Kiwi Munchies Pty Ltd v Inghams Enterprises Pty Ltd

[2003] ATMO 70

TRADE MARKS ACT 1995

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

Re:Objection by KIWI MUNCHIES PTY LTD, to an application by INGHAMS ENTERPRISES  PTY LTD, for an extension of time to file further evidence in relation to the opposition to registration of trade mark 856195(29) - CHICKEN MUNCHIES - filed in the name of INGHAMS ENTERPRISES PTY LTD.

Delegate:	Tabatha Klippan
Representation:	Opponent: Sophia Paras, of KM Legal Applicant: Chris Sgourakis, of Griffith Hack
Decision:	(1) Application for extension of time to file further evidence granted (2) Costs awarded against the opponent

Background

1. On 6 November 2000, Inghams Enterprises Pty Ltd, ('the applicant'), filed trade mark application number 856195 to register the trade mark, CHICKEN MUNCHIES, in respect of the following goods:

   Class 29:     Chicken; chicken meat products; chicken pieces; prepared or processed foods comprising; chicken nuggets; chicken burgers

2. Acceptance of the application was advertised in the Official Journal of Trade Marks on 6 June 2002. 

3. Kiwi Munchies, ('the opponent'), filed a notice of opposition on 18 July 2002.  Evidence in support, answer and reply was duly filed and served by the parties.  As neither party requested a hearing the matter was set down for a decision on the written record.  Both parties were advised of this by facsimile dated 2 June 2003.

4. By facsimile dated 3 June 2003, the trade mark applicant asked that the delegate of the Registrar not issue a decision on the written record and simultaneously filed an application for permission to file further evidence.  The accompanying statutory declaration of Chris Sgourakis claimed that the opponent's substantive evidence was contained in the evidence in reply and not in the evidence in support.  Therefore the applicant had not had an opportunity to respond to the substantive matters when its evidence in answer was filed.

5. The opponent, through its agent, KM Legal, objected to the application for permission to file further evidence on 19 June 2003.  However, on 23 June 2003, both parties were advised that the Registrar intended to allow the three month extension of time, unless within 14 days from the date of notification of the Registrar's intention, the opponent requested a hearing of the matter.  The opponent requested a hearing of the matter on 27 June 2003. 

6. On 30 June 2003, the applicant filed and served the further evidence.  The further evidence consists of:

   ·     A Statutory Declaration made by Chris Sgourakis on 17 June 2003, with Annexure A-1

   ·     A Statutory Declaration made by John Richards Hexton on 23 June 2003, with Annexure A.

7. As a delegate of the Registrar of Trade Marks, I heard the matter in Canberra on 8 August 2003.  Mr Chris Sgourakis of Griffith Hack, Patent and Trade Mark Attorneys, represented the applicant.  Ms Sophia Paras, of KM Legal, represented the opponent.  Both parties were heard by telephone.

   Submissions And The Law

8. In accordance with regulation 5.15 the Registrar may grant an application for an extension of time to serve further evidence if the Registrar is reasonably satisfied that:

   ·the person applying to serve further evidence has served a copy of the application, and of any documents accompanying the application, on the other party;

   ·     the parties have been given a reasonable opportunity to make representations concerning the application; and

   ·     the granting of the application is appropriate.

9. Ms Paras submitted that the Registrar had become functus officio with regard to the granting of the extension of time to file further evidence because both parties had already been advised that the matter was to be directed to a delegate of the Registrar for a decision based on the written record.

10. The setting down of a matter for a decision is an interim decision not a final decision and does not mean that the Registrar has discharged his duty and may not grant an extension of time to consider the admission or otherwise of further evidence. An application for permission to file further evidence may be filed at any time prior to the substantive opposition being heard. Indeed, if further evidence allows a more complete picture of the circumstances relating to the opposed trade mark to emerge, this can only assist the Registrar's delegate in deciding the main opposition. 

11. Ms Paras further submitted that the applicant has not satisfied the requirement of regulation 5.15(1)(b), arguing that the applicant "has not discharged the burden of establishing a proper case to justify the extension sought". 

12. Mr Paras referred to The Dupps Company v Stord Bartz A/S, (1990) 18 IPR 499, where the delegate of the Commissioner of Patents referred to three criteria, developed from Lord Denning's judgment in Ladd v Marshall, (1954) 1 WLR 1489, to be considered in deciding whether leave to adduce further evidence should or should not be granted. These criteria state that:

    1.   It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage

    2.   The evidence must be such that, if given, it would probably have an important influence on the result of the case

    3.   The evidence must be such as is presumably to be believed, i.e. it must be apparently credible, thought not necessarily incontrovertible.

13. Ms Paras claims that the "bulk" of the evidence the applicant wishes to file as further evidence has been available to it all along and that it should not be permitted to file it at this late stage.  Ms Paras was also critical of the further evidence and claimed that it is of little value.  She argued that the documentation filed in support of the extension application falls short of providing any cogent reasons as to the nature of the circumstances that support the extension of time being granted.

14. Ms Paras made further submissions on the grounds of relative inconvenience to the parties and the public interest, as discussed in Lyons(trading as Mitty's Authorised Newsagency) v Registrar of Trade Marks (1983) 1 IPR 416. She submitted that the opponent will be greatly inconvenienced if the extension of time is granted because the opponent will then need to prepare additional evidence in rebuttal.

15. Ms Paras also said that the public interest will not be served by the granting of an extension of time to serve further evidence. She said there is a public interest in the expeditious determination of applications.  She referred to Re Application by Jonathan Sceats Design Pty Ltd, (1989) AIPC 90-600 where it was held that the Registrar must give greater weight to the general public interest of effective, timely administration of the provisions of the Act.

16. Mr Sgourakis submitted that the principle consideration in determining whether the Registrar should allow the further evidence to be served was the "desirabilty of having the substantial issues satisfactorily and fully investigated", as stated in Schwitters v Horphag Research Ltd (1997) ATMO 62. In support of this, Mr Sgourakis stated that the further evidence goes toward the important issues at hand and that it is desirable to have issues decided with all relevant evidence at hand.

17. Mr Sgourakis claimed that the opponent's substantive evidence only appeared, for the first time, in the evidence in reply.  This being the case, the applicant was unable to include in the evidence in answer the evidence that is now contained in the further evidence.

18. He also claimed that the further evidence is credible and is backed-up by documentary proof, including an independent investigator's report, history of Inghams adoption of and preparations to use the CHICKEN MUNCHIES trade mark and print-outs from the Trade Marks Office data base.

19. Mr Sgourakis further argued that the opponent is not inconvenienced by the filing of further evidence, but rather it is the applicant who has been inconvenienced by having to prepare further evidence in order to address the issues that were not raised until the evidence in reply stage.  Mr Sgourakis claimed that allowing the further evidence in would cause minimal disruption to the proceedings and all that is required of the opponent is to peruse the two declarations that comprise the further evidence. 

20. Mr Sgourakis referred to Studio SRL v Buying Systems (Aust) Pty Ltd (1991) 22 IPR 580 at 585 where Hearing Officer Homann said:

    the effect of refusing an application for special leave (to serve further evidence) might therefore be to force an unsuccessful party to the opposition before the Registrar into an appeal to the court where the evidence, if admissible, would not be excluded (because the appeal would a hearing de novo).  Obviously, it would be preferable for the matter to be finally decided by the Registrar if the admission of further evidence would allow this to be done.

21. The final issue addressed by Mr Sgourakis was the delay in the applicant seeking the extension of time to file further evidence. Mr Sgourakis stated that the delay in seeking the extension of time occurred because the opponent's evidence in reply was mis-classified as evidence in answer and therefore the applicant's attorney incorrectly assumed that Inghams could file its evidence without an extension of time.  Immediately, upon discovering this error, the applicant's attorneys filed the application for extension of time.

22. In relation to the main opposition I am satisfied that both parties have filed and served their evidence with considerable expedition.  The delay in filing the application to serve further evidence is not significant and is certainly not a delay that would adversely effect the public interest.

23. The opponent's evidence in support consists of a statutory declaration made by Anastasia Ualesi which merely states that the opponent has a pending trade mark application that pre-dates the subject application.  The evidence in support is a bald statement that does not support the grounds for opposition, other perhaps than as an ill-defined attempt to support a ground for opposition under section 44 of the Act.

24. The opponent's evidence in reply however consists of a second and more substantial statutory declaration dated 1 April 2003 made by Anastasia Ualesi.  It is this evidence and not the evidence in support, which contains the opponent's substantive evidence.  Consequently, the applicant was not afforded the opportunity of answering the opponent's evidence when the evidence in answer was served.

25. As neither party had requested a hearing or commenced preparations for the hearing of the substantive opposition, allowing the further evidence to be filed will not unduly inconvenience either party.

26. The applicant requested an extension of time to 2 July 2003 to file the further evidence, and met that deadline by filing and serving the further evidence on 30 June 2003, thus demonstrating diligence in the preparation of the further evidence.  As the further evidence has already been filed and served, the applicant will not require any further extensions of time to finalise the further evidence.

27. The evidence is credible and relevant and may have an important impact on the outcome of the substantive opposition. 

28. Thus far, this opposition has been conducted in a timely manner with evidence in support, answer and reply each being filed and served within the 3 month statutory period.  Allowing the further evidence in at this stage of the proceedings will not cause any undue delay.

29. I find that the balance of inconvenience lies with the applicant.  The opponent's evidence in reply raises new issues and it is only fair and just that the applicant should be given the opportunity to respond to those issues.  Additionally, the public interest lies with the Registrar having all relevant evidence before him when deciding the substantive opposition.

    Decision

30. My decision is that the application for permission to file further evidence is granted.  I allow the opponent one month from the date of this decision to reply to this further evidence.

    Costs

31. The applicant has sought costs in this matter.  As the applicant has been the successful party in this matter, I award costs against the opponent and direct that the opponent pay the costs of the applicant in accordance with the official scale.

    Tabatha Klippan
    Senior Examiner
    Trade Marks Hearings and Legislation
    20 November 2003