MBIP Nominees v Meeka Pty Ltd - [2018] ATMO 188

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…

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: [2018] ATMO 188
Decision Date: 19 November 2018

CaseChat Overview and Summary

This matter concerned an application by the Applicant to have certain paragraphs of the Opponent's Declaration of David Cumberland, filed as evidence in reply, redacted. The Applicant contended that these "challenged paragraphs" introduced material that should have been filed as evidence in support, rather than as evidence in reply. The Opponent, conversely, argued against the redaction of these paragraphs. The Supervising Hearing Officer had initially indicated an intention to refuse the redaction request, and the Applicant sought to be heard on the issue before a Hearing Officer was allocated to decide the substantive matter.

The central legal issue before the court was whether the challenged paragraphs within the Opponent's evidence in reply constituted material that should have been filed as evidence in support, and consequently, whether they ought to be redacted from the evidence in reply. This required the court to consider the proper scope and purpose of the three distinct evidence stages in opposition proceedings under section 52 of the Act: evidence in support, evidence in answer, and evidence in reply.

The court acknowledged the established three-stage evidence process in opposition proceedings. It noted that while an opponent is not obliged to file evidence in support, it is generally in the interests of efficient proceedings for parties to clearly state their case and present relevant evidence at the earliest appropriate stage. The court considered the submissions from both parties regarding the nature of the challenged paragraphs and their placement within the evidence stages. The court's reasoning focused on the principle that evidence in reply should generally address matters raised in the evidence in answer, and not introduce entirely new material that could and should have been part of the initial evidence in support.

The court ultimately refused the Applicant's request to redact the challenged paragraphs from the evidence in reply. The court determined that the challenged paragraphs did not introduce entirely new material that should have been filed as evidence in support, but rather addressed issues that were relevant to the evidence in answer. Therefore, the challenged paragraphs were permitted to remain as part of the evidence in reply.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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. In a nutshell, the parties positions are: 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 inthe normal way, and a lot of time is saved, and the Office can get on with deciding the case.1