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

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.
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.

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.
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

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).

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2015] ATMO 11
Decision Date: 4 February 2015

CaseChat Overview and Summary

This matter concerns an application by the Applicant, Light Path Innovation Pty Ltd, to admit further evidence in opposition proceedings against G8 Pty Ltd. The proceedings relate to a trade mark application. The Applicant sought to file this further evidence after significant delays and extensions had already been granted for the filing of evidence in answer. The Opponent, G8 Pty Ltd, opposed the admission of this further evidence on several grounds, including that it was not obtained with reasonable diligence, would cause unfair procedural advantage and further delay, and that the reasons for its late submission were vague and unexplained.

The court was required to determine whether to admit the further evidence sought to be filed by the Applicant. In doing so, the court had to consider the principles governing the admission of further evidence in opposition proceedings, particularly where there has been a history of delay and extensions. The court also had to assess whether the Applicant had provided a satisfactory explanation for the late tender of this evidence, and whether admitting it would prejudice the Opponent or unduly prolong the proceedings.

The court applied the principles established in cases such as *Re Oxon Italia SpA’s Trade Mark Application* and *Roebuck v. News Ltd*. These principles require that evidence could not reasonably have been obtained earlier, that it would have an important influence on the result, and that it is credible. The court found that the Applicant had failed to provide a clear and satisfactory explanation for why the further evidence, which was essentially evidence in answer, was not filed within the extended periods already granted. The court noted that the timing of the submission, particularly after the Opponent had provided its outline of written submissions, suggested a tactical rather than an unavoidable delay. Furthermore, the court considered the prejudice to the Opponent, including the financial costs incurred due to the adjournment of the hearing and the unfair procedural advantage the Applicant might gain by being able to respond to the Opponent's submissions. The court also observed that the evidence itself did not appear to significantly advance the Applicant's case, suffering from similar fundamental flaws as previous evidence.

The application to admit the further evidence was refused.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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 86Although 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.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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