Re: Opposition by Annco, Inc to registration of trade mark application no. 1874506 Aeroloft in the name of Nike Innovate C.V. And Request by Annco, Inc. to amend the statement of grounds and particulars
[2020] ATMO 17
•7 February 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Annco, Inc to registration of trade mark application no. 1874506 – AEROLOFT – in the name of Nike Innovate C.V.
And
Request by Annco, Inc. to amend the statement of grounds and particulars
| Delegate: | Bianca Irgang |
| Representation: | Opponent: David Larish of counsel instructed by King & Wood Mallesons Applicant: Khajaque Kortian of Spruson & Ferguson |
| Decision: | 2020 ATMO 17 Trade Mark Regulations 1995 (Cth) - regulation 5.12 - request to amend statement of grounds and particulars by adding section 58A where application was not accepted under section 44(4) – delay in seeking amendment – request refused. |
Background
This decision is in relation to a request (‘the request’) under regulation 5.12 of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’) to add a new ground to the statement of grounds and particulars (the ‘SGP’).
Pursuant to section 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) registration of trade mark application no. 1874506 (‘the application’) in the name of Nike Innovate C.V. (‘the applicant’) has been opposed by Annco, Inc (‘the opponent’). The opponent now seeks to add a ground of opposition under section 58A to the grounds of opposition that currently appear on the SGP which are sections 42(b), 44, 59 and 60.
Both parties have met the various procedural requirements in prosecuting their respective roles in this opposition, including the filing of the required forms and evidence as prescribed in the Act and Regulations. On 4 March 2019, at the same time as filing its evidence in reply, the opponent applied to amend the SGP. After considering the request, the Delegate of the Registrar informed the parties that they intended to refuse the opponent’s request to amend the SGP. Subsequently, the opponent requested a hearing in the matter which the applicant requested to also attend. Duly the parties provided their written submissions and appeared at the Hearing on 5 September 2019.
Relevant provisions
The following provisions of the Act and Regulations are relevant to the request:
Section 44 Identical etc. trade marks
Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
…
If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Section 57 Registration may be opposed on same grounds as for rejection
The registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.
Note: For this Act see section 6.
Section 58A Opponent’s earlier use of similar trade mark
This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
(b) a similar provision of the regulations made for the purposes of Part 17A.
Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first—mentioned trade mark has been continuously used since before the priority date of the other trade mark.
The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
Note: For predecessor in title see section 6.
Regulation 5.12 Amendment of statement of grounds and particulars
An opponent may request the Registrar to amend the statement of grounds and particulars to:
…
(c) add a new ground of opposition…
The Registrar may grant the request on terms that the Registrar considers appropriate.
However, the Registrar may grant a request to:
…
(b) add a new ground of opposition;
only if the Registrar is satisfied that the … addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.
Submissions
Firstly in considering whether or not the opponent is able to add the section 58A ground of opposition in a case where the application was not accepted under the provisions of section 44(4) I turn to k-Tec, Inc v Healthy Foods, LLC[1] (‘K-Tec’) and the words of Hearing Officer Richards:
A preliminary issue identified in the above excerpt is the regulatory limitation on the availability of amendment to an SGP— it is impossible to add a ground of opposition to the SGP unless the Registrar finds that the opponent could not reasonably have been aware of the information under which that new ground arises, at the time the SGP was filed. The applicant has not contradicted the opponent’s submissions on this point, and I see no reason to doubt that the applicant’s evidence in answer was the catalyst for the opponent filing the request. Since the evidence in answer was available to the opponent well after the filing of the SGP, I find that amendment to the SGP is not barred by reg 5.12(3).
[1] [2016] ATMO 4
In light of this, I am satisfied that it is possible for an opponent to request the section 58A ground of opposition be added to the grounds of opposition after the opposition has commenced on other grounds. As such, my reasoning below is confined to the question of whether it is appropriate to amend the SGP in line with the request I have received from the opponent in this case.
Regulation 5.12 – Exercise of the Registrar’s Discretion
The factors that will generally need to be taken into account in the exercise of the Registrar’s discretion to amend an SGP are the likely prejudice to the parties, the public interest, whether the ground proposed to be added is sufficiently particularised and the nature and importance of the requested amendment. In the present matter the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment are also relevant.
The thrust of the opponent’s arguments are:
The opponent had no indication – and thus could not reasonably have been aware at the time of filing the SGP – that the applicant would seek to place reliance on section 44(4); and
Even if the opponent had been aware of an article featuring the applicant and its trade mark dated in September 2013, the opponent still could not have been aware that the applicant was seeking to rely on section 44(4) or if it would defend the opposition at all when it filed the SGP.
The applicant has, of course, disputed these arguments of the opponent arguing the opposite:
The opponent raised the section 44 ground of opposition in its SGP and should have been reasonably aware that in raising that ground it is highly possible that the applicant may attempt to overcome it under section 44(4); and
The ground of opposition under section 58A is inextricably connected with the section 44 ground of opposition and that by arguing the section 44 ground of opposition the opponent would immediately be aware of the possibility that it may be overcome by way of section 44(4) and that would be directly related to a section 58A ground of opposition.
The applicant has also naturally argued that adding a new ground of opposition after the evidence stages have closed is prejudicial to it and that if the amendment is allowed the applicant should be allowed to then treat the opponent’s evidence in reply as evidence in support of its section 58A ground.
There has also been significant argument surrounding an article dated in 2013, that was put into the applicant’s evidence in answer, which the opponent states is the reason that it came to believe that the applicant intended to rely on section 44(4) to overcome any ground of opposition the opponent may have been able to establish under section 44. It was this consideration of the applicant’s evidence in answer that triggered the opponent’s decision to use the evidence in reply stage to prepare and file evidence in support of a section 58A ground for opposition and then apply to amend the SGP in March 2019.
The parties argued over the public availability of that article which is dated in 2013 and was, as alleged by the applicant, readily available on the applicant’s website at the time the opponent filed its SGP. As such the opponent should have been reasonably aware of it when filing its original SGP if the opponent had engaged in basic searches before commencing the opposition. However, the opponent has asserted that there is no evidence that the article was available within Australia during the time when the opponent filed its SGP. In regards to these arguments, I am not particularly persuaded by either party.
Firstly, the power to amend an SGP in reg 5.12 is cast in discretionary terms. Secondly and more generally, Part 5 of the Regulations sets out in detail the procedure for opposition proceedings. It prescribes several deadlines regarding the filing of not only the SGP, but various procedural documents and evidence. The provisions that apply when an extension of time to an evidence deadline in opposition proceedings is sought are notoriously more onerous than extension of time provisions found elsewhere in the legislation. Had a full airing of all relevant grounds in every opposition been the ultimate aim of the opposition provisions, the provisions setting out the procedure would not have been cast in such restrictive language. Instead there is a timetable for filing various opposition documents, each stage of which depends largely on the last. In the words of the majority in Aon Risk Services v Australian National University[2] (‘Aon’) :
A party has the right to bring proceedings. Parties have choices as to what claims are to be made and how they are to be framed. But limits will be placed upon their ability to effect changes to their pleadings, particularly if litigation is advanced. That is why, in seeking the just resolution of the dispute, reference is made to parties having a sufficient opportunity to identify the issues they seek to agitate.
[2] (2009) 239 CLR 175, 195 [103].
The article may have been available throughout the whole of Australia during the time which the opponent chose to oppose the applicant’s trade mark and there is also a strong responsibility incumbent on the opponent to be fully prepared and aware of the grounds by which it seeks to pursue an opposition before the opposition commences. This was part of the intention behind ‘Raising the Bar’ and the filing of a SGP. However, this does not mean that an opponent is barred from amending the SGP after the opposition has commenced. Rather, it means that the opponent needs to satisfy the Registrar that they have had sufficient opportunity to identify the grounds of opposition they wished to pursue, that they have acted promptly in the timing of the amendment request and the reasonableness of the explanation offered for the delay in requesting the amendment.
The opponent has argued that it was the applicant’s evidence which alerted them to the possibility that their section 44 ground of opposition may be overcome by section 44(4). While I have reservations that the opponent could not have been aware that a section 44 ground of opposition may be overcome by section 44(4) prior to the applicant’s evidence, I accept that this evidence in answer was likely the trigger for the opponent’s desire to raise section 58A as a ground of opposition.
The opponent has argued that the reasoning in K-Tec does not apply to them because in K-Tec the opponent took a total of nine months from the filing of the applicant’s evidence in answer before requesting an amendment to add a ground of opposition under section 58A whereas the opponent has only taken three months in this case. However, this argument does not persuade me. I believe that K-Tec and the current case before me are analogous because while the time frames are different, the considerations are not. In this matter the opponent requested the amendment to the SGP a total of three months after the evidence in answer had been filed and when they filed their evidence in reply. Clearly the opponent’s evidence in reply was prepared in full consideration of the applicant’s evidence in answer where the opponent would have made a decision to include evidence that would support a section 58A ground of opposition. The opponent therefore delayed making the request by three months. Similar to K-Tec, the opponent has offered little by way of explanation for the delay, save noting that it was not aware of the need to invoke section 58A at the time it filed the SGP and that reg 5.12 does not impose a time limit on amendment.
The dispute in Aon concerned a late application by a party to amend its pleadings — a document that serves a very similar function to an SGP. The issues in that dispute were the interpretation of relatively recently enacted ‘case management’ style reforms to the rules of the ACT Supreme Court.[3] Those reforms were in many ways similar to the Raising the Bar reforms in that they concerned reducing delays in procedure in the lead up to trial. The following passage from the majority judgement is therefore instructive:
Generally speaking, where a discretion is sought to be exercised in favour of one party, and to the disadvantage of another, an explanation will be called for. The importance attached by r 21 to the factor of delay will require that, in most cases where it is present, a party should explain it. Not only will they need to show that their application is brought in good faith, but they will also need to bring the circumstances giving rise to the amendment to the court’s attention, so that they may be weighed against the effects of any delay and the objectives of the Rules.[4]
[3] Court Procedures Rules 2006 (ACT).
[4] Aon (2009) 239 CLR 175, 195 [103].
The above comments demonstrate that there is an obligation on a party to explain significant delays in seeking amendments to pleadings. As in K-Tec, the opponent in the current situation has been less than forthcoming. The opponent did explain that the applicant’s evidence in answer was the catalyst for deciding that it could be appropriate to seek to add a new ground of opposition to the SGP. However, the opponent has not explained the circumstances in which the three month delay occurred, leaving me unable to form a view on whether the delay was reasonable in the circumstances. Further to this, the opponent’s argument that the applicant would not be prejudiced in anyway also does not persuade me. This issue regarding the amendment to the SGP has already taken almost a year to resolve.
Given all of the above, a full explanation from the opponent for its three month delay between assessing the applicant’s evidence in answer and filing its evidence in reply and then making the request to amendment the SGP is clearly required. I find the opponent’s failure to provide a full and frank explanation for the delay together with the prejudice that the amendment will cause the applicant argues against the exercise of the discretion.
Decision
I refuse the request to amend the SGP. The hearing on the substantive matter will now be scheduled at a time convenient to the parties.
Bianca Irgang
Hearing Officer
Trade Marks and Designs Hearings
7 February 2020
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