MBIP Nominees v Meeka Pty Ltd
[2018] ATMO 188
•19 November 2018
TRADEMARKSACT1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by MBIP Nominees Pty Ltd to registration of trade mark application 1741718 (3) - MEEKA - in the name of Meeka Pty Ltd.
DELEGATE: Katrina Brown REPRESENTATION: Opponent: Bespoke
Applicant: Davies Collison Cave Patent & Trade Mark Attorneys
DECISION: 2018 ATMO 188
Trade Marks Act 1995 – hearing in relation to whether evidence in reply should be redacted – some of the evidence is in reply and the weight to be given to the other material will be determined when the substantive matter is decided – refuse to redact.
Background
This decision relates to an opposition under s 52 of the Trade Marks Act 1995 (‘the Act’) by MBIP Nominees Pty Ltd (‘the Opponent’) to the registration of the following trade mark:
Trade Mark No: 1741718
Trade Mark:
(‘the Trade Mark’)
Applicant: Meeka Pty Ltd (‘the Applicant’)
Filing Date: 16 December 2015
The trade mark application was examined as required by s 31 of the Act and its acceptance for possible registration was advertised in the Official Journal of Trade Marks on 12 May 2016.
The Opponent filed a Notice of Intention to Oppose followed by a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend.
The Opponent did not file evidence in support of its opposition. The Applicant filed the following declarations as its evidence in answer:
·Declaration of Cheryl Hrvoj made on 13 April 2017 with Exhibits CH-1 to CH-6 (‘Hrvoj Declaration’); and
·Declaration of Elena Karanasios made on 13 April 2017 with Exhibits 1 to 14 (‘Karanasios Declaration’).
The Opponent filed the following declaration as its evidence in reply:
·Declaration of David Cumberland made on 23 June 2017 with Exhibits DC-1 to DC-9 (‘Cumberland Declaration’).
In an effort to lessen confusion and to avoid the reader having to continually refer back to the above paragraphs, when I am referring to the Hrvoj Declaration or the Karanasios Declaration I will indicate that these declarations form the evidence in answer (‘EIA’). Similarly where appropriate I will indicate that the Cumberland Declaration was filed as evidence in reply (‘EIR’).
Subsequent to the evidence in reply being filed, the Applicant wrote to IP Australia and stated that it was its opinion that parts of the Cumberland Declaration (EIR) did not constitute evidence in reply. The Applicant identified particular paragraphs of the Cumberland Declaration (‘the challenged paragraphs’) which, in its opinion, attempted to introduce material that should have been filed as evidence in support. The Applicant provided submissions to support its opinion and requested that the Registrar direct that the challenged paragraphs be redacted.
An Assistant Hearing Officer replied to the Applicant informing it that the issue would be brought to the attention of the hearing officer when one was allocated to decide the substantive matter.
The Applicant responded to the Assistant Hearing Officer and requested confirmation that the hearing officer would consider and respond to the Applicant’s submissions in regards to the evidence in reply before the hearing for the substantive matter.
By way of reply, the Assistant Hearing Officer stated that a hearing officer had not as yet been allocated to the substantive matter, but that a note had been put on the file to alert the hearing officer to the Applicant’s submissions.
The Applicant responded to the Assistant Hearing Officer and requested that the issue in relation to the evidence in reply be determined well in advance of the matter being set down for a hearing.
For its part, the Opponent provided submissions as to why the challenged paragraphs should not be redacted.
After taking into consideration the parties’ submissions as to why the challenged paragraphs should or should not be redacted, the Supervising Hearing Officer informed the parties of his intention to refuse the request to redact the challenged paragraphs from the evidence in reply. The Applicant then requested to be heard on the issue.
The hearing was by way of written submissions and both parties filed submissions.
The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide.
Discussion
In a nutshell, the parties positions are:
·Applicant - the challenged paragraphs of the Cumberland Declaration (EIR) are not in reply to the evidence in answer and are an attempt by the Opponent to rectify deficiencies and strengthen its own case.
·Opponent - the challenged paragraphs are in reply to the evidence in answer and they are relevant and fundamental to the correct determination of the substantive matter.
Evidentiary framework and legal authorities
Opposition proceedings under s 52 of the Act have three evidence stages:
·evidence in support;
·evidence in answer; and
·evidence in reply.
Although an opponent is not required to file evidence in support, and in this matter the Opponent has elected not to do so, there are obvious interests in the smooth running of opposition proceedings and:
…if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to the case. The applicant can then deal with the matter in
the normal way, and a lot of time is saved, and the Office can get on with deciding the case.1
The Applicant drew my attention to the following observations from the New Zealand case Scotch Whiskey Association v The Mill Liquor Save Ltd:
The opponent is often in the best position to lead evidence of alleged deception or confusion…In most cases evidence will be adduced and the opponent is in the best position to present it. Otherwise applicants have to anticipate the nature of the alleged confusion, in something of a vacuum,
without the benefit of seeing the opponent’s substantive evidence. 2
I think it is relevant to point out that the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 introduced the requirement that an opponent must file an SGP as part of its Notice of Opposition.3 The SGP must particularise each ground of opposition that an opponent relies upon and the adequacy of the particulars is assessed.4 Consequently, when an opponent elects not to file evidence in support, the applicant is now in somewhat less of a vacuum, as they have the benefit of the particulars set out in the SGP.
Evidence in reply is an opponent’s opportunity to reply to an applicant’s evidence in answer. By its very definition, evidence in reply should be limited to replying to issues canvassed in the evidence in answer.
1 Ernest Scragg & Sons Ltd’s Application [1972] FSR 219, 222.
2 (2012) NZHC 3205 [42].
3 Trade Mark Regulations 1995 reg. 5.5.
4 Trade Mark Regulations 1995 reg. 5.8.
As pointed out by the Applicant, evidence in reply should not be treated as an opportunity to rectify deficiencies in an opponent’s case. In this respect, I note the Applicant’s reference to Optech International Ltd v Buxton Micrarium Ltd:
The other material has, in my view, been provided in an attempt to rectify deficiencies in the opponent’s case which have been identified by the applicant, rather than to contradict the applicant’s evidence.5
I also note the Applicant’s reference to the rather colourful analogy from the New Zealand case Merial v Virbas SA, where it was stated that evidence in reply should not be used as an opportunity to ‘game the system’ by ‘keeping their [the opponent’s]
forensic powder dry until after an applicant has filed its best (and only) evidential shot’.6 I would only add that whilst evidence in answer is the only stage (of the three evidence stages) in which it is an applicant’s turn to file evidence, in appropriate circumstances an applicant can request additional material to be considered pursuant to reg 21.19 of the Trade Marks Regulations 1995 (‘the Regulations’).
Although there are three evidence stages, each with a specific purpose, unlike the courts the ‘Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’. 7 In the words of Lord Denning MR:
A tribunal (of this kind) is master of its own procedure, provided that the rules of natural justice are applied. … Tribunals are entitled to act on any material which is logically probative, even though it is not evidence in a court of law….8
In R v Deputy Industrial Injuries Commissioner; Ex parte Moore Diplock LJ commented on the practicalities of not being bound by the rules of evidence:
The requirement that a person exercising quasi-judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material which, as a matter of reason, has some probative value, the weight to be attached to it
5 (1993) 28 IPR 649, 654.
6 [2012] NZHC 3392 [26].
7 Trade Marks Regulations reg. 21.15(4).
8 TA Miller Ltd v Minister for Housing & Local Government [1969] RPC 91.
is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue.9
The Opponent has drawn my attention to the more contemporaneous decision of Dyno Nobel Inc v Orica Australia Pty Ltd, where the Commissioner’s delegate observed:
an administrative decision-maker is entitled to act on any material that is logically probative, and thus the Commissioner is not as a matter of law compelled to exclude evidence which is not properly in reply.10
Dyno was a patent opposition, however the principle equally applies to a trade mark opposition; both are administrative proceedings before a person exercising a statutory function. The Registrar is not, as a matter of law, compelled to exclude evidence which does not properly constitute evidence in reply. Hence, where evidence is filed in time it is generally objected to on the basis of its probative value rather than its admissibility. In Malibu Boats West, Inc v Catanese, Finkelstein J stated:
The only question that arises in relation to the rejection of evidence is whether the decision maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be
proper or fair for an administrative decision-maker to ignore relevant material while discharging his or her statutory duty.11
Bearing in mind the abovementioned principles, I do not think it is appropriate for me to direct that any of the challenged paragraphs be redacted. However, the challenged paragraphs that do not constitute evidence in reply may not be given the full weight of evidence. The weight given to these paragraphs will be determined by the hearing officer when deciding the substantive matter.
I am also cognizant of reg 21.19 and the possibility of the challenged paragraphs being considered as evidence in support filed out of time. Delegates of the Registrar do not consider evidence filed out of time as a matter of routine. Part 51.2.6 of the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) sets out the procedures for evidence filed out of time, including that the party filing the material must make a request and that such a request should include, amongst other things, why the evidence was filed after the due date.
9 (1965) 1 Q.B. 456, 487.
10 [2003] APO 13 (‘Dyno’).
11 [2000] FCA 1141 [24].
In this matter, the Opponent has not made a formal request that the challenged paragraphs be considered as evidence in support filed out of time, nor have they provided reasons as to why the challenged paragraphs were not filed in the period set for filing evidence in support. As there has been no request made, I will not make a determination in respect of 21.19 but I will make the general observation that the Opponent would need to have a very compelling reason as to why the material was not filed in the evidence in support stage. If it were in due course admitted, moreover, then procedural fairness would require that the Applicant then be allowed time to file any further relevant evidence in answer, as discussed in Part 51.2.6 of the Manual.
As both parties have provided reasons as to why, or why not, each of the challenged paragraphs constitute evidence in reply, I will now consider the merit of those arguments and in doing so, draw a line in the sand as to which paragraphs constitute evidence in reply.
The challenged paragraphs
Declarations which are filed as evidence in reply do not need to identify what part of the evidence in answer they are replying to. However, there must be a connection between what the Applicant has asserted in its evidence in answer and what the Opponent is claiming to be evidence in reply to those assertions. What amounts to a connection must be considered in the context of the proceeding at hand. The connection need not be an absolute and direct contradiction of the evidence in answer. It can, and often will, be information that goes toward fleshing out an alternative view of the issues that were canvassed in the evidence in answer. To put it another way, there are many ways to reply to the assertion ‘the bird is yellow’. An absolute and direct reply would be ‘no, the bird is not yellow’. ‘The bird is blue’ is less direct, but it is still a reply to the assertion. A response such as ‘the lizard is blue’ is not a reply to the assertion at all.
Paragraphs 5 to 11, 14, 18, 27 and Exhibits DC-1, DC-2, DC-5 and DC-6 to the Cumberland Declaration (EIR)
The Applicant asserts that paragraphs 5 to 11, 14, 18 and Exhibits DC-1, DC-2, DC-5 and DC-6 to the Cumberland Declaration (EIR) are not evidence in reply. The Opponent asserts that these paragraphs directly respond to paragraphs 10 to 12 of the
Hrvoj Declaration (EIA) and paragraphs 8 and 32 of the Karanasios Declaration (EIA).
Paragraphs 10 to 11 of the Hrvoj Declaration (EIA) provide a definition of the word ‘Mecca’, namely that it is a city in Saudi Arabia with particular significance to Muslims. The information in paragraphs 6 to 11, 18, 27 and Exhibits DC-1, DC-2 and DC-6 to the Cumberland Declaration (EIR), go toward showing that in addition to the meaning provided in the Hrvoj Declaration (EIA), the term ‘Mecca’ may be understood in Australia as a reference to the Opponent’s Mecca brand and retail stores. This information is accordingly in reply to the Hrvoj Declaration (EIA).
Paragraph 5 of the Cumberland Declaration (EIR) describes the structure of the groups of companies that the Opponent belongs to. The evidence in answer does not question the corporate structure of the Opponent, nor does it raise any hurdles for the Opponent to jump in relation to authorised use.
Paragraph 14 of the Cumberland Declaration (EIR) states that the Opponent has trade mark registrations for ‘Mecca’ in various international jurisdictions. Exhibit DC-5 consists of extracts of those international trade mark registrations. The Opponent submits that this is in reply to the assertion made in paragraph 8 of the Karanasios Declaration (EIA), namely that the Applicant withdrew an earlier trade mark application (trade mark number 1699940) because it did not cover its goods of interest. Providing the details of international registrations for ‘Mecca’ does not reply to the Applicant’s assertion that they withdrew a trade mark application in Australia.
I consider paragraphs 6 to 11, 18, 27 and Exhibits DC-1, DC-2 and DC-6 to the Cumberland Declaration to be evidence in reply. Paragraphs 5, 14 and Exhibit DC-5 to the Cumberland Declaration do not constitute evidence in reply.
Paragraphs 16 and 17 of the Cumberland Declaration (EIR)
Paragraph 16 of the Cumberland Declaration (EIR) states the date of the first use of the Mecca Trade Marks in Australia. It goes on to state that the Mecca Trade Marks have been used continuously since the date of first use, on cosmetic and beauty products and accessories. The paragraph also details how the Mecca Trade Marks are used in relation to the aforementioned goods. Paragraph 17 states that the Mecca
Trade Marks have been widely promoted and lists a variety of mediums that have been used to promote the Mecca brand.
The Opponent asserts that paragraph 16 of the Cumberland Declaration (EIR) is in reply to paragraphs 11, 14 to 15, 28 and 32 to 33 of the Karanasios Declaration (EIA) and that paragraph 17 of the Cumberland Declaration (EIR) is in reply to paragraphs 32 to 33 of the Karanasios Declaration (EIA). The aforementioned paragraphs of the Karanasios Declaration (EIA) can be summarised as follows:
·Paragraph 11 states that at the time of adopting the Trade Mark, the declarant
was not aware of any other traders using a trade mark that they thought would be confused with the Trade Mark.
·Paragraph 14 states the date of first use of the Trade Mark in Australia. It goes
on to say that the use has been continuous in relation to sea sponges, exfoliating products, body brushes, loofas, skin care and beauty preparations and that the Trade Mark has more recently been used on aloe vera gel, coffee scrubs, body oils, body washed, charcoal toothpastes, oils for pulling, mouth washes and deodorants.
·Paragraph 15 refers to use of the Trade Mark on the Applicant’s first website.
·Paragraph 28 refers to a different website of the Applicant and states that this
website features the Trade Mark extensively.
·Paragraph 32 attests to the declarant’s belief that consumers associate the
Trade Mark with the Applicant.
·Paragraph 33 states that the Applicant has not encountered any instances of
confusion with the Opponent or its goods or services.
I find the Opponent’s submissions in relation to paragraphs 14 to 15, 28 and 32 of the Karanasios Declaration (EIA) unconvincing. The overall impression that I have of the Opponent’s submissions in this regard are that they do not amount to much more than ‘tit for tat’; the Applicant provided details of its use of the Trade Mark in Australia so the Opponent filed details of its use of the Mecca Trade Marks in Australia. To characterise this as evidence in reply places us perilously at the top of a slippery slope.
I find the Opponent’s submission that paragraph 17 of the Cumberland Declaration (EIR) directly contradicts the assertions made in paragraph 32 of the Karanasios Declaration (EIA) to be particularly unconvincing. To directly contradict the assertion, the Opponent’s evidence in reply would need to show that consumers associate the Trade Mark with an entity other than the Applicant. To respond by saying that the Mecca Trade Marks have been widely promoted via various mediums does nothing of the sort. The Opponent’s response is in the realm of ‘the lizard is blue’; it is not a reply to the assertion at all.
However, I am satisfied that paragraphs 16 and 17 of the Cumberland Declaration (EIR) are in reply to paragraph 11 of the Karanasios Declaration (EIA). Paragraph 11 of the Karanasios Declaration (EIA) states that at the time of adopting the Trade Mark the declarant was not aware of any traders using a trade mark that they thought would be confused with the Trade Mark. Paragraphs 16 and 17 of the Cumberland Declaration (EIR) go toward refuting that assertion by showing that: the Mecca Trade Marks were first used in Australia prior to the date of first use of the Trade Mark; and that the Mecca Trade Marks were used continuously in relation to beauty and cosmetic products and were promoted via many mediums. The inference being that the Mecca Trade Marks were being used in Australia at the time of the adoption of the Trade Mark and that because of that use, Australian consumers and traders in the beauty industry including Elena Karanasios (the declarant of the Karanasios Declaration), ought to have been aware of the Mecca Trade Marks.
Whilst I am satisfied that the material is evidence in reply this should not be taken to mean that the material is sufficient to make out the inferences, nor should it be taken to mean that the trade marks are likely to cause confusion; those determinations will be made when the substantive matter is decided.
I consider paragraphs 16 and 17 of the Cumberland Declaration to be evidence in reply.
Paragraphs 19 to 21 and Exhibit DC-7 of the Cumberland Declaration (EIR)
Paragraph 19 of the Cumberland Declaration (EIR), states that Mecca (that is, the Opponent) has a significant social media presence and lists various platforms that the Mecca Trade Marks are used on. Paragraph 20 states that as a result of the Opponent’s activities the Mecca Trade Marks have become well known amongst consumers of skincare and beauty products and are exclusively associated with the Opponent. Paragraph 21 states that there is a significant overlap between the goods sold by the Applicant under the Trade Mark and the goods sold under the Mecca Trade Marks. It is also noted in paragraph 21 that Mecca has sold and continues to sell a range of sponges, exfoliating products, brushes, skin care and beauty preparations, scrubs, body oils, body washes, toothpastes and deodorants. Exhibit DC-7 consists of captures of the Mecca website showing the Mecca Trade Marks being used in relation to these specific goods.
The Opponent asserts that paragraphs 19 to 21 and Exhibit DC-7 of the Cumberland Declaration (EIR) are in reply to paragraphs 14, 32 to 33 of the Karanasios Declaration (EIA) and paragraphs 12 to 14 of the Hrvoj Declaration (EIA). The content of paragraphs 14, 32 to 33 of the Karanasios Declaration are set out above at [39] of this decision. The relevant paragraphs of the Hrvoj Declaration (EIA) can be summarised as follows:
· Paragraph 12 states that the declarant performed a search of the Australian Securities & Investments Commission (ASIC) register for the word ‘Meeka’.
· Paragraph 13 contains a table setting out the details of 35 companies and businesses in Australia that have the word ‘Meeka’ as a component of their name.
· Paragraph 14 states that the declarant conducted a general internet search for the word ‘Meeka’. The declarant states that the results of the internet search show third parties using the word ‘Meeka’ in different contexts.
This paragraph also contains a table which is a summary of the results from the internet search.
In my opinion paragraphs 12 to 14 of the Hrvoj Declaration (EIA) do not support the Opponent’s contention. Detailing the use of the Mecca Trade Marks is not a reply to the Applicant’s evidence that the word ‘Meeka’ is used by third parties in many different contexts.
I consider paragraph 21 of the Cumberland Declaration (EIR) to be in reply to paragraph 14 of the Karanasios Declaration (EIA). Paragraph 14 of the Karanasios Declaration states specific goods that the Trade Mark has been used on (reproduced above at [39] of this decision). In reply, paragraph 21 of the Cumberland Declaration (EIR) provides an ostensibly identical list of goods that the Mecca Trade Marks have been used in relation to. Exhibit DC-7 to the Cumberland Declaration (EIR) supports the Opponent’s claim that it has used the Mecca Trade Marks in relation to the specific goods listed in paragraph 14 of the Karanasios Declaration (EIA) and paragraph 21 of the Cumberland Declaration (EIR).
In respect of paragraphs 19 to 20 of the Cumberland Declaration (EIR) the Opponent’s view is that these paragraphs directly reject the assertions made in the Karanasios Declaration (EIA), namely that the consuming public associate the Trade Mark with the Applicant and that the Applicant has not encountered any instances of confusion with the Opponent. The Opponent’s logic is that by setting out the longstanding use of, and reputation in, the Mecca Trade Marks in relation to the relevant class of goods, the Opponent is demonstrating that there is a real risk of consumer confusion.
My opinion in respect of what would be necessary to directly reject the assertion that consumers associate the Trade Mark with the Applicant is stated at [41] of this decision. Providing details of the use of the Mecca Trade Marks does nothing to refute the assertion that the consuming public associates the Trade Mark (that is the word ‘Meeka’ and a device) with the Applicant.
Similarly, detailing the use of the Mecca Trade Mark does not directly reject the assertion that the Applicant has not encountered any instances of confusion with the Opponent. To directly reject that assertion, the Opponent would need to provide
details of specific instances where consumers have been confused between the Trade Mark and the Opponent’s Mecca Trade Marks.
In addition, I am not convinced that there is a tenable connection between paragraphs 19 to 20 of the Cumberland Declaration (EIR) and the assertion that the Applicant has not encountered any instances of confusion.
I am satisfied that paragraph 21 and Exhibit DC-7 to the Cumberland Declaration (EIR) constitute evidence in reply. I am not satisfied in respect of paragraphs 19 to 20 of the Cumberland Declaration (EIR).
Paragraphs 28 to 31 of the Cumberland Declaration (EIR)
Paragraphs 28 to 31 are under the heading ‘Consumer Confusion’. Paragraph 28 refers to Elena Karanasios’ statement that she has not encountered any instances of confusion with the Opponent or its goods and services (Karanasios Declaration (EIA) [33]) and then goes on to state that the target markets of the Applicant and Opponent are virtually identical and that consumer confusion is reasonably likely. Paragraphs 29 to 30 consist of a comparison of the Trade Mark and the Mecca Trade Marks and conclude that the similarities between the trade marks are likely to cause confusion. Paragraph 31 states that deception and confusion would occur in the marketplace.
The Opponent asserts that these paragraphs of the Cumberland Declaration (EIR) are in direct response to the assertions made in the Karanasios Declaration (EIA), namely that the consuming public associates the Trade Mark with the Applicant and that the Applicant has not encountered any instances of confusion with the Opponent.
Once again, I am not convinced that Paragraphs 28 to 31 of the Cumberland Declaration (EIR) reply to the assertion that the consuming public associates the Trade Mark with the Applicant. My opinion in this respect is stated at [41] of this decision. I agree with the Applicant’s submission that only evidence showing that the Trade Mark is associated with an entity, other than the Applicant would constitute evidence in reply.
However, I consider that paragraphs 28 to 31 of the Cumberland Declaration (EIR) are in reply to Elena Karanasios’ assertion that she had not encountered any instances of confusion with the Opponent or its goods and services. As pointed out by the
Applicant, providing the details of actual instances of confusion would constitute evidence in reply. In my opinion, that would be the most direct way to respond to the assertion.
In this matter, the Opponent has elected to take a more subtle approach. Elena Karanasios’ assertion raises the issue of confusion, albeit that she attests to not encountering any confusion. The Opponent is entitled to respond to this assertion by stating, and setting out the factual basis, for its opinion as to the likelihood of confusion.
I am satisfied that paragraphs 28 to 31 of the Cumberland Declaration are evidence in reply.
Paragraph 32 of the Cumberland Declaration (EIR)
Paragraph 32 of the Cumberland Declaration (EIR) states that the declarant believes that Elena Karanasios had a beauty salon in High Street, Armadale. The declarant goes on to describe the close proximity of that business to one of the Opponent’s Mecca stores. The declarant also states that the Opponent’s records show that Elena Karanasios has been a customer of Mecca since 2011 and details her contemporaneous purchases.
The Applicant asserts that the evidence in answer did not refer to Elena Karanasios’ other business namely the beauty salon, and as such paragraph 32 of the Cumberland Declaration (EIR) cannot be in reply to the evidence in answer. I agree with the Applicant that the evidence in answer did not refer to Elena Karanasios’ other business.
Notwithstanding this fact, I consider that paragraph 32 of the Cumberland Declaration (EIR) is quite obviously in reply to paragraph 11 of the Karanasios Declaration (EIA). Paragraph 11 states that at the time of adopting the Trade Mark, the declarant was not aware of any other traders using a trade mark that she thought would be confused with the Trade Mark. Paragraph 32 of the Cumberland Declaration (EIR) replies to this assertion by stating that Elena Karanasios’ other business was located in close proximity to a Mecca store and that records show that she has been a customer of Mecca since 2011. As such it is plausible that Elena Karanasios was aware of the
Mecca brand prior to the date declared to be the first use of the Trade Mark. As stated previously, whether the Trade Mark would likely be confused with the Mecca Trade Marks is a determination that will be made when the substantive matter is decided.
I am satisfied that paragraph 32 of the Cumberland Declaration is evidence in reply.
I also note that the Applicant’s representatives have stated several times, that the use of the Opponent’s customer records pertaining to Elena Karanasios is unlawful. The Applicant’s representatives have not provided the basis for this view. As such, I do not have enough information to make a determination in relation to this specific issue.
Paragraphs 37 to 41 of the Cumberland Declaration (EIR)
The Opponent submits that paragraphs 37 to 41 of the Cumberland Declaration (EIR) directly refute the assertions that the consuming public associate the Trade Mark with the Applicant and that the Applicant has not encountered any instances of confusion.
Paragraph 37 begins with ‘[a]t paragraph 22 of Declaration 1 [Karanasios Declaration], Elena Karanasios states that since 2012 the approximate value of sales…under or by reference to the Meeka Mark [Trade Mark] was…(with lower than expected sales figures for the year 2014/2015)’.12 Paragraph 37 goes on to state that sales of goods featuring the Mecca Trade Marks have remained consistently high. Paragraph 38 provides the annual sales figures for goods bearing the Mecca Trade
Marks in Australia from 1999 to 2016.
Paragraph 39 of the Cumberland Declaration (EIR) once again specifically refers to paragraph 22 of the Karanasios Declaration (EIA), this time in relation to the advertising and promotional expenditure of the Applicant. Paragraph 40 of the Cumberland Declaration (EIR) provides an estimate of the advertising and promotional expenditure relating to the Mecca Trade Marks from 2011 to 2016. Paragraph 41 states that the declarant believes that the Opponent has an extensive reputation in Australia under or by reference to the Mecca Trade Marks and that the consuming public associates the Mecca Trade Marks with the Opponent.
At this point, I have no doubt that the reader is aware of my opinion in relation to whether any of the challenged paragraphs of the Cumberland Declaration (EIR) are in
12 I have omitted the figures here and in the following paragraphs for confidentiality reasons.
reply to the assertion that the consuming public associates the Trade Mark with the Applicant. My opinion has not changed. None of the challenged paragraphs constitutes evidence in reply to that assertion.
I am also not entirely satisfied that paragraphs 37 to 40 of the Cumberland Declaration (EIR) can be properly construed as evidence in reply to the assertion that Elena Karanasios was not aware of any instances of confusion with the Opponent’s Mecca Trade Marks or its goods and services.
Although paragraphs 37 and 39 specifically reference paragraphs of the Karanasios Declaration (EIA) this seems to me to be sleight of hand. The Applicant states that its revenue figures were not as high as expected in 2014/2015 because Elena Karanasios gave birth to a child and consequently the business was not her primary focus during that time. The Opponent pounces upon this fact and treats it as an opportunity to provide sales figures for goods bearing the Mecca Trade Marks from 1999 to 2016. If the Karanasios Declaration asserted something to the effect that the sales figures were significantly less because of a downward slump in the beauty and skincare industry in 2014/2015, I could more readily attribute the Opponent’s provision of its own sales figures showing steady growth in 2014/2015 and the surrounding years to be evidence in reply. As it is, the provision of sales figures and promotional expenditure relating to the Mecca Trade Marks in reply to the Applicant’s provision of its sales figures and promotional figures in relation to the Trade Mark appears no more than ‘tit for tat’.
Paragraph 41 of the Cumberland Declaration (EIR) is more in the nature of submissions rather than being evidence in reply.
In these circumstances, I consider it more appropriate for the hearing officer to determine the weight to be given to these paragraphs and to what extent, if relevant, the Applicant would then be allowed to file further evidence in answer when considering the substantive matter.
Final thoughts
In this matter, the Applicant strongly urged me to ‘draw a boundary around what constitutes evidence in reply and set a precedent as to how both trade mark opponents and applicants should act in opposition proceedings’.
I am not armed with the ‘big stick’ that the Applicant would have me wield, and in any event, the wielding could not result in the Registrar departing from proper standards of administrative decision making.
However I will take the opportunity to reiterate that an opponent bears the onus in s 52 opposition proceedings and generally it will be best placed by filing evidence at the first opportunity to do so. By waiting to show its hand until the evidence in reply stage, an opponent risks material, crucial to the matter, not being given the full weight it may warrant and also risks an adverse award of costs.
I would also add that whilst protracted debates at the substantive hearing about whether evidence is admissible could detract from the substantive issues, there are times where it is impractical to come to a concluded view on the question of whether evidence in reply is in fact properly in reply outside of the substantive hearing.
Decision
I refuse to redact any of the challenged paragraphs from the Cumberland Declaration (EIR).
I am satisfied that the following paragraphs and exhibits of the Cumberland Declaration (EIR) constitute evidence in reply:
· 6 to 11, 16, 17, 18, 21, 27 to 32 and Exhibits DC-1, DC-2, DC-6 and DC-
7.
I consider that it is appropriate for the hearing officer, when deciding the substantive matter, to determine the appropriate weight that should be given to the following paragraphs and exhibits of the Cumberland Declaration and if relevant allow the Applicant time to file further evidence in answer:
· 5, 14, 19, 20, 37 to 41 and Exhibit DC-5.
Katrina Brown Hearing Officer
Oppositions & Hearings 19 November 2018
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