Morarp Pty. Limited v Transference Trading Pty. Limited

[2012] ATMO 27

TRADE MARKS ACT 1995

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

Re:Opposition by Morarp Pty. Limited to registration of trade mark application No. 1332409(19) - "styrocon" – (word mark) filed in the name of Transference Trading Pty. Limited.

Delegate:	John Spence
Representation:	Opponent: Mr. Reg Hornibrook, Consultant, appeared for the Opponent under letter of authority and accompanied by Mr. Peter Ure as observer – Opponent is represented generally by Fisher Adams Kelly, Patent and Trade Mark Attorneys, who did not appear on the day. Applicant: Ms. Tracey Berger, Solicitor, accompanied by Ms. Amanda Caldwell, Solicitor, both of Spruson & Ferguson, Patent and Trade Mark Attorneys.
Decision:	2012 ATMO  27 Section 52 opposition – preliminary issue of application by the Opponent under Regulation 5.15 requesting permission to serve further evidence – application allowed – proceedings adjourned – costs thrown away to be met by the Opponent.

Background

1. On 20 November 2009 (“the priority date”) the company Transference Trading Pty. Limited (“the Applicant”) filed an application for registration of the trade mark “styrocon” (being in the nature of a word mark rendered in lower case lettering of uniform size and typeface) under No. 1332409 in Class 19 of the International Classification of Goods and Services (Nice) and in respect of the following specification of goods, namely:

   Building materials made of fibre cement; cementitious building materials (other than in the nature of paint); building materials made of fibre cement; building materials of expanded polystyrene in block form; building materials of expanded polystyrene in sheet form; building materials of expanded polystyrene in slab form; cementitious building materials (other than paint).

   This application was accepted for possible registration, and the advertisement of same appeared in the Official Journal of Trade Marks dated 25 March 2010.

2. The granting of registration in respect of the “styrocon” application is opposed by Morarp Pty. Limited (“the Opponent”) which commenced these proceedings by means of a Notice of Opposition on 24 June 2010 and pursuant to the provisions of Section 52 of the Trade Marks Act, 1995 (“the Act”).

3. In due course each step in the evidentiary timetable was completed. The Opponent filed and served its evidence in support on 14 October 2010. In turn, the Applicant filed and served its evidence in answer on 11 March 2011. Evidence in reply was duly filed and served by the Opponent on 10 June 2011. By correspondence dated 22 July 2011 from Spruson & Ferguson, Patent and Trade Mark Attorneys (representing the Applicant) a formal request was made that the matter be set down for hearing in Canberra or Sydney.

4. These proceedings came before me, as a delegate of the Registrar of Trade Marks, for a hearing in Sydney on 15 February 2012. On that occasion Mr. Reg Hornibrook, a former director of Morarp Australia Pty. Limited and presently acting in the capacity as a consultant to that company, appeared at the hearing and he represented the Opponent. He was accompanied by Mr. Paul Ure (a former managing director of the Opponent and a potential witness in these proceedings) as an observer. The Applicant was represented by Ms. Tracey Berger, Solicitor, a principal of Spruson & Ferguson, Patent and Trade Mark Attorneys, accompanied by Ms. Amanda Caldwell, Solicitor, and also of that firm, both of whom appeared before me.

5. In relation to the matter generally, the Opponent is represented by the firm of Fisher Adams Kelly, Patent and Trade Mark Attorneys, of Brisbane, Queensland. Prior to the hearing, Ms. Danielle Jepson of that firm had contacted me by telephone and she had indicated that she might wish to attend the hearing by means of a telephone link-up. However, on the day and after making contact with Fisher Adams Kelly by telephone, Mr. Hornibrook confirmed that his attorneys would not be attending at the hearing and that he would be representing the Opponent on that occasion. By way of confirmation, at the commencement of the proceedings Mr. Hornibrook handed up a letter from Morarp Pty. Limited authorising him to act on behalf of the Opponent.

   Direction

6. Prior to the hearing, I issued a direction pursuant to Regulation 5.16 of the Trade Mark regulations 1995 to the effect that each party was to make available in advance a copy of the written submissions on which it proposed to rely at the hearing and in accordance with a specified timetable. While both parties responded acknowledging the receipt of this correspondence, neither party had complied with the direction as at the date of the issuing of this decision.

   The Hearing

7. At the hearing, there arose a preliminary matter which required immediate attention. Shortly before the hearing, by correspondence dated 10 February 2012, Fisher Adams Kelly on behalf of the Opponent had filed and served an application requesting permission to serve further evidence. That request was accompanied by the supporting Statutory Declaration of Danielle Belinda Jepson made on 10 February 2012 (“the Jepson Declaration”). The further evidence was not available at the hearing, and the Opponent sought the additional period of one month within which to finalise and serve that material (as set out in paragraph 12 of the Jepson Declaration). The Opponent’s request was objected to by the Applicant.

8. When the hearing commenced, I indicated to the parties that it was my intention to attend to the preliminary issue first. Then, rather than adjourn at that point, I proposed that the parties should go on to make submissions (so far as they were presently able to do so) in relation to the substantive matter of the Opposition proceedings and the grounds of opposition which have been raised. My reasoning in adopting this approach was to take advantage of the fact that the hearing was convened and in progress and to avoid wasting the opportunity by gaining whatever benefit was possible from the presence before me of the representatives of the respective parties.

9. I then invited the parties to address the issue of the Opponent’s request for further evidence to be allowed. As the party making the request, Mr. Hornibrook (for the Opponent) went first in making oral submissions in support of the Opponent’s request. Ms. Berger then made submissions in reply. After hearing the respective submissions, I reserved my decision in relation to that aspect of the proceedings. My finding in this regard and the reasons for same are now stated below.

10. Having heard the parties in relation to the issue of the request for further evidence, I then endeavoured to proceed with the hearing of the substantive matter which was before me, namely the Opposition under Section 52. As earlier proposed, I asked the parties to proceed with the making of submissions in relation to the grounds of opposition. At that point the Applicant’s attorney raised her concerns about proceeding further, contending that until the issue of the further evidence was resolved it was impossible for her to know what it might be that her client needed to respond to. Ms. Berger expressed the view that her client could only be prejudiced if the proceedings were conducted. I noted the concern of Ms. Berger, and I directed that the proceedings should proceed.

11. During the course of making his submissions on behalf of the Opponent, and on two separate occasions, Mr. Hornibrook either made reference to documents which he was trying to locate or he sought to rely on documents which were in his possession but which had not been provided as evidence. The point was reached where Ms. Berger was again caused to intervene and she expressed the view that, as she was not in a position where she was able to obtain the instructions of her client in relation to those items, the hearing should be adjourned.

12. I accepted the validity of the concerns which were pressed by Ms. Berger. Accordingly, at that point I acceded to the proposal of the Applicant’s attorney and I adjourned the proceedings. As a consequence, this decision is now limited to a determination of whether the Opponent’s request for leave to serve further evidence should be allowed. The substantive matter of the Opposition itself is not presently addressed and the determination of same is left to the deferred hearing whenever it might take place.

    Further Evidence

    Submissions

13. In support of its request for leave to provide further evidence, the Opponent has provided submissions both in the form of the Jepson Declaration and orally from Mr. Hornibrook at the hearing. In response, on behalf of the Applicant Ms. Berger made oral submissions at the hearing and subsequently she provided me with a copy of written submissions only in relation to the issue of the request by the Opponent for permission to serve further evidence.

    Discussion

14. Regulation 15.5(1)(b) of the Trade Marks Regulations 1995 provides that either party may apply to the Registrar for permission to serve a copy of further evidence on the other side. As indicated in Regulation 5.15(3), the Registrar must not grant the application unless he or she:

    (i)is satisfied that the party seeking permission to serve the further evidence has given a copy of the application and supporting documentation to the other side;

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

    (iii)is satisfied that the giving of the further evidence is appropriate in the circumstances.

15. The usual starting-point in relation to a request for further evidence is to consider the accepted principles governing the admission of further evidence as stated by Lord Denning in Ladd v. Marshall [1954] 1 WLR 1489, namely that it should be shown that:

    ·with reasonable diligence, the evidence could not have been obtained earlier;

    ·the evidence is likely to have an important effect on the outcome;

    and

    ·the evidence should be credible.

    Of course, that case did not involve a trade mark matter but rather it was concerned with the interpretation of a condition in the licence of a bungalow. That decision is further able to be distinguished from the present matter by virtue of the fact that Lord Denning was considering the issue of whether to allow further evidence before the hearing of an appeal (that is, after a decision at first instance) whereas that factor does not arise in relation to the present proceedings. Nonetheless, the relevant broad principles have been adopted and applied in subsequent cases, notably in George Thornhill and Company’s Application [1963] RPC 13 and in Oxon Italia SpA’s Trade Mark Application [1981] FSR 408.

16. Those general principles need to be considered in the light of the decision of Hearing Officer Homann in Studio SrL v. Buying Systems (Australia) Pty. Limited (1992) AIPC 90-858 where, in pointing to the differences between the British and Australian provisions, he made these comments in relation to the Australian law:

    . . .it is well established that an “appeal” from the Registrar is not an appeal in the strict sense at all but within the original jurisdiction of the court: Jafferjeev. Scarlett [1937] HCA 36; (1937) 57 CLR 115. The appeal is a hearing de novo and the court will not exclude further evidence or additional grounds.

    . . .The effect of refusing an application for special leave may therefore be to force an unsuccessful party to the opposition before the Registrar into an appeal to the court where the evidence, if admissible, would not be excluded. 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.

    The Hearing Officer went on to refer to the findings of Justice Richardson in Pioneer Hi-Bred Corn Co. v. Hy-Line Chicks Pty. Limited (1979) RPC 410 where, in relation to a matter of deception and confusion, his Honour stated:

    Within reasonable limits it furthers the public interest to allow consideration of any available evidence that will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception and confusion. Second, the evidence sought to be adduced is evidence that would assist in resolving ambiguities in material furnished to the Assistant Commissioner. Except for the evidence of Mr. Waymouth, it does not attempt to break new ground and Mr. Waymouth’s evidence provides, from official sources, relevant information as to the size of the market . . . And as put by Ungoed-Thomas J in Bali Trade Mark (1966) RPC 387 at 393:

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

    That reasoning has been adopted in a number of subsequent decisions including Egbert Mensse Scwitters v. Horphag Research Limited [1997] ATMO 62, Westjade Pty. Limited v. AVA Enterprises Inc. (1997) AIPC 91-383 and Gemini Marine CC v. Gemini Inflatables (Australia) Pty. Limited [2009] ATMO 13. Further, in Weller v. TGI Friday’s Inc (1994) 29 IPR 61 it was stated that a restrictive approach under the relevant Regulation “would perhaps act to force up the number of appeals to the Federal Court, a situation which is demonstrably not in the public interest”. In Mobil Oil Corporation Limited v. Reinsurance Australia Corporation Limited (1999) AIPC 91-485 Hearing Officer Williams observed that the discretion of the Registrar’s delegate to allow in further evidence “is broader than in Oxon Italia”. Hence, as a general proposition, the Registrar would be inclined to admit further evidence in opposition proceedings (see Union Knitting Mills Pty. Limited v. Esprit International [1998] ATMO 59; (1998) 44 IPR 404).

17. Additional assistance may be derived by reference to the discussion of the relevant factors which is found in the patent decision of Ferocem Pty. Limited v. Commissioner of Patents (1994) AIPC 91-057 in which Justice Burchett stated:

    The determination of an application for an extension of time under reg. 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the Office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v. The Reynolds Metal Company (1969) 120 CLR 136 at 143, “the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be”. This proposition was cited by Bowen CJ in Vangedal-Nielsen & Ors v. Smith (Commissioner of Patents) (1980) 33 ALR 144 (at 150), where he also set out some of the considerations involved upon an application for an extension of time.

18. Finally, I refer in passing to the decision of Executors of the Estate of Diana, Princess of Wales (Deceased) v. Masterson (2001) 52 IPR 264 and the statement of general application that:

    The Registrar performs the function of an administrative tribunal and therefore exercises an administrative rather than a judicial role in matters arising from the administration of the Act (see R. v. Quinn; Ex Parte Consolidated Foods Corporation 1A IPR 537). A hearing before the Registrar is therefore not restricted by the formalities and rules which might be applicable to court actions. The proceedings are informal and the Registrar’s paramount concern is that all parties concerned have adequate opportunity to present their case to the Registrar’s delegate.

    Finding

19. As the Registrar’s delegate, it is clear that I have the discretion to allow the Opponent to file and serve further evidence. Having heard and considered the submissions which have been put on behalf of both parties, I have reached the determination that in this instance the request to put on further evidence should be allowed. Indeed to decide differently, and in the words of Hearing Officer Murray in Gemini Marine CC v. Gemini Inflatables (Australia) Pty. Limited [2009] ATMO 13, “I would need to be satisfied of the complete irrelevance and lack of credibility of the material sought to be introduced”. This matter is a complex one in a factual sense, and it is apparent that there are difficulties, inconsistencies and anomalies in the evidence as it is presently available. Accordingly, I consider that the appropriate way in which this matter should best be determined and resolved is for the further evidence as requested by the Opponent to be allowed. However in so deciding it is not my intention that the matter should be unduly delayed. Given the time which has already passed and the opportunity which the Opponent has had to put together its case, the granting of the request in this instance is in the nature of an indulgence and accordingly I am mindful of the need for the observance of a tight time-frame and for minimal delay to occur in the reaching of a final decision.

    Decision

20. In accordance with the requirements laid down in Regulation 5.15, in this instance I am reasonably satisfied that it is appropriate to grant the Opponent permission to serve its further evidence in relation to trade mark application No. 1332409 “styrocon”. Accordingly, I make the following directions for the further conduct of these proceedings, namely:

    1.        The Opponent’s request for permission to serve further evidence pursuant to Regulation 5.15 is granted.

    2.        The Opponent is allowed the period of one calendar month from the date of the issuing of this decision, that is, until 2 April 2012 (since 1 April falls on a Sunday and is therefore a dies non for this purpose), within which to serve the further evidence on which it seeks to rely.

    3.        The Applicant is allowed the period of one calendar month from the date on which the further evidence is served on it (that is, by not later than 2 May 2012) within which to serve any responding evidence on which it might seek to rely.

    4.        At that point, the adjourned Opposition proceedings will resume and they will be set down for further hearing at a date to be advised. The parties will be informed in advance of the time and place for the resumed hearing.

    Costs

21. In normal circumstances, as this hearing took place on an interim basis and as the merits of the substantive Opposition have not been dealt with, I would have considered it to be the usual and appropriate course for costs to be reserved until such time as the adjourned hearing has been determined. However in this instance, given the late notice on the part of the Opponent of its request to allow further evidence and the Applicant’s expression of concern at the delay, cost and inconvenience to which it has now been put, I consider the proper course to be that the costs of the adjourned hearing date of 15 February 2012 (and being essentially a day thrown away) should be met by the Opponent. Accordingly, I award costs of the day in favour of the Applicant and to be assessed according to the official scale. The assessment of those costs should be deferred until the Opposition proceedings have been determined by the Registrar and they should be taken into account in any final assessment at that time.

    John Spence
    Hearing Officer
    Trade Marks Hearings
    5 March 2012