Re: Request by The Australian Council for Educational Research Limited to amend the statement of grounds and particulars in the opposition by The Australian Council for Educational Research Limited to registration..

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Request by The Australian Council for Educational Research Limited to amend the statement of grounds and particulars in the opposition by The Australian Council for Educational Research Limited to registration of trade mark application number 2038480 (class 9 – ACER (Figurative) - in the name of Acer Incorporated.

Delegate: Timothy Brown

Representation: Opponent: Stephen Rebikoff of counsel, instructed by Davies Collison Cave Pty Ltd
Applicant: David Larish of counsel, instructed by Kings & Wood Mallesons

Decision: 2022 ATMO 31
Trade Marks Regulation 1995 (Cth) reg 5.12 – request to amend statement of grounds and particulars to add section 58A – request allowed – statement of grounds and particulars amended.
Background

This decision concerns a request under regulation 5.12 of the Trade Mark Regulations 1995 (Cth) (‘Regulations’) made by The Australian Council for Educational Research Limited (‘Opponent’) on 16 July 2021 to amend a statement of grounds and particulars to add a new ground of opposition.
The request arises out of an opposition pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of trade mark number 2038480 (‘Trade Mark’) in the name of Acer Incorporated (‘Applicant’). The Statement of Grounds and Particulars (‘SGP’) was filed by the Opponent on 9 April 2020. On 16 July 2021 the Opponent requested to add a ground of opposition based on s 58A to the grounds of opposition currently nominated in the SGP, which are ss 42(b), 44, 58 59, and 60 of the Act.
On 27 July 2021, the delegate of the Registrar of Trade Marks informed the parties that they intended to allow the request to amend the SGP and invited the Applicant to make representations on the matter. On 28 July 2021, the Applicant wrote to the delegate objecting to the proposed amendment to the SGP.
On 10 August 2021, the Applicant requested a hearing on the matter in the event that the delegate intended to allow the amendment. On 3 September 2021, the delegate informed the parties that they intended to allow the amendment. On 10 September 2021, the Applicant confirmed that it wished to be heard. The matter was subsequently heard before me, via video conference, on 3 December 2021. Representing the Opponent was Stephen Rebikoff of counsel instructed by Lauren Eade and Janette Li of Davies Collison Cave. Representing the Applicant was David Larish of counsel instructed by Miguel Ferreira of Kings Wood Mallesons.
Preliminary Issue
Prior to the hearing the Applicant indicated that they intended to rely on the following material:
·Current and Historical ASIC Extract for Acer Computer Australia Pty Ltd (‘ASIC Extract’).
·Statutory Declaration of Roderick John Brodie dated 15 September 2015 (‘Brodie Declaration’).
·Submissions of counsel for the Opponent dated 24 November 2016 filed in respect of the Opposition by the Applicant to New Zealand trade mark application numbers 843330 and 843331.
·Status and history extract of Trade Mark Registration 560640.
I informed the parties at the hearing that pursuant to reg 21.15(4) of the Regulations I intended to consider this information in making the decision and allowed for the Opponent to make representations on the material following the hearing. Representations regarding this material were subsequently filed by the Opponent on 20 December 2021.
The Opponent submitted that the information should be excluded from the decision because it is not of high probative value or provided in declaratory form.
I do not agree with the Opponent’s submissions in respect to the consideration of this material. The material provided by the Applicant pertains solely to this decision and the request to amend the SGP. There were no formal evidence stages for this hearing. The Applicant is not attempting to introduce new evidence into the s 52 opposition after the due date for evidence in answer. Although the probative value of this material is less than it would otherwise be if provided in a declaration, the material relied on by the Applicant pertains to the threshold question in this matter, that being information that the Opponent could not reasonably have been aware of at the time of filing the SGP. Accordingly, I have taken this material into consideration in making this decision.
Relevant Provisions
Regulation 5.12 provides:
(1) An opponent may request the Registrar to amend the statement of grounds and particulars to:
(a) correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or
(b) amend a ground of opposition; or
(c) add a new ground of opposition; or
(d) to amend the facts and circumstances forming the basis for the grounds.
(2) The Registrar may grant the request on terms that the Registrar considers appropriate.
(3) However, the Registrar may grant a request to:
(a) amend a ground of opposition; or
(b) add a new ground of opposition;
only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.
Section 58A provides:
(1)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.
(2)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.
Section 44(4) relevantly provides:
(4)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.
Discussion and Reasons
The discretion to amend an SGP may only be exercised if the Registrar is satisfied that the amendment relates to information that the Opponent could not reasonably have been aware of at the time of filing the SGP.[1]
[1] Trade Mark Regulations 1995 (Cth) reg 5.12(3).
There is no controversy between the parties regarding the operation of s 58A of the Act. In order for s 58A to apply, a trade mark must have been accepted under s 44(4). In this instance, the Trade Mark was accepted under s 44(3)(b). For this reason, the Opponent submits that it could not have relied on s 58A at the time the SGP was filed. It was only after the Applicant’s evidence in answer was lodged and considered, that the Opponent became aware of the Applicant’s intention to rely on s 44(4) should the requirements of s 44 be established.
The Applicant submits that despite the acceptance of the Trade Mark under s 44(3)(b) of the Act, it is in no way precluded from relying on s 44(4) during opposition proceedings. Furthermore, the Applicant submits that the following factors suggest that the Opponent should have been aware that the Applicant intended to rely on s 44(4) at the time the SGP was filed:
·The Applicant is the owner of the following trade mark registration:
Trade Mark Number: 465226
Trade Mark:
Priority Date: 15 May 1987
(‘Applicant Trade Mark Registration’)
·The ASIC company register indicates that Acer Computer Australia Pty Ltd, a subsidiary of the Applicant, was incorporated in Australia on 21 September 1989.
·The Brodie Declaration acknowledges use of the Trade Mark by the Applicant since 2001.
·The parties have been involved in various trade mark opposition proceedings in both Australia and other jurisdictions, including the Opposition by the Applicant to New Zealand trade mark application numbers 843330 and 843331.
The Applicant also claims that the Opponent was aware that the Applicant has used the name ACER since 1987.
The thrust of the Applicant’s argument is that the Opponent was aware of the Applicant’s use of its ACER trade marks, and that the information necessary to conclude that the Applicant would rely on s 44(4) was reasonably discoverable at the time the SGP was filed. In this respect the Applicant refers to comments of the delegate in the decision of Juno Pharmaceutical Inc v Juno Therapeutics:
the word “information” as used in reg. 5.12(3) or reg. 17A.34G rather suggests information in the nature of relevant documentation or other objective evidence that was not reasonably discoverable earlier and that would clearly support the ground an opponent sought to add. [2]
[2] [2017] ATMO 160, [22] (Hearing Officer Kirov).
The above remarks were made in the context of considering whether judicial decisions constituted “information” of which the opponent could not have reasonably been aware.
The Opponent contends that the relevant information is the Applicant’s intention to rely on s 44(4) of the Act, not the Applicant’s use of the Trade Mark. The Opponent also denies that it was aware of any relevant use of the Trade Mark, noting that none of the previous disputes between the parties concerned the Trade Mark or the goods in respect of which the Applicant now seeks registration.
Section 58A is inextricably linked with s 44(4). There will always be some possibility of an applicant relying on s 44(4) whenever an application is opposed under s 44. For this reason, the Applicant submits that the Opponent should have considered how the Applicant might defend an opposition under s 44. As a general proposition, there is a responsibility on the Opponent to be fully prepared and aware of the grounds by which it seeks to oppose the registration of a trade mark.[3] Accordingly, in circumstances where an opponent requests an amendment to a statement of grounds and particulars, it bears the onus of not only demonstrating that it acted promptly in making the amendment request, but that the explanation for the delay was reasonable. These two considerations will be discussed in more detail below. In respect to the threshold question, while I have no doubt the Opponent was aware of the possibility of s 44(4) arising from a ground of opposition under section 44, it does not follow that an opponent should be expected to oppose under s 58A whenever they oppose under s 44.
[3] See: Annco, Inc. v Nike Innovate C.V. [2020] ATMO 17, [15] (Hearing Officer Irgang).
Although the history of trade mark disputes between these two parties might suggest that the Opponent possessed a degree of knowledge about the Applicant and its trade marks, I am not convinced that that the Opponent could have reasonably been aware that the Applicant intended to rely on evidence of prior use of the Trade Mark under s 44(4). In my view, it is likely that the information contained in the Applicant’s evidence in answer was the catalyst for the Opponent’s request to add s 58A as a ground of opposition. Further, I find the acceptance of the Trade Mark under s 44(3)(b) to be a satisfactory reason for the Opponent not nominating s 58A at the time of filing the SGP.
The material provided by the Applicant does not convince me that it was reasonable for the Opponent to be aware that the Applicant would rely on prior use of the Trade Mark. The ASIC Extract confirms only the existence of the company name ACER Computer Pty Ltd. I note that the Brodie Declaration was provided in the course of opposition proceedings in New Zealand and does not comment on use of the Trade Mark, or any variation of the Trade Mark, in Australia. Similarly, the Opponent’s submissions dated 24 November 2016 relate to New Zealand trade mark applications[4] and the use of those trade marks in New Zealand. With respect to the Applicant’s Trade Mark Registration, I note that evidence of use of this Trade Mark was not relied on by the Applicant during examination to establish prior use of the Trade Mark under s 44(4).
[4] New Zealand Trade Mark Application numbers 843330 and 843331.
In consideration of the above reasons, I am satisfied that the Opponent could not reasonably have known before the filing of the Applicant’s evidence in answer that the Applicant would rely on s 44(4) of the Act. The requirements of reg 5.12(3) are satisfied.
Discretion
Reg 5.12 of the Regulations is framed in discretionary terms. The factors relevant to the Registrar’s exercise of the discretion to amend an SGP are the likely prejudice to the parties, the public interest, the nature and importance of the requested amendment, the timing of the amendment and the reasonableness of the explanation offered for the delay.[5]
[5] K-Tec, Inc v Healthy Foods, LLC [2016] ATMO 4 (Hearing Officer Richards).
With respect to the timing of the amendment request, the Applicant’s evidence in answer was filed on 10 June 2021. The amendment request was made on the 16 July 2021, during the period allowed for the Opponent to file its evidence in reply. The Opponent explained that this time was used to review the Applicant’s evidence and deal with a dispute between the parties over the submission of certain pieces of evidence. While I do not intend to canvass this evidence or discuss in detail the dispute between the parties over the admission of evidence, I note that the Applicant’s evidence in answer consists of three declarations, amounting to close to 4000 pages of material. In this context, I do not consider a delay of five weeks unreasonable or the Opponent’s explanation unsatisfactory. Furthermore, the opposition was in its evidence stages when the Opponent made the amendment request, the request was made prior to the Opponent filing its evidence in reply, and a hearing on the s 52 opposition has yet to be scheduled. While there will be a degree of prejudice involved in delaying proceedings, I do not consider the Applicant to be unduly prejudiced by the 5 week delay in making the amendment request.
I am also not convinced by the Applicant’s submission that the public interest is affected by the delay in these proceedings. Although there is certainly a public interest in ensuring proceedings are undertaken in an efficient and cost effective manner, this is not the sole public interest consideration. The existence of reg 5.12, and the various extension of time provisions reflects the necessity that oppositions proceedings be flexible and adaptable to changes in circumstances. As noted by the Opponent, there is also a public interest in ensuring the accuracy of the Register and that all relevant information is put before the delegate.
For completeness, I note that the proposed ground has been satisfactorily particularised.
Having regard to all the relevant circumstances, I consider that it is appropriate to exercise the discretion under reg 5.12 of the Regulations to allow the request to amend the SGP.
Decision
I am satisfied that the Opponent’s request to amend the SGP should be granted. Accordingly, under reg 5.12 of the Regulations I direct that the SGP be amended to add s 58A as a ground of opposition. As required by reg 5.12(4), a copy of the amended SGP should be provided to the Applicant. The opposition should then proceed in accordance with Part 5 of the Regulations.
Costs
Both parties sought costs. As the Applicant was not successful in its objection to the request to amend the SGP, I award costs against the Applicant under section 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations.
Timothy Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
4 March 2022

Delegate:	Timothy Brown
Representation:	Opponent: Stephen Rebikoff of counsel, instructed by Davies Collison Cave Pty Ltd Applicant: David Larish of counsel, instructed by Kings & Wood Mallesons
Decision:	2022 ATMO 31 Trade Marks Regulation 1995 (Cth) reg 5.12 – request to amend statement of grounds and particulars to add section 58A – request allowed – statement of grounds and particulars amended.

[2022] ATMO 31

4 March 2022