Kiwi Munchies Pty Ltd v Kraft Foods Holdings Inc
[2005] ATMO 22
•29 April 2005
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Kiwi Munchies Pty Ltd to registration of trade mark application 941375(30) - IN A BISCUIT STOPS THE MUNCHIES LOGO - filed in the name of Kraft Foods Holdings Inc. In the matter of amendment of the Notice of Opposition
Delegate: Terry Williams Representation: Opponent: Sophia Paras, solicitor, KM Legal
Applicant: Jeffrey Ryder, patent attorney, Callinan Lawrie, written submissions.Decision: S 66 amendment of notice of opposition: late request to introduce new grounds – apparent lack of merit. Amendment refused.
Written submissions: role in decision of opposition considered.Background
This matter involves an application under s 66 of the Trade Marks Act 1995 (the Act). Kiwi Munchies Pty Ltd (Kiwi) has asked to amend a notice of opposition that it has filed in the trade mark proceedings that I will further describe below. The amendment seeks to include grounds of opposition under s 59 and 62 of the Act. While this is an amendment question, the facts behind it are complex and an understanding of the opposition proceedings to which the proposed amendments relate is crucial.
Kraft Foods Holding Inc (Kraft) has applied for registration in class 30 of a composite trade mark containing the words IN A BISKIT STOPS THE MUNCHIES. This has been examined and accepted for possible registration. Kiwi has filed an opposition to the registration, on grounds under s 41, 42(b), 43, 58 and 60 of the Act.
The parties filed and served evidence as provided under part 5 of the Trade Mark Regulations. They were given an opportunity to be heard but neither side took advantage of this and the matter was referred to Ms. Rachel Dunn, then acting as a Hearing Officer, to be decided on the written record, which included the written submissions of both sides. On 8 June 2004, Ms. Dunn directed that the trade mark proceed to registration. In her reasons for decision she stated:
Ms. Paras (solicitor for Kiwi) also submits that the applicant does not use the trade mark for the entire range of goods claimed and the application therefore contravenes s59 of the Act.
Section 59 of the Act was not raised as a ground of opposition and was not referred to in the opponent’s evidence in support. The applicant, not having had the benefit of reading the opponent’s submissions, had no knowledge of this claim against s59 and therefore no way to respond to the allegation. I do not believe it is reasonable in these circumstances to consider a ground of opposition under s 59 at this stage, and I decline to do so.
Kiwi sought a review of the decision under the Administrative Decisions (Judicial Review) Act1977 (the AD(JR) matter) on the grounds of denial of natural justice. Kraft was made aware of the AD(JR) matter by the Australian Government Solicitor, acting for the Registrar of Trade Marks. The proceedings were settled by consent on terms that, inter alia:
- The decision of the delegate of the Registrar of Trade Marks be set aside;
- The decision be remitted back to a delegate of the Registrar of Trade Marks to be redetermined in accordance with law
Kraft concurred with the proposed settlement. The parties agreed that, as part of the re-decision, written submissions filed by Kraft would be provided to Kiwi and Kiwi given a right of reply. We also agreed that in relation to s 59 of the Act:
Kiwi Munchies may, upon 7 days of settlement, make a written request to the Registrar of Trade Marks pursuant to section 66 of the Act, to amend its Notice of Opposition to include section 59 of the Act as a ground of opposition. Any written request is to include submissions in support of the request.”
The consent orders allowed for submissions from Kraft, if it objected to the amendment, and from Kiwi in reply.
On 6 September 2004, Kiwi made a written request to amend the Notice of Opposition under s 66 of the Act. The amendment sought to introduce a ground of opposition under s 59. Kraft filed submissions opposing the amendment, following which Kiwi filed submissions in reply, a step provided for by para 5.3 of the orders.
As a delegate of the Registrar, Ms Dunn informed the parties she intended to refuse the request made pursuant to s 66 seeking to amend the notice of opposition to include s 59 as a ground of opposition. Kiwi sought a hearing, which I conducted, in relation to the Registrar’s intention to refuse to amend the notice of opposition.
Written Submissions – their role in proceedings
At issue in the AD(JR) proceedings were certain written submission filed by Kraft before the matter was decided on the written record. In my opinion, neither the AD(JR) application nor the settlement indicate a fault in processes to date at the Trade Marks Office. This office instituted the settlement to avoid any further escalation of the AD(JR) matter. We considered that, rather than have an AD(JR) review focus on what was no more than an unintended construction of words in Ms Dunn’s decision, it was desirable to have the focus remain on the determination of the substantive merits of the opposition.
Ms Dunn did not consider that the submissions of Kraft required any answer from Kiwi. Nor, for that matter, do I. However, since it is possible that this matter will result in further litigation, I will deal briefly with the standing of written submissions before the Trade Marks Office.
The scheme of the regulations assumes that, at the end, an opposition will be decided, the registrar having (s 54) given the parties the opportunity to be heard. Written submissions are not given a formal or specified place as part of the process of hearing a matter. The closest the regulations come is to use the expression “representations”; which may be in writing. Such “representations” may be made under reg 5.4, 5.15, 5.16 or 21.14. They may be made “in writing or at a hearing or by such other means as the Registrar reasonably allows”. An opportunity to be heard, however, is provided in the circumstances set out in s 33, 54, 174 and 203. If a party elects to rely on written representations as an alternative to presenting its arguments in person, so be it. Its written submissions, provided they reach the hearing officer at the time and place of the hearing, would be considered. If the other side elects to attend in person it would be given the opportunity, at the time of the hearing, to respond to these submissions.
As a matter of practice, hearing officers encourage the exchange of written submissions before a hearing. This allows the parties to better focus their arguments. Such an exchange, in my experience, allows the most efficient use of hearing time. However, neither side is obliged to co-operate in a timely exchange.
Submissions are not evidence. They are arguments, whether made in person or in writing, about the law and the state of the evidence that is part of the proceedings. In an opposition where a non-appearing party has made written submissions, it would be for the hearing officer to decide on the procedures for dealing with them. Ordinarily, it would be efficient and appropriate for the hearing officer to decide the matter on the basis of the law and the evidence on which the parties were entitled to rely. While the decision would be made with the assistance of the submissions that had been made, those submissions are not the drivers of the decision. It is to be hoped that right decisions will be made by a delegate acting either without submissions or in the face of mistaken or ill-formed arguments advanced by one or both parties. It would, consistently, generally neither be necessary nor efficient to adjourn the hearing and allow the non-appearing party to reply to the submissions of a party that appeared at the time and place appointed. To do so would add unnecessarily to the costs of at least one party.
Both parties would have had an opportunity to make submissions in such a case, in a form of their own choosing. True it may be that one side might elect to make its primary submissions in person while the other elected to do so in writing. In such a case the non-appearing party would have forfeited an opportunity to make counter-submissions on the state of the law and the state of the evidence. A party that elects not to appear for the purpose of doing so cannot complain that, on this basis alone, it has been denied procedural fairness.
There will, inevitably, be cases that do require a delay while some matter is brought to the attention of a non-appearing party. Chief among these would be a request, made at a hearing, for permission to serve and rely on further evidence. In such a case, the regulations (reg 5.15) mandate an opportunity for the non-appearing party to make “representations” on the issue.
In my experience, there will be other times when it may be necessary to delay a hearing while some issue or other is worked through. It might be that some new aspect of law is being traversed and the deciding officer is inclined to call for further or better submissions on the issue. However, it would be for the hearing officer to decide if the circumstances of a particular case were such that the matter needed further action by the parties rather than decision by the hearing officer. The fact that, as here, there is an unsupported assertion contained in the evidence does not indicate such a case. Nor would delay be mandatory if the written submissions contain new evidence, or what is purported to be new evidence. Hearing officers are expected to be able to deal with “evidence from the bar table” and to be equally capable of giving it appropriate weight when it is put in submissions that are written rather than face to face. A hearing is not the place to bring in new oral or written evidence unless introduced by way of reg 5.15 with a properly made application.
Role of written submissions in the present case
As to the case in hand, both parties had been given ample opportunity to request a hearing. When Ms Dunn undertook her decision there was no party requiring to be heard and therefore no hearing was set down. Kraft did not initiate an exchange of submissions[1]. The topic of an exchange of submissions was not raised by either Ms Dunn or Kiwi until after the decision was made. When Ms Dunn made her decision, she considered that there was nothing in the written submissions of either side that needed to be the subject of a right of reply from the other party. Both sides had, in relying on written submissions, waived their opportunity to make counter-submissions and it would have been inefficient to require an exchange of submissions unless this served some purpose.
[1] Kraft, after the decision, refused to provide its submissions to Kiwi. Ms Paras did not ask the Trade Marks Office for a copy, resorting instead to the AD(JR) forum.
The solicitor for Kiwi, Ms Paras, has assumed that failure to call for a further round of written submissions, in the circumstances that confronted Ms Dunn, amounted to a denial of procedural fairness. If, as Ms Paras argues, a right of reply to such submissions is somehow mandated by the need to ensure procedural fairness, where does the process end? Must there be a right of reply to the reply, and a reply to this in turn, ad infinitum? In my view, despite the suggestion that might be drawn the existence of an AD(JR) settlement, there is no such mandate.
Subsequent developments:
1. Further evidence
There was still no evidence, and no mention of evidence, in relation to the s 59 ground when I conducted the hearing into the amendment, in pursuance of the court orders to which I have referred. As matters have transpired, however, over and above the envisaged amendment, Ms Paras has apparently at all times since she instigated the AD(JR) matter intended to request permission to introduce further evidence in relation to the proceedings. Such permission may be sought under regulation 5.15. Given that, as Ms Paras noted at the hearing, it is difficult to separate the allowability of the amendment of the notice of opposition from the introduction of evidence to support the relevant ground, I adjourned the proceeding to allow such an application to be made. Let it be clearly said that I did this to better inform the amendment decision and to avoid any further suggestion of procedural unfairness.
Ms Paras has filed the requisite application for permission to bring in further evidence. The proposed further evidence goes to undermining certain completely unsupported assertions in Kraft’s evidence in answer. Ms Paras is quite specific about the nature of these. Her submissions note that Kraft has relied, as its evidence in answer to the opposition, on a declaration of Jeffrey Ryder, its trade mark attorney. In paragraph 9 of his Statutory Declaration, Mr. Ryder declared:
The Applicant has obtained registrations for combined word and device marks in Australia in Class 30 as follows:
200394 dated 22 February 1996 – CHICKEN IN A BISKIT and device and
219816 dated 14 June 1968 – CHICKEN IN A BISKIT and device, and (sic) have become associated in Australia with the words “..In A Biskit”
The evidence to which Ms Paras refers “will come from managers of major supermarket chains as well as food wholesalers and distributors. A customer survey is also being undertaken”. None of this material has yet been filed. Ms Paras indicated that, despite difficulties in preparing the evidence, it will be finalised and served within 21 days of permission being granted. In addition, Ms Paras has declared the evidence on which Kiwi seeks to rely “will demonstrate the limited use the applicant’s trade mark IN A BISCUIT STOPS THE MUNCHIES has been put to in Australia”.
Kraft, appraised of the situation, has made adverse representations. For present purposes it is not necessary to deal with these and I am able to decide the amendment question without reference to the further evidence matter. For the assistance of those reading this present decision, however, I say that I am proposing not to grant permission to allow the evidence in, and that I will be writing separately to the parties about that matter.
2. Amendment to allow introduction of a ground under s 59
Section 66 provides as follows:
The Registrar may, at the written request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the written request of the person's agent, amend the application, notice or document:
(a) to correct a clerical error or an obvious mistake; or
(b) if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
Ms Paras has argued that s 66(b) is applicable but has not at any stage explained why the s 59 ground was not specified in the notice of opposition as filed. There is no reason to conclude that this was accidental, and hence arguably within the scope of s 66(a), because there is nothing in the evidence relied on by Kiwi up until the time of the AD(JR) matter to show that it had pursued the topic at all. Therefore, I can only conclude that the decision not to originally nominate the ground was deliberate. Ms Paras noted that the opponent became aware of the implications of the lack of the relevant ground only after considering the evidence in answer and the submissions made by Kraft when Ms Dunn made her decision. However, since Kiwi filed no evidence in reply, I must presume that this consideration took place after Ms Dunn issued her decision, and not before it.
I will not repeat Ms Paras’s submissions about the broad discretion under s 66(b). I agree with her entirely. Again, I accept her point that there is no evidence that the trade mark applicant will be disadvantaged by the delay in the way these matters have been raised by Kiwi. However, I think I would be wrong to ignore the probability that delay in registration will disadvantage an applicant more than an opponent. That is a circumstance that affects the balance of convenience as between the parties.
As to this, Ms Paras asserted that “Kraft will have ample time to respond to the Opponent’s evidence in relation to the amendments” and that there would be no prejudice to Kraft. I do not agree. Kraft should not be put to the trouble of further considering Kiwi’s evidence on such a tangential issue. Ms Paras apprehends that a serious issue may evolve from the unsupported assertions made by Mr Ryder. Though Kraft is the cause of the uncertainty, this does not entitle Kiwi to now raise these side-issues “just in case”, thereby obliging Kraft, in turn, to respond.
Also with that issue in focus, Ms Paras asserts that Kraft, having taken a “passive” attitude and not expended funds on appearing at a hearing, would not see any time and effort thrown away. However, Kraft’s written submissions to Ms Dunn suggest that it has taken this line because it sees little merit in the opposition. I would not want to establish a system that leaves any party making this appraisal made vulnerable to late amendments of a notice of opposition where these amendments are not clearly justified.
Ms Paras made submissions about the desirability of having all the issues traversed. This, she argued, was in the public interest and she referred to a number of Trade Marks Office decisions where the importance of the pubic interest was stressed. However, I think that very often the public interest in having an accurate register, while doubtless still a factor, can be subordinated to the interests of those with a private commercial interest in the matter. I note that French J, in Registrar of Trade Marks v Woolworths Ltd[2], came to a similar conclusion regarding the balance between “the identification and protection of commercial products” versus “the protection of consumers”. Likewise, in McCormick & Co Inc v McCormick[3] Kenny J, in considering the proper application of s 44(3), noted that “the likelihood of confusion is a relevant but not determinative factor”. In my experience, on the other hand, claims about a public interest are usually made most loudly by those who have not been diligent in protecting their own interests in prosecuting a matter.
[2] 45 IPR 411 at 427
[3] 51 IPR 102
It appears that there is nothing more behind the present amendment request than a belated desire to pursue a side-issue started by an unsupported assertion, itself of insignificant weight, in Kraft’s evidence. The issue is not what Ungoed-Thomas J, in Bali Trade Mark[4], referred to as “substantial”. Given the lateness with which the issue was raised, and because of my assessment of the lack of merit in the aspects that Ms Paras has identified, I refuse to allow a ground under s 59 to be brought into issue at this, the penultimate stage of proceedings.
[4] (1966) RPC 387 at 393
3. The possible s 62 ground
I have already noted the relevant terms of the court orders. It will be observed that the terms of settlement quoted above do not refer to any possible amendment to include a ground under s 62. The first such mention of a ground of opposition under s 62 was made by Ms Paras in a submission dated 17 September 2004[5], after the initial decision and, indeed, three months after the subsequent AD(JR) application.
[5] This was a reply to the reply from Kraft dated 13 September. It in turn triggered yet another reply from Kraft dated 24 September. Neither the 17 September nor the 24 September letter was envisaged in the court orders. However, I have considered them both, as well as a penultimate last word from Kiwi before it made final submissions at the hearing on 31 January.
Section 62 provides as follows:
The registration of a trade mark may be opposed on any of the following grounds:
(a) that the application, or a document filed in support of the application, was amended contrary to this Act;
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
As to this, I quote from Ms Paras’s submissions of 17 September 2004:
We also submit that prior to the matter being referred to a formal hearing, the Opponent be given access to the Application filed by (Kraft) under the Freedom of Information Act[6]. This is to enable the Opponent to consider whether it will be raising any objection under s 62 due to the nature of the evidence and submissions advanced by Kraft throughout these proceedings.
[6] Due to a processing error, this request for information under the Freedom of Information Act had not previously been sent to the relevant area of IP Australia. I have rectified this omission.
There is, as yet, only a tentative flagging of intent to rely on such a ground. However, Ms Paras has requested to be heard on that question and I will proceed on the basis that what has been said to date amounts to a request, now, to introduce that ground.
Section 62 is a ground of opposition to registration. It reads.
The registration of a trade mark may be opposed on any of the following grounds:
(a) that the application, or a document filed in support of the application, was amended contrary to this Act;
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.There have been no amendments for the purposes of s 62(a). Section 62(b) is clearly directed to evidence that was material in the decision to accept the application for registration. Therefore, the “material particulars” that will underpin any decision of the opposition itself, however much Ms Paras might have reason to mistrust them, are not within its scope.
As to the proper scope of the s 62 ground, the application was accepted for registration in June 2003 and Kiwi filed its notice of opposition in July of that year. Ms Paras has therefore had more than ample opportunity to make a timely request for access to the evidence or representations material to that decision. She has left it very late to consider that option but, to bring an end to the matter, I simply note that there were none: the application was examined and accepted on its prima facie merits.
It appears that Ms Paras has raised the issue simply because she has reservations about some aspects of Kraft’s evidence in the (post acceptance) opposition proceedings. These are not within the scope of s 62. In any case Kiwi has, I believe, drastically overestimated the weight that might be put on submissions and on evidence given by Kraft in the current stages. Accordingly, I refuse to allow the introduction of a ground under s 62.
Conclusion:
I have refused to allow the amendments of the notice of opposition. The question of further evidence is still to be decided, though perhaps it has become a dead issue since my decision is that the grounds of opposition remain unchanged. It may be that, with the assistance of the present decision, the parties are prepared to have the opposition decided. That, of course, is something that need not be decided at the present time.
Terry Williams
Hearing Officer
Trade Marks Hearings
29 April 2005
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