Mitchell International, Inc v National Auto Glass Supplies (Australia) Pty Ltd

[2003] ATMO 71

TRADE MARKS ACT 1995

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

Re:Opposition by Mitchell International, Inc to an application by National Auto Glass Supplies (Australia) Pty Ltd for an extension of time to serve further evidence in respect of the opposition by Mitchell International, Inc to registration of trade mark application 878388(12 & 37) - NAGS - filed in the name of National Auto Glass Supplies (Australia) Pty Ltd.

Delegate:

Mary Skivington

Representation:

Opponent: Trevor Stevens of Davies Collison Cave provided written submissions

Applicant: Julia Baird of Counsel instructed by Rob Brown of Deacons.

Decision:

(1)Extension of time allowed.

(2) costs awarded against the opponent.

Background

1. National Auto Glass Supplies (Australia) Pty Ltd, (the applicant'), filed trade mark application number 878388, on 6 June 2001.  The applicant seeks registration for the trade mark shown below.

Acceptance of the trade mark was advertised in the Official Journal Trade Marks on 18 October 2001.

1. Mitchell International, Inc, ('the opponent'), filed a notice of opposition to registration of the trade mark, on 7 January 2002. The evidence in support, in answer and in reply was duly served and filed by the respective parties. On 6 June 2003, two days after service of the evidence in reply, the applicant applied, under the provisions of regulation 5.15(1)(b) of the Trade Mark Regulations 1995, ('the regulations'), for an extension of the period for service of further evidence.

2. The opponent objected to the application.  Subsequently, the parties were advised that the Registrar intended to refuse the application but that the applicant had the opportunity to be heard concerning the intended refusal. The applicant requested a hearing and as a delegate of the Registrar of Trade Marks, I heard the matter in Canberra, on 18 September 2003.

3. Mr Trevor Stevens, of Davies Collison Cave, Patent and Trade Mark Attorneys, filed written submissions on behalf of the opponent. Ms Julia Baird of counsel, instructed by Deacons, lawyers, appeared on behalf of the applicant.

The Application

1. The statutory declaration in support of the application to file further evidence was made by Ms Gemma Elizabeth Tuohey, a lawyer in the employ of Deacons.  Ms Tuohey states that the further evidence,

   ·will respond directly to materials contained in the Howard, Bishop and Westmead statutory declarations which refer to customs investigations and pricing issues which are not relevant to the application;

   ·will include material to corroborate evidence previously filed by Maggie Leung Lo; and

   ·will provide material denying allegations in the Howard statutory declaration that  the directors of the applicant were aware of the existence of the opponent when the application was made;

1. Ms Tuohey declares that the further evidence that the applicant wishes to file was not previously filed because the applicant did not anticipate that the opponent's evidence in reply would include material which is irrelevant to the application or would attempt to refute Ms Lo's claims as to knowledge of the existence of the opponent.

Submissions and the law

1. In accordance with regulation 5.15 the Registrar may grant an application for an extension of time to serve further evidence if the Registrar is reasonably satisfied that,

• the person applying to serve further evidence has served a copy of the application, and of any documents accompanying the application, on the other party;

• the parties have been given a reasonable opportunity to make representations concerning the application; and

• the granting of the application is appropriate.

1. The first two requirements have been met so that it remains for me to decide if, in all the circumstances of this case, I am reasonably satisfied that it is appropriate to allow the application.  The Macquarie Dictionary, 3^rd Edition, defines the word 'appropriate' as,

   suitable or fitting for a particular purpose, person, occasion, etc.

The word 'appropriate' is not a prescriptive term, so, providing the grounds for the application, to some extent at least, conform with established standards and providing it seems fair and just to allow further evidence to be served, the Registrar can be reasonably satisfied that it will be appropriate to allow it.

1. Mr Stevens submitted that there could be no justification for further evidence that only seeks to 'corroborate' earlier evidence.  He referred to Brioni v Brian Jones, 36 IPR 197, where it was said that 'the granting of special leave should not be exercised merely to allow the applicant to patch up deficiencies in its evidence.' Mr Stevens submitted that the evidence in reply was a response, by Ms Catherine Howard, to statements made by Ms Maggie Leung Lo in her evidence in answer and that denying Ms Howard's statements is not a matter for further evidence.

2. Mr Stevens argued that there is no justification for tendering further evidence in respect of issues in the Howard, Bishop and Westmead statutory declarations, that the applicant itself has stated, are not relevant. Mr Stevens asserted that it is difficult to envisage any evidence in reply which could be more strictly confined in its contents. He said the Bishop and Westmead declarations reply specifically to issues related to confusion and the dates of first use of the respective parties' trade marks. Mr Stevens concluded by referring to a passage in Shanahan's Australian Law of Trade Marks and Passing Off, 3^rd Edition at page 107, where it is stated,

   The Registrar is unlikely in practice to refuse leave to adduce further evidence that goes to the real issues in the case, particularly if it is a ground of opposition that deception or confusion will arise from the use of the trade mark.

3. He said the applicant has made no reference to what constitute the 'real issues' in this case and whether the further evidence has relevance to those real issues and moreover, the issues of deception and confusion have been properly dealt with in the evidence already filed.

4. Ms Baird submitted that evidence in reply is not an opportunity to introduce additional or supplementary evidence which should properly have formed part of the evidence in support. She submitted that the opponent in its evidence in reply has in substance introduced further evidence in support. Ms Baird took me in some detail through the evidence in reply, identifying newly raised issues that could adversely impact on the applicant's good name, instances of alleged confusion and evidence that the former managing director of the applicant knew of the opponent's existence in 1998.

5. Ms Baird referred to the principles to be considered in respect of an application to allow further evidence, developed from Lord Denning's judgment in Ladd v Marshall (1954) 1 WLR 1489:

   • it should be shown that, with reasonable diligence, the evidence could not have been obtained earlier;
   • it should be shown that the evidence is likely to have an important effect on the outcome; and
   • the evidence should be credible.

1. She submitted that it is preferable for all the available evidence to be available to the Hearing Officer before hearing the opposition. In support of her argument she  referred to Studio SrL v Buying Systems (Aust) Pty Ltd, (1991-2) 22 IPR 580 at 586, where Hearing Officer Homann noted that Ungoed-Thomas J, in Bali Trade Mark, (1966) RPC 387 at 393 said,

   '.. the proper course is to attach the main weight to the desirability of having the substantial issue satisfactorily and fully investigated'.

2. Ms Baird submitted that the evidence in reply seeks to improve the quality of its evidence in support and that it is the unduly broad scope of the evidence in reply that has triggered the need for the present application. She said that with due diligence the opponent's evidence in reply could have been provided as part of its evidence in support.

3. Ms Baird said that Ms Lo, who is a Director and the Financial Controller of the applicant, is able to provide credible evidence in respect of the newly raised issues in the evidence in reply which, thus far, the applicant has been denied the opportunity to answer.  As to whether or not the evidence is likely to have an important effect on the outcome, Ms Baird said, this is largely dependent on the attitude of the Hearing Officer at the hearing.  However, she said, without it, the Hearing Officer will be faced with an incomplete picture of the applicant's bona fides generally and in particular, its bona fides in choosing its business name and trade mark, the extent, if any, of market confusion and the extent and facts of the opponent's use of the term NAGS and the use of the term NAGS by persons other than the applicant before the priority date.

4. It is clear from a reading of the evidence in reply that some of it is evidence that could, and would have been more properly served, as evidence in support, particularly evidence which relates to use by the opponent of its trade mark and to instances of alleged confusion between the opponent's and the applicant's trade marks. The issue of whether or not there is confusion between the applicant's trade mark and the opponent's trade mark is the essential issue of the opposition.  The first Howard statutory declaration, filed as evidence in support, declares that, 'I consider that confusion is inevitable within Australia between the opposed trade mark and my company's trade mark.' This claim was unsupported although evidence to support it was available to the opponent at the time.  The evidence to support Ms Howard's claim was served as evidence in reply. The applicant has therefore not had an opportunity to respond fully to the issue of confusion between the trade marks.

5. The evidence in reply also directly challenges the integrity of the declarant, Ms Lo, in relation to the adoption of the trade mark, and in so doing, addresses issues that are irrelevant to the opposition. Given that the evidence in reply attacks Ms Lo's honesty and by implication, the applicant's, in the adoption of the trade mark, the applicant should, in all fairness, be granted an opportunity to respond. Further evidence may provide clarification of this issue and the public interest will be best served if all the facts are before the Registrar's delegate when the opposition is decided.

6. The customs and pricing issues are irrelevant to the opposition and one must question why the opponent thought it necessary to introduce them in its evidence in reply, if not to cast a shadow over the applicant's evidence in answer. The opponent has raised these matters and given their prejudicial nature I believe the applicant would be disadvantaged if it were not given the opportunity to file further evidence in response.

7. For all the foregoing reasons I find that it would be appropriate to allow the extension.

Decision

1. My decision is to allow the application for an extension of period to serve further evidence.  I allow the applicant one month from the date of this decision to serve and file further evidence.  I allow the opponent one month from the date of service of the further evidence to reply to the further evidence.

Costs

1. In terms of costs, I direct that the opponent pay the applicant's costs in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Mary Skivington

Hearing Officer

Trade Marks Hearings

24 November 2003