contends that, since this application was not initially accepted during examination under the provisions of s 44(4), s 58A is not available to the opponent. Despite the opponent’s submissions on the availability of s 44 at opposition generally, the applicant does not appear to have taken the argument any further than as I have put it here.

[8] Section 33.

15. The opponent has referred to two decisions of this office which appear to disregard this apparent barrier to the operation of s 58A. Rubelli acknowledges that ‘an opponent might not know that section 58A is of relevance to the opposition until after the applicant had served its evidence in answer’,[9] while Maier offers the following:

I note that section 58A is said to apply if the application has been accepted because of subsection 44(4). In the present matter I have found that the application may be registered because of subsection 44(4). However, nothing hangs on this. The salient fact is that subsection 44(4) is applied and whether this occurs during examination or opposition is not relevant.’[10]

I note for now that both of the hearing officers’ statements above appear to be clear and reasonable.

[9] Rubelli [2011] ATMO 3, [12].

[10] Maier [2014] ATMO 7, [44].

16. Returning to the decisions cited by the applicant, those and other decisions of this office that have made similar findings on the availability of s 58A have attracted criticism from legal commentators, for example:

A literal interpretation of the provision may lead to the curious position where it is not applicable if an examiner does not raise any objection under s 44 but registration is then "successfully" opposed on that basis. In such circumstances, there would be no decision at the examination stage to permit registration on the basis of s 44(4). Yet s 58A, read literally, suggests that an opponent who successfully raises a s 44(1) or (2) objection at opposition would be stymied in any attempt to also oppose a decision to then permit registration under s 44(4) because the "application" was not accepted under s 44(4) and therefore the opponent could not at that point raise s 58A as a ground of opposition. Such an interpretation appears to have been adopted in some decisions by delegates but not uniformly. The utility of such an interpretation is questionable and it would seem the word “application” could be given a more expansive meaning for the purposes of s 58A.[11]
[11] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online (September 2015) Westlaw AU, [50.2240] < Other problems have been identified with the stricter reading of s 58A(1).[12] For example, it grants an unexplained and unique finality to the examiner’s decision on a substantive issue. [13] Further, the effect of this reading renders the availability of s 58A erratic. Its availability would have to depend on at least three, cumulative, unreviewable, preconditions:
·    the examiner’s decision as to whether to raise a s 44 ground for rejection,
·    if s 44 is raised by the examiner, whether the applicant elects to respond with evidence of prior use,
·    if s 44 is raised by the examiner and the applicant responds with evidence of prior use, whether the examiner decides to accept the application under the provisions of s 44(4).
[12] See generally, Michael Handler and Robert Burrell, ‘Reconciling Use-Based and Registration-Based Rights Within the Trade Mark System: What the Problems with Section 58A of the Trade Marks Act Tell Us’ (2014) 42 Federal Law Review 90.
[13] Ibid 107-8.
18. Norms of administrative law require that the examiner make the first and third of these above decisions on her own opinion, within the bounds set by the legislation. An applicant will also often make his own mind up about how to proceed in the face of a s 44 ground for rejection, though this decision may be informed by many more considerations than those permitted of the examiner, for example, his overall (or meta) filing strategy or ease of prosecution of the present application. All of the above preconditions are inherently subjective, and therefore to some extent arbitrary, decisions. The capriciousness that becomes apparent when these preconditions are considered warrants an exploration of the legislative context of this ground of opposition.
19. The Acts Interpretation Act 1901 (Cth) relevantly provides:
15AA Interpretation best achieving Act’s purpose or object
In interpreting a provision of an Act, the interpretation that would best achieve the purpose or object of the Act (whether or not that purpose or object is expressly stated in the Act) is to be preferred to each other interpretation.
15AB Use of extrinsic material in the interpretation of an Act
(1) Subject to subsection (3), in the interpretation of a provision of an Act, if any material not forming part of the Act is capable of assisting in the ascertainment of the meaning of the provision, consideration may be given to that material:
(a) to confirm that the meaning of the provision is the ordinary meaning conveyed by the text of the provision taking into account its context in the Act and the purpose or object underlying the Act; or
(b)     to determine the meaning of the provision when:
…
(ii)the ordinary meaning conveyed by the text of the provision taking into account its context in the Act and the purpose or object underlying the Act leads to a result that is manifestly absurd or is unreasonable.
…
(3)     In determining whether consideration should be given to any material in accordance with subsection (1), or in considering the weight to be given to any such material, regard shall be had, in addition to any other relevant matters, to:
(a) the desirability of persons being able to rely on the ordinary meaning conveyed by the text of the provision taking into account its context in the Act and the purpose or object underlying the Act; and
(b)     the need to avoid prolonging legal or other proceedings without compensating advantage.
20. As I have noted earlier, the applicant’s preferred construction of s 58A(1) effectively shuts out consideration of earlier use of a s 44 trade mark, unless a series of cumulative preconditions are met. Where one or more of the preconditions are not met, this reading would mean the person deciding the opposition is precluded from considering which of the trade marks under comparison was used first, even if that person considers and applies the provisions of s 44(4). That is, in all oppositions where s 44 is at issue, it would be open to the decision maker to consider earlier use by an applicant, but depending on the choices of the examiner and applicant during examination, the decision maker may or may not be at liberty to consider use of the s 44 trade mark. It therefore appears that this narrow reading of s 58A(1) would diminish a fundamental function of a trade mark opposition in certain circumstances, and when those circumstances arise is unpredictable. Where a potential reading of statute leads to unreasonable results such as this, it will typically require the consideration of extrinsic material.
21. The Explanatory Memorandum to the amending legislation which inserted s 58A into the Act offers an insight into the purpose of the provision:
1. A person may obtain acceptance and registration for a trade mark under section 44(4) even though an earlier similar trade mark has been registered for similar goods and services. The person must be able to show that they have used the trade mark before the filing date of the earlier trade mark on those particular goods or services.
2. However the owner of the earlier trade mark may have used their trade mark before applying for trade mark registration and accrued common law rights. As it stands the owner of the earlier registered mark has no basis on which to oppose registration of a trade mark accepted under subsection 44(4), even where their use pre-dates that of the accepted application.
[14] Explanatory Memorandum, Trade Marks Amendment Bill 2006 (Cth) 8 [4.9].
3. The new section will provide a basis for the Registrar to give consideration to these issues in opposition proceedings.[14]
22. Leaving aside for now the problematic language above that is mirrored in the text of s 58A(1) itself,[15] this explanation conveys an intention to permit the Registrar, during an opposition proceeding, to discover which of the registered marks before her has seen the earlier use. This intention has been reflected elsewhere in the wording of the section. In order to determine whether the opponent ‘first used the similar trade mark’[16] (and therefore may have obtained a proprietary interest at common law, such as under the tort of passing off), it is necessary to compare the timing of trade mark use of both parties. Another informative aspect of the Explanatory Memorandum is that it expresses twin concerns. Not only that a person may obtain acceptance under s 44(4) in this situation, but also that the person may obtain registration. The purpose of s 58A is therefore to extend the consideration of s 44(4) into the opposition context, and so the words ‘the application of which has been accepted because of’ in s 58A(1) must be interpreted to align with that purpose. The preferred construction of that phrase must therefore be broader than the narrow reading urged by the applicant in this case, extending to applications for registration which might otherwise have proceeded to registration due to s 44(4). It follows that s 58A is at least in principle available wherever either of those prior use provisions are or may be enlivened. The amendment sought in the request can therefore potentially serve a purpose, and so does not fail at the threshold.
[15] That is the use of the term ‘accepted’ and the potential to read that word as only an administrative act that occurs as an outcome of examination.
[16] Section 58A(2)(a).
Reg 5.12 – Exercise of the Registrar’s Discretion
23. The factors that will generally need to be taken into account in the exercise of the Registrar’s discretion to amend an SGP are the likely prejudice to the parties, the public interest, whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment. In the present matter the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment are also relevant.
Prejudice
24. The applicant has stated that adding a new ground at such a late stage in proceedings would be prejudicial to it. In response, the opponent has stated that since I have vacated the hearing date and have indicated that the amendment, if made, could result in me inviting the parties to file new evidence on the added ground, any possible prejudice would be cured. I am less sure than the opponent on this, since it has been said ‘there is an irreparable element of unfair prejudice in unnecessarily delaying proceedings’.[17] In considering the discretion, given the lateness of the request, I consider this to be a factor that weighs against making the amendment.
[17] Aon Risk Services v Australian National University (2009) 239 CLR 175, 181 [5] (French CJ) (‘Aon’).
Public interest
25. To recall in summary, the opponent says the public interest lies in a full consideration of all of the available grounds of opposition, while the applicant says it lies in a fast, predictable process.
26. If the overarching principle here is as the opponent puts it, an amendment along the lines proposed in the request would be available to an opponent as of right. I am not convinced of this for two reasons. Firstly, the power to amend an SGP in reg 5.12 is cast in discretionary terms. Secondly and more generally, Part 5 of the Regulations sets out in detail the procedure for opposition proceedings. It prescribes several deadlines regarding the filing of not only the SGP, but various procedural documents and evidence. The provisions that apply when an extension of time to an evidence deadline in opposition proceedings is sought are notoriously more onerous than extension of time provisions found elsewhere in the legislation. Had a full airing of all relevant grounds in every opposition been the ultimate aim of the opposition provisions, the provisions setting out procedure would not have been cast in such restrictive language. Instead there is a timetable for filing various opposition documents, each stage of which depends largely on the last. In the words of the majority in Aon:
A party has the right to bring proceedings. Parties have choices as to what claims are to be made and how they are to be framed. But limits will be placed upon their ability to effect changes to their pleadings, particularly if litigation is advanced. That is why, in seeking the just resolution of the dispute, reference is made to parties having a sufficient opportunity to identify the issues they seek to agitate.[18]
[18]Ibid 212 [112] (Gummow, Hayne, Crennan, Kiefel and Bell JJ) (emphasis in original).
27. The applicant’s suggestion that speed should be equated with the public interest is also unconvincing. As with the discussion above, this is not the sole concern of the relevant legislation. Had regularity of the opposition process been the aim, no extension of time provisions would be necessary,[19] nor the power to alter procedure,[20] nor to stay proceedings for negotiations between the parties.[21]
[19] Regulations 5.9, 5.10, 5.15.
[20] Regulations 5.3, 5.19.
[21] Regulation 5.16.
28. To sum up, the bases for both of the parties’ positions can be found in the legislation, yet at the same time both are not its exclusive concern. The relevant provisions set a process to be followed, but also provide a degree of flexibility in following that process. This indicates that the public interest lies in balancing several factors. The parties have drawn my attention to two. Both are uncontroversial but will typically weigh against one another. There are several other considerations which would be relevant to public interest, such as the avoidance of unnecessary costs, the need to maintain the confidence of the public in this tribunal, and the likely effect of delays on other users of this tribunal.
29. Under the legislated procedure, it is the opponent who nominates the grounds of opposition, and the onus is on the opponent to show on the balance of probabilities that at least one of the grounds of opposition has been made out.[22] The roles of both the Registrar and the applicant in this regard are essentially reactive to the opponent. It is therefore crucial that an opponent be forthcoming in which grounds of opposition it wishes to press. Significant delay in providing this information will inevitably prejudice the applicant and potentially the public interest through delays in proceedings, diminishing the opportunity for the parties to settle their dispute, and, in the extreme case, may cause an opposition by ambush. In general, the later in the proceedings a new ground of opposition is added, the greater the detriment it is likely to cause.
[22] Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC [132].
Lateness of the request
30. The request was filed six days after the hearing date had been formally communicated to the parties, and six weeks before the hearing was to take place. This places the request toward the end of the opposition process. To further illustrate the timing of the request, it was filed about six months after the opponent had concluded the last of three stages of evidence — evidence in reply. In making the request, the opponent has explained that at the time of commencing the opposition s 44(4) (and therefore s 58A) was not at issue. This changed when the opponent came to view the applicant’s evidence in answer, which purports to include evidence of use earlier than the applicant’s priority date. Such evidence permits a hearing officer to consider the application of s 44(4), leading to the opponent wishing to show that it had even earlier use than the applicant, hence the request.
31. The opponent was officially notified by the Registrar of the availability of the applicant’s evidence in answer on 13 October 2014. The opponent then went about preparing its evidence in reply, which it filed on 12 December 2014. It is fair to assume that the opponent’s evidence in reply was prepared with the applicant’s evidence in answer in mind. Indeed, evidence in answer is what evidence in reply is ‘in reply’ to. The opponent therefore delayed making the request by nine months. The opponent has offered little by way of explanation for the delay, save noting that it was not aware of the need to invoke s 58A at the time it filed the SGP and that reg 5.12 does not impose a time limit on amendment.
32. The dispute in Aon concerned a late application by a party to amend its pleadings — a document that serves a very similar function to an SGP. The issues in that dispute were the interpretation of relatively recently enacted ‘case management’ style reforms to the rules of the ACT Supreme Court.[23] Those reforms were in many ways similar to the Raising the Bar reforms in that they concerned reducing delays in procedure in the lead up to trial. The following passage from the majority judgement is therefore instructive:
Generally speaking, where a discretion is sought to be exercised in favour of one party, and to the disadvantage of another, an explanation will be called for. The importance attached by r 21 to the factor of delay will require that, in most cases where it is present, a party should explain it. Not only will they need to show that their application is brought in good faith, but they will also need to bring the circumstances giving rise to the amendment to the court’s attention, so that they may be weighed against the effects of any delay and the objectives of the Rules.[24]
[23] Court Procedures Rules 2006 (ACT).
[24] Aon (2009) 239 CLR 175, 195 [103].
33. The above comments serve to highlight the obligation on a party to explain significant delays in seeking amendments to pleadings. On this, the opponent has been less than forthcoming. Firstly, it has not revealed when it actually realised that it could be appropriate to seek to add a new ground of opposition to the SGP. Secondly, it has not explained the circumstances in which the nine month delay occurred, leaving me unable to form a view on whether the delay was reasonable in the circumstances. Finally, it has offered very little for me to weigh against the delay that adding a new ground of opposition will cause. Rather it has argued unconvincingly that adding a new ground would not cause any delay.
34. Given the lateness of the request, a full explanation was clearly required. The opponent had been put on notice of this requirement in my directions of 23 July 2015. I find that the opponent’s failure to provide a full and frank explanation for the delay together with the prejudice that the amendment will cause the applicant militate decisively against the exercise of the discretion.
Decision
35. I refuse the request to amend the SGP. The hearing on the substantive matter will now be rescheduled at a time convenient to the parties.
Adrian Richards
Hearing Officer
Trade Marks Hearings
14 January 2016