Opposition by Macy's Merchandising Group Inc to registration of trade mark application 1764113 (24) – STYLE & CO

This matter concerned an opposition by Macy's Merchandising Group Inc. to the registration of the trade mark application 1764113 for the mark STYLE & CO, filed by the applicant. The opposition was heard by Robert Wilson, acting as a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether to admit new evidence submitted by the opponent out of time, and whether to permit an amendment to the Statement of Grounds and Particulars to include a ground of opposition based on bad faith under section 62A of the *Trade Marks Act 1995* (Cth). The delegate also had to determine the substantive grounds of opposition, specifically focusing on section 44 of the Act, which deals with the rejection of applications for trade marks that are substantially identical or deceptively similar to existing registered trade marks for similar goods or services.

The delegate's reasoning addressed the admissibility of the late-filed evidence, noting that while Regulation 21.19 of the *Trade Marks Regulations 1995* (Cth) allows for the consideration of such evidence, it is a discretionary power. The delegate emphasised that there is an onus on parties to file evidence within the prescribed periods and that relying on late evidence is done at their peril, requiring further circumstances to justify its consideration beyond mere relevance. The delegate also considered the ground under section 44, noting that the onus of proof rests on the opponent and the standard of proof is the ordinary civil standard on the balance of probabilities. The relevant date for determining the rights of the parties was the filing date of the application, 11 April 2016.

The delegate's decision on the admissibility of the new evidence and the amendment to the grounds of opposition would determine which evidence and arguments could be considered in the substantive opposition. The delegate indicated that it was only necessary to consider the ground pursuant to section 44 of the Act to determine the opposition.