Light Path Innovation Pty Ltd v G8 Pty Ltd

[2015] ATMO 11

TRADE MARKS ACT 1995

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

Re:Opposition by Light Path Innovation Pty Ltd to application by G8 Pty Ltd for permission to file further evidence in opposition to registration of trade mark application 1391301(9, 18, 25, 35) - LE GEAR - in the name of G8 Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Written submissions by Andrew Sykes of Counsel instructed by MST Lawyers Applicant: Written submissions by Kim Walters, trade mark attorney, of Bell Legal Group
Decision:	2015 ATMO 11 Former regulation 5.15: Permission to file further evidence granted

Background

1. In this matter G8 Pty Ltd (‘the Applicant’) is the Applicant both for registration and permission to file Further Evidence (‘the Evidence’) under former regulation 5.15 of the Trade Mark Regulations 1995 (‘the Regulations’).  The former regulations apply to this application as the relevant date falls prior to amendment of the Regulations which took effect on 15 April 2013.

2. Relevant details of the application for registration appear below:

Application No:         1391301
Priority Date:             28 October 2010

Goods/Services:         Class 9: Tactical enforcement gear; safety protection gear and equipment; helmets; shields; riot gear; protective clothing (body armour); barrier apparatus for use in crowd control; safety restraints; protective and safety hats for the prevention of accident or injury; protective and safety gloves for prevention from accident or injury; face shields for use with helmets; all the foregoing relating to law enforcement, military and public safety 

Class 18: Bags; belt bags; camping and outdoor bags; duffel bags; shoulder and sling bags; travel bags; work bags; leather belts; shoulder belts; leather wallets; wallets for attachments to belts; all of the foregoing relating to law enforcement, military and public safety 
Class 25: Clothing, headgear and uniforms relating to law enforcement, military and public safety
Class 35: Retail and wholesale services relating to law enforcement, military and public safety 

Trade Mark:               LE GEAR
  (‘the Trade Mark’)

Endorsement:             Provisions of subsection 41(5) applied. Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

1. Light Path Innovation Pty Ltd (‘the Opponent’) opposes both the registration of the Trade Mark and the permission sought by the Applicant to serve and file the Evidence.

2. The Opponent has filed submissions by Andrew Sykes of Counsel instructed by MST Lawyers in support of its opposition to permission to serve and file the Evidence; the Applicant’s submissions accompanied the application for permission and are made by Kim Walters, trade mark attorney, of Bell Legal.

The Evidence

1. As the service and the content of the totality of the evidence is relevant to my decision, a brief summary appears below:

   Notice of Opposition – served and filed 20 June 2012

   Part Evidence in Support – Statutory Declaration by Helga Telleman, a former director of the Opponent, made on 19 March 2013.

   A brief history of the Opponent’s trade mark LE GEAR alleged to be used in relation to, inter alia, police pistol holsters made of the Opponent’s laminate developed by Albert Hellweg (the declarant’s brother).

   Part Evidence in Support – Statutory Declaration by Albert Hellweg, director of the Opponent, made on 18 April 2013.

   A more detailed history of the development and sale of the Opponent’s police pistol holsters, belts, pouches and other products made of (or used with) the Opponent’s laminate and the alleged use of the trade mark LE GEAR in relation thereto.

   Evidence in Answer – Statutory Declaration by Anthony Craig Rumball, former police officer in the New South Wales Police Service, made on 10 October 2013.

   The declarant attests to his experience as a police officer and his knowledge of the parties’ trade marks.

   Evidence in Answer – Statutory Declaration by Joshua Dorday, director of the Applicant, made on 23 October 2013.

   Details of the history of the development of the Trade Mark and its alleged use in relation to products made for the Applicant and the retail of products by the Applicant as well as some dealings between the parties.

   Evidence in Reply – Statutory Declaration by Albert Hellweg, director of the Opponent, made on 20 May 2014.

   Addresses issues raised in the declarations by Messrs Rumball and Dorday. Provides details of revenue and advertising in relation to the Opponent’s alleged use of the trade mark LE GEAR.

2. The Evidence is a further statutory declaration by Mr Dorday which provides detailed support (previously not provided) to his earlier allegations of the use of the Trade Mark in relation to a range of goods and/or alleged use of the Trade Mark in relation to the retail thereof.  The declaration also brings into evidence sale and marketing figures relating to the Applicant’s alleged use of the Trade Mark previously provided to the Examiner of Trade Marks but not served in answer to the opposition to registration.

Submissions

1. The Opponent submits that the:

   … further evidence will make no difference to the outcome of this matter. It is of the same character as the evidence in answer which was already submitted, after 5 months’ worth of extensions. The reasons why such further evidence was not submitted earlier can be described as, at best, vague.

   The most significant impact of this further evidence is that, if admitted, it will provide an unfair procedural advantage to the Applicant, inevitably delay proceedings and cause further loss to the Opponent who has already lost the cost of non-refundable airline tickets for its counsel and instructing solicitor to attend the hearing date in Canberra on 21 November 2014, which has now been vacated.

   If the further evidence is allowed the Applicant’s total time for preparing what is essentially mere evidence in answer will be ridiculously excessive and beyond justification.

   The notice of opposition was filed over two years ago. If the matter runs past January into 2015, as it appears it will, this time will exceed two and a half years.

   In addition to having the usual 3 month period to file evidence in answer the Applicant sought two further extensions of time (one of 2 months and one of 3 months) giving it a total of 8 months to prepare evidence in answer. Both these extensions were unsuccessfully opposed by the Opponent as it regarded the reasons provided by the Applicant as unsatisfactory. We attach at Annexure A copies of those submissions.

   The further evidence now sought to be admitted is nothing more than evidence in answer that could have, and ought to have, been submitted in the previous 8 month period allowed to the Applicant.

   As stated by Hearing Officer Murray in the recent decision of Roebuck v. News Ltd (2014) 105 IPR 459 at 462 to 463:

   The principles for deciding whether it is appropriate to allow an opplication for further evidence were set out in the UK case of Re Oxon Italia SpA ‘s Trade Mark Application [1981] FSR 408. In summary, they are: that the evidence could not reasonably have been obtained earlier; that the evidence would have an important influence on the result of the case; and that it is credible. There is also the question of the public interest in allowing the evidence in, bearing in mind that fresh evidence cannot be excluded on appeal to the court. As Hearing Officer Homann observed in Studio Srl v Buying Systems, “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”. (Emphasis added)

   Hence although it is preferable to have all possibly relevant evidence before the hearing officer that cannot save a party from inexcusable tardiness.

   It seems that the reason the evidence was not filed on time was that there was some mistake or ignorance as to the opposition procedure. What is not clear from the Applicant’s submissions is how this mistake or ignorance was observed after it received the Opponent’s outline of written submissions for the hearing. The inclusion of sales figures appears especially convenient when paragraph 58 of this outline of submissions specifically includes the following quote from McCormick’s case:

   “[l]t is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark”.[1]

   [1] McCormick & Company Inc v. McCormick [2000] FCA 1335 at paragraph 86

   Although the opponent is not suggesting an abuse of process by the Applicant, it is fundamental in such circumstances that the Applicant clearly explain why the mistake or ignorance was picked up at this procedurally advantageous time rather than earlier. The timing is simply not explained nor is how the mistake or ignorance was finally picked up and by whom. Such explanation is vital. For example, if the evidence was picked up by a newly briefed counsel then the facts may indicate it ought not be allowed. However there is no need for unnecessary speculation and the Opponent does not invite the hearing officer to engage in such. It is the Applicant’s onus to provide such explanation and it has failed to do so.

   The Opponent further notes that in Roebuck v. News Ltd the party seeking permission to file further evidence provided more detailed reasons for its failure to provide the evidence at an earlier stage than the present Applicant. However permission was still refused.

   If the evidence is admitted then it will have been prepared by the Applicant with a rare and unfair opportunity to review the Opponent’s outline of written submissions for the final hearing, and in essence, attempt to ‘plug the holes’ in their own case that have been exposed.

   Furthermore the evidence is over 100 pages in length and was not received by the Opponent until 11 November 2014 only 10 days before the hearing. Although this is sufficient time for the Opponent to review the evidence and deal with it at hearing (largely due to the lack of weight that ought to be attached to it as described below) it is insufficient time to file its own further evidence. The Applicant has already delayed the hearing and decision. Such delay was also noted in Roebuck in refusing permission to file further evidence.

   Now the hearing has been adjourned the Opponent has also suffered the additional cost of non refundable airline tickets for its counsel and instructing solicitor. This particular detriment could be avoided if the Applicant offered to pay such costs to the Opponent. However the Opponent is in receipt of no such offer so the financial loss has been incurred.

   The evidence adds little if anything to the Applicant’s case.

   It suffers from the same fundamental flaws as the evidence in answer namely: It doesn’t show any use of LE GEAR rather it shows use of LEGEAR (with no space) and a logo with LE appearing above GEAR in a shield device.

   Even if accepted at face value, the evidence fails to overcome the s.58A ground of opposition as it only dates back to 2005.

   In relation to the s.44 ground of opposition, the evidence fails to establish honesty in relation to honest concurrent use.

   On the point of honest concurrent use, as pointed out in paragraphs 41 to 44 of the Opponent’s outline of submissions the Opponent has made it quite clear throughout this proceeding that its central grievance has been the Applicant’s apparent desire to separate the LE and GEAR elements and attempt to register LE GEAR. The Applicant has now sought to submit a further round of evidence and has yet again failed to explain this conduct. The further evidence therefore adds nothing to any attempt to argue the Applicant has acquired honest concurrent rights.

2. The Applicant, for its part, submits:

   The information in the [Evidence] is relevant to the sections 42(b), 44, 58, 60 and 62A grounds of the opposition in that it identifies all of the goods on which the applicant had used the opposed mark or a substantially identical one (Legear) prior to the priority date, and further provides supporting material and sales figures.

   The admission of this further evidence is likely to make a significant difference to the outcome of this matter as it provides cogent evidence in support of the claim made by Mr Dorday in paragraph 8 of his 23 October 2013 declaration. In that paragraph, Mr Dorday states that the applicant manufactures its own products under the opposed mark and annexes a website printout showing the Legear branded products at JD013A. However, that document is dated 19 December 2011 and that is post the priority date. Pages 84-90 of the Annexure to [the Evidence] contain documents obtained by the applicant from < which are lists of the applicant’s products including a number branded with the Legear mark. They do not however show the whole range of Legear branded products offered for sale by the applicant prior to the priority date.

   Although the recent and continuing judicial consideration about how such post-filing evidence may inform a decision maker’s view of the state of a trade mark application at the date of filing it does not, in this case, assist in providing the Registrar with as comprehensive a picture as possible of the circumstances of use which existed as at the priority date.

   The sales and advertising figures which are set out in exhibits JD2 to the [Evidence] were set out in Mr Dorday’s confidential declaration of 10 January 20 12 which was provided to the examiner in support of the application. It was on the basis of the information contained in that declaration and Mr Dorday’s non confidential declaration of the same date that the application was accepted.

3. After quoting the passages from Oxon Italia and Studio Buying Systems which appear above, Ms Walters concludes:

   The applicant submits that on balance, leave should be granted for the applicant to rely on [the Evidence] for the reasons that the new declaration goes to the circumstances of use existing prior to the priority date. It will allow the Registrar to determine:

   a) the identity of the first user of the opposed mark in Australia in respect of a range of goods that the applicant contends fall within classes 9, 18 and 25 of the opposed mark (section 58);

   b) the state of the market in Australia in law enforcement and public safety gear as at the priority date in circumstances where two entities claim to have been offering goods under and by reference to the Le Gear mark (ss. 42(b) and (60)). As noted in Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd (1979) RPC 410, it is important to have access to as much material as possible if allegations of deception or confusion of the mark s have been raised;

   c) the issues raised by sections 44(3 ) and (4); and

   d) the issues raised by section 62A of the Trade Marks Act 1995 (Cth).

   The opponent has already filed its evidence of use of the Le Gear mark, and will have the appropriate opportunity to comment upon the new declaration at the hearing of the opposition.

   Finally, it would be a highly undesirable outcome of this opposition if the applicant were to feel itself compelled to appeal it merely on the basis that critical supporting evidence may have been held back from its case. Such a step would not serve the public interest.

Reasoning

1. At the relevant date, regulation 5.15 allowed:

   5.15Extension of period to serve evidence and service of further evidence

   (1)           A party to the opposition proceedings may apply to the Registrar:

   (a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

   (b)for permission to serve a copy of further evidence on the other party.

   (2)           The Registrar may grant an application on reasonable terms specified by the Registrar.

   (3)           The Registrar must not grant an application unless the Registrar:

   (a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

   (b)has given the parties a reasonable opportunity to make representations concerning the application; and

   (c)is reasonably satisfied that:

   (i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and

   (ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;

   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.

   (5)           If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

   (6)           Subregulations (2), (3) and (4) apply to an application under subregulation (5).

2. As the parties both submit, I am to consider whether:

   The Evidence could have been obtained earlier;

   The Evidence is likely to bear on the outcome of proceedings; and,

   The Evidence is credible.

3. I am also to keep in mind that the effect of not giving permission may be to force an appeal from my decision in the substantive matter.

4. The Opponent submits that the Applicant was tardy in serving its Evidence in Answer (‘EIA’), and this application for permission further prolongs this matter; I note that the Applicant filed its EIA some six months after receiving the Opponent’s Evidence in Support (‘EIS’).  The Opponent, in contrast, took some nine months to file its EIS.  Further, the relative amounts of time taken by the parties are not prime considerations to the discussion of whether it is appropriate to grant permission to serve the Evidence.

5. I think that it is telling that the Opponent has in effect both submitted that the Evidence is unlikely to bear on the outcome of proceeding and requested that if permission to serve is granted to the Applicant, the Opponent be afforded the opportunity to serve its own further evidence in response.  On the face of it, if the Evidence lacks any relevance, there is no need for the Opponent to respond with its own further evidence.  There is therefore room for the view that the parties are in fact agreed that the Evidence may be relevant to the outcome of proceedings.

6. The Evidence is couched in terms of putting air under the wings of Mr Dorday’s claims of use of the Trade Mark in the Applicant’s evidence in answer and this more detailed and better supported Evidence is claimed to establish, inter alia, the honest concurrent use, or prior use, of the Trade Mark.

7. While there may be significant debate in terms of subsection 7(1) of the Trade Marks Act 1995 relating to the Applicant’s claim that the Evidence establishes the honest concurrent or prior use of the Trade Mark, this argument ought to be discussed in my decision of the substantive matter as it would be procedurally unfair to make any finding as to the use of the Trade Mark without affording the parties the opportunity to argue the point before the Registrar.

8. The evidence is credible.

9. If the Evidence were not permitted to be served, it is of such apparent weight that an appeal could be necessary in order that the relevance of the Evidence be argued before the Court.

10. Therefore, although the need to serve the Evidence has arisen through the Applicant’s misunderstanding of the procedure adopted in matters before the Registrar, I consider, on balance, that it is appropriate that permission to serve and file the Evidence be granted.

11. It is also appropriate that the Opponent be afforded the opportunity to respond with its own further evidence and I allow the Opponent two months from the date of this decision in which to do so.

Costs

1. It is fitting in the circumstances of the Applicant’s oversight regarding the procedures before the Registrar that (although the Applicant has been successful in this matter) I award costs against the Applicant in relation to the application for permission.  The issue of the Opponent’s unrefunded airfares etc may be argued in submissions concerning costs in the substantive matter.

Iain Thompson
Hearing Officer
Trade Marks Hearings
4 February 2015