Request by Fantech Pty Ltd for the Registrar of Trade Marks to require production of documents

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Request by Fantech Pty Ltd for the Registrar of Trade Marks to require production of documents

Delegate:

Adrian Richards

Representation:

Requestor: Warwick Rothnie, Counsel, instructed by Piper Alderman.

Decision:

2025 ATMO 46

Trade Marks Act 1995 (Cth) – s 202(c) – Notice to Produce documents – whether documents sought have apparent relevance – whether request is for production or de facto discovery – whether request is a fishing expedition – request to issue Notice to Produce refused.

Background

This decision is in respect of a request by Fantech Pty Ltd (‘Requestor’) under s 202(c) of the Trade Marks Act 1995 (Cth) (‘Act’)[1] that the Registrar of Trade Marks (‘Registrar’) issue to Systemair Aktiebolag (‘TM Applicant’) a Notice to Produce documents (‘Notice’).
[1] In this decision, any references to a section or regulation are references to sections of the Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth) respectively, unless otherwise specified.
The TM Applicant applied with this office for registration of the trade mark SYSTEMAIR on 4 April 2022, resulting in trade mark application number 2260859. A delegate examining the application raised a ground for rejection under s 44, citing three registered trade marks, all of which are owned by the Requestor and are for the word SYSTEMAIRE.[2]
[2] The earliest registration, number 915223, is a series trade mark for both SYSTEMAIR and SYSTEMAIRE.
In response to the first examination report, the TM Applicant filed submissions and evidence of use of its trade mark. The submissions were contained in a letter by Gregory Pieris, the TM Applicant’s legal representative at K&L Gates, dated 4 May 2023. The evidence of use was contained in a declaration by Peter Gibson, Managing Director of Pacific Ventilation Pty Ltd (a subsidiary and distributor of the TM Applicant) dated 19 April 2023. The evidence did not satisfy the examiner that the provisions of either ss 44(3) or 44(4) could be applied. The second examination report stated:
The evidence establishes that the mark was first used in Australia 24.11.1999 with the submission of an invoice.
You will need to demonstrate continuous use since then to allow the provisions of s44(4) prior continuous use to be applied.
Invoices, or examples of dated advertising showing the trade mark in use, in trade, a couple of times a year from 1999 to the time of filing will suffice.
The evidence you have submitted so far mainly consists of brochures showing the goods. This does not establish use in trade.
It appears you would have access to the type of evidence required given the sales figures provided.
In response to the second examination report, the TM Applicant filed further submissions and further evidence of use in the form of declarations by Rachael Sparnon-Freeman (National Sales Manager of Pacific Ventilation Pty Ltd) dated 14 March 2024 and Gregory Pieris dated 15 March 2024.
The application was accepted, and advertised as such on 23 April 2024, with the following endorsement:
Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
The endorsement reflects that the examiner was satisfied the trade mark had been used prior to the priority dates of the Requestor’s cited trade mark registrations, and that the use had been continuous up to the priority date of the TM Applicant’s trade mark.
The Requestor then requested access to the declarations and submissions relied upon by the TM Applicant to establish prior continuous use under the Freedom of Information Act 1982 (Cth) (‘FOI’). The Requestor was provided with copies of the three declarations and the submissions, however the invoices and sales data, and statements regarding an alleged confidential business model were redacted on the basis of an objection by the TM Applicant that the information was confidential.[3] I note that, while certain documents may be obtained by third parties directly under the document sales provisions of the trade marks legislation, documents relating to evidence of use of a trade mark are specifically exempted from that regime.[4] So neither the trade marks document sales provisions nor FOI were able make the documents held by this office available to the Requestor in full.
[3] The declaration of Gregory Pieris was provided in full, none of the information being deemed confidential and, as alleged by the Requestor, immaterial to the finding of prior continuous use under s 44(4).
[4] Trade Marks Regulations 1995 (Cth) reg 21.11A(2)(d).
The Requestor also opposed registration of the trade mark by filing a Notice of Intention to Oppose registration on 24 June 2024 followed by a Statement of Grounds and Particulars (‘SGP’) on 24 July 2024. This is why, in several quoted sections of text below, the Requestor is instead be referred to as the Opponent. The SGP nominated grounds of opposition under ss 44, 58A, 60, 58, 42(b), 62(b) and 62A.
On 8 August 2024 the Requestor requested issuance of the Notice under s 202(c), asking that this office require the TM Applicant produce unredacted copies of the declarations by Peter Gibson and Rachael Sparnon-Freeman and the submissions of Gregory Pieris of K&L Gates dated 4 May 2023 (‘the Request’). At this point the Requestor had not filed any evidence in the opposition nor had the TM Applicant filed a Notice of Intention to Defend its trade mark application.
The Request was made on the following basis:
Having regard to the objections raised in the two Adverse Examination Reports, the matters addressed in the redacted parts of the documents were plainly directly relevant and material to overcoming the objections raised by the Examiner.
As the opponent to the registration of the Trade Mark and the owner of the trade marks cited against the Application, the Opponent has a direct and material stake in the outcome of the Opposition.
In prosecuting the Opposition, it is not possible for the Opponent to assess practically the basis on which the Application has been accepted or properly prepare evidence in support of the Opposition without being able to review the materials relied on by the Examiner in accepting the Application on the alleged ground of continuous prior use or the alternatively argued honest concurrent user.
A Deputy Registrar of Trade Marks responded on 27 August 2024, indicating her intention to refuse to issue the Notice on the basis that:
The proceedings are still in their infancy with the Applicant’s Notice of Intention to Defend the application due by 30 August 2024. There has been no opportunity for the Opponent to seek to establish its grounds of opposition and for the Applicant to respond to any evidence led by the Opponent. In this context, requesting that the Applicant produce documents to the Registrar before the Opponent has filed any evidence is not reasonable or relevant. The Opponent bears the onus to establish its opposition. It should not be seeking to reverse that onus before any evidence has been filed. To this end, the Opponent is reminded that a notice to produce is not intended to be a de facto discovery process.
Accordingly, it is not appropriate that the proposed notice be issued.
The Requestor was afforded the opportunity to be heard regarding this intended refusal to issue the Notice. It sought an oral hearing, and that hearing took place before Nicole Worth, Hearing Officer and a delegate of the Registrar of Trade Marks, on 2 December 2024. Warwick Rothnie of Counsel, instructed by Tim Clark and Jamin Li of Piper Alderman, made oral and written submissions on behalf of the Requestor.
The TM Applicant has in the meantime filed its Notice of Intention to Defend its trade mark application and the parties have been granted a cooling-off period, due to expire 11 April 2025 unless discontinued by either or both of the parties before then.
The matter was later given to me, also a delegate of the Registrar of Trade Marks, to review the relevant material and decide. In reaching my decision, I have reviewed the hearing recording, and all of the documentation filed by the Requestor in relation to this matter.
Discussion
Among other things, the Registrar has delegated to me the power to require the production of documents. The source of this power is found in s 202(c):
Registrar’s powers
The Registrar may, for the purposes of this Act:
…
(c) require the production of documents…
The power is coercive. Failure to comply with a requirement to produce documents is a crime of strict liability,[5] punishable by fine.[6] The exercise of this power is discretionary. There are no express limitations on what I may consider in determining the appropriateness of exercising the power, except that it be ‘for the purposes of the Act’. Here the documents are requested in the context of s 52 opposition proceedings, and so I have considered the purpose and relevance of those documents to those proceedings. The level of relevance required for present purposes has been described as ‘adjectival’, and not ‘substantive’. In other words, the question is whether the documents sought could be relevant to the opposition proceedings, rather than would be relevant.
[5] Section 153(3).
[6] Section 153(2).
Additionally, as noted in the IP Australia Trade Marks Manual of Practice and Procedures (‘Manual’),[7] the power is in relation to ‘production’ and not ‘discovery’ and so the I must be satisfied that the Request is not a de facto request for discovery.
[7] Part 53.1.
In principle relevance
Before issuing a notice to produce documents, the I must be satisfied that what is sought is relevant to the proceedings. Relevance in this context does not mean that each documents is definitely relevant, but that there is a reasonable basis for concluding that it could be relevant (or, apparently relevant). The principles of apparent relevance were explained in the Full Court of the Federal Court of Australia as follows:
Although the parties referred to several authorities concerning the requirement for subpoenaed documents to have apparent relevance to an issue in a proceeding, in our opinion, the applicable principles are well established. The party issuing a subpoena bears the onus of demonstrating that the subpoena has a legitimate forensic purpose in relation to the issues in the proceedings … A subpoena may be set aside if it requires the production of documents which do not have apparent relevance to the issues arising on the pleadings … Other cases have used different terminology, but with essentially the same effect, for example, by requiring that, viewed realistically, the documents sought have a bearing on an issue which is not unreal, fanciful or speculative, or that the material sought is reasonably likely to add in some way to the relevant evidence in the case, or that it be “on the cards” that the documents sought will materially assist the party at whose request the subpoena has been issued…[8]
[8] Wong v Sklavos [2014] FCAFC 120, [12] (Jacobson, White and Gleeson JJ) (citations omitted).
The court’s guidance as to relevance must be treated with caution in the present context. That is, while a court can refer to pleadings to decide whether a document sought has apparent relevance to ‘issues arising on the pleadings’, no similar point of reference exists in opposition proceedings (at least while they are before this office). The nearest approximation to pleadings in the present opposition process is the SGP. Indeed, submissions from the Requestor sought to equate the SGP to pleadings. However, there are several aspects of an SGP which readily distinguish it from pleadings. The purpose of pleadings is to define the issues in dispute as between the parties. In contrast, the SGP merely outlines the basis of the Requestor’s case. Thus, the process for pleadings is inter partes, while an SGP is essentially ex parte. There are, for instance no ways that the TM Applicant might to object to, or seek to strike out, aspects of the Requestor’s SGP, nor is there provision for the TM Applicant to file a defence. As such, it would be unjust to look only to the SGP, as if it were pleadings, for guidance as to whether an issue arises or not, since the Requestor had significant latitude as to what is or is not in the SGP, and the TM Applicant had none whatsoever. So while the courts have a fairly confined set of materials to review in this situation, in my view, I must look across the entirety of the materials filed in the proceedings to try to form a view as to ‘the issues arising’.
I return now to the question of whether the unredacted declarations of Peter Gibson and Rachael Sparnon-Freeman and the submissions dated 4 May 2023 of Gregory Pieris of K&L Gates could have bearing on the opposition which is not unreal, fanciful or speculative. The Requestor contends that:
[T]he documents being sought relate to the Invoices and Sales Data in the context of the business model submitted as evidence by Systemair AB [the TM Applicant] in response to the First Adverse Report and Second Adverse Report. These matters go to the very heart of both the basis upon which the Examiner accepted the Opposed Mark for registration under section 44(4) of the Trade Marks Act and, as a result, at least the two grounds of opposition of Fantech [the Requestor] under sections 44 and 62(b) of the Trade Marks Act;
[I]t is not possible for Fantech to meaningfully advance either of these two grounds of opposition through the provision of appropriate Evidence in Support (including Evidence in Support to either contradict the Invoices and Sales Data or in support of an alternative inference being drawn from those documents) without having first had access to the documents being sought.[9]
[9] Requestor’s written submissions for the hearing, [25.1]-[25.2].
In respect of those grounds, the SGP provides the following particulars:
Earlier similar trade mark(s) applied for with this office (s44/reg 4.15A)
915223, 1671045, 2055891
The application was accepted due to some falsehood (s62(b))
Australian Trade Mark Number 2260859 for SYSTEMAIR (the “Opposed Application”) was accepted on the basis of the Applicant making submissions and submitting evidence alleging that the Applicant has been continuously using the trade mark the subject of the Opposed Application prior to the earliest priority date of the Opponent’s Marks, being 5 June 2002 (“Opponent’s Priority Date”).
The Applicant relied on the following Declarations to demonstrate the purported continuous use of the trade mark the subject of the Opposed Application commencing prior to the Opponent’s Priority Date:
(a) Declaration of Peter Gibson dated 19 April 2023 (“Gibson Declaration”);
(b) Declaration of Rachael Sparnon-Freeman dated 14 March 2024 (“Sparnon-Freeman”); and
(c) Declaration of Gregory Pieris dated 15 March 2024 (“Pieris Declaration”).
The Gibson Declaration was filed in response to an Adverse Examination Report dated 29 April 2022 citing the Opponent’s Marks.
Following the filing of the Gibson Declaration and the submissions by K & L Gates dated 4 May 2023, the Registrar through the Examiner stated in the Adverse Examination Further Report dated 30 May 2023:
“The evidence establishes that the mark was first used in Australia 24.11.1999 with the submission of an invoice.
You will need to demonstrate continuous use since then to allow the provisions of s44(4) prior continuous use to be applied.
Invoices, or examples of dated advertising showing the trade mark in use, in trade, a couple of times a year from 1999 to the time of filing will suffice.
The evidence you have submitted so far mainly consists of brochures showing the goods. This does not establish use in trade. ….”
In response, the Applicant filed the Sparnon-Freeman Declaration and the Pieris Declaration and further written submissions on 25 March 2024 purporting to provide evidence to the Registrar showing that the Applicant had been continuously using the trade mark in Australia since 1999.
Following receipt of these further declarations and submissions, the Registrar accepted the application with an endorsement that “provisions subsection 44(4) and/or Reg. 4.15A(5) applied”.
The submissions of the Applicant dated 4 May 2023 and 25 March 2024 (“Submissions”) and the evidence supplied as part of the Gibson Declaration, Sparnon-Freeman Declaration and Pieris Declaration (“Declarations”):
(a) misrepresented (including by omission) the actual nature of use of the trade mark the subject of the Opposed Application in Australia in respect of the Applicant’s goods purportedly sold and distributed in Australia including the extent to which the Applicant rebranded the Applicant’s goods in Australia; and
(b) did not disclose to the Registrar that, if one or more of them had been using the trade mark in Australia, the Applicant or its related bodies corporate or authorised users ceased use of and abandoned the trade mark in response to infringement allegations by the Opponent including:
(i) letter sent from J P Mackenzie Barristers & Solicitors dated 12 December 2007 and letter from Piper Alderman to J P Mackenzie dated 17 December 2007;
(ii) letters between Piper Alderman and Kahns Lawyers (for Matthew & Yates Australia Pty Ltd (the Applicant’s wholly owned subsidiary) and CFM Fans Pty Ltd) in 2012;
(iii) letters between Macpherson Kelley (for the Opponent) and Pacific Ventilation Pty Ltd in September 2019; and
(iv) letters between Piper Alderman and K & L Gates (for Pacific Ventilation Pty Ltd) in July / August 2021.
On the basis of the Submissions and the Declarations, the Registrar has accepted the application for registration of the Opposed Application on the basis of evidence or representations that were false in material particulars.
Further and better particulars may be provided in the Evidence in Support.
The Requestor contends under s 58A of the SGP that it used its trade marks first, since 1987. It also contends under s 62A that the TM Applicant or its wholly owned subsidiary had made three previous attempts to register trade marks containing or consisting of SYSTEMAIR which failed in the face of the Requestor’s registrations, and that the TM Applicant had previously represented to the Requestor that it was not using and did not intend to use its trade marks in Australia (and should this change it would notify the Requestor).
As alluded earlier, the particulars in the SGP necessarily do not rise above allegations. However, they contend circumstances which could make the nature of the TM Applicant’s evidenced use a relevant issue. For example, the TM Applicant has previously attempted to register trade marks which have drawn objection under s 44 but did not in those cases seek to establish prior, continuous use (nor any other circumstances set out in ss 44(3) or (4)) in relation to any of them. The barrier posed by the Requestor’s registrations has remained unchanged between those previous applications and the present application. The Requestor’s earliest registration predates all of the TM Applicant’s attempts at registration. This is all in the context of communications having allegedly taken place between the parties which, according to the Requestor, gave rise to a belief that the TM Applicant had ceased using its trade mark in Australia, and that it would notify the Requestor if that position changed. At least two possibilities arise from that history: either this evidence of prior and continuous use always existed (but had perhaps for some reason never previously been marshalled and deployed), or the evidence presented to the examiner did not actually establish prior and continuous use.
In the abstract, it could therefore arguably be relevant to see the way in which the TM Applicant was suddenly able to show continuous use from before the priority date of the Requestor’s earliest registration. The invoices, sales data and information about the TM Applicant’s business model, which are contained within the information sought, are indeed likely to shed light on this. The invoices and sales data are likely to demonstrate when sales took place and their extent, whether they were in Australia, and whether they were to a distributor or other type of customer. Information regarding the business model may illuminate the circumstances of any alleged rebranding, or whether some other commercial arrangement affects to whom the benefit of use may inure.

I consider that, on the allegation contained in the SGP alone, there is of course a potential question raised in respect of the evidence and submissions which led to the acceptance of the subject trade mark application on the basis of prior continuous use. As such, the requirement of adjectival relevance is at least in theory capable of being met. However, for reasons that follow, in substance, it has not been.
Production or de facto discovery
Part 54.3.2 of the Manual states in respect of production and discovery:
Production. In England the High Court has power to order a party to produce any documents relating to the matter in issue, or to produce any documents for the inspection of another party.
Discovery. The process by which parties to a civil cause in England may, within limits, obtain information of the existence and contents of all documents relevant to the matters in dispute between them. The object is to elicit documents before the trial so as to eliminate surprise at the trial and promote fair disposal of the case.
In court proceedings it is common to order discovery to find out what documents exist, and to order production to enable inspection of relevant documents. However, the Registrar is only empowered to order production, and the documents to be produced must therefore be identified with a degree of particularity. While this does not necessarily require the identification of individual documents, the nature of the documents being sought must be clearly specified.
The matter of whether a subpoena amounted to a request for discovery was considered in Commissioner for Railways v Small wherein Jordan CJ stated:
Where the subpoena is addressed to a party, it is still necessary that it should state with reasonable particularity the documents which are to be produced … a party is no more entitled to use a subpoena duces tecum than he is a summons for interrogatories, for the purpose of ‘fishing’, ie, endeavouring, not to obtain evidence to support his case, but to discover whether he has a case at all: Hennessy v Wright 24 QBD 445 at 448, or to discover the nature of the other side’s evidence.[10]
[10] (1938) 38 SR(NSW) 564, 574-5 cited in Australian Competition and Consumer Commission v Shell Co of Australia Ltd [1999] FCA 212, [48] (Cooper J).
Similarly, Southern Pacific Hotel Services Inc v Southern Pacific Hotel Corporation Ltd; Kirby v Southern Pacific Hotel Corporation Ltd dealt also with whether a subpoena was tantamount to discovery. In that case, Clarke J observed that:
A subpoena which imposes upon a stranger the task of forming a judgment as to whether a document or documents relates or relate to issues between the litigants imposes an obligation upon the stranger tantamount to discovery and is, for that reason, an abuse of process.[11]
[11] [1984] 1 NSWLR 710, 718 (‘Southern Pacific’).
Here, there is no burden upon the TM Applicant to search for and form a judgment regarding the relevance of documents within its possession or control. The documents sought to be produced are precisely defined. So this is plainly a request for documents, not a de facto attempt at discovery.
Shifting onus and timing
As to the suggestion in the Deputy Registrar’s letter that the Request may in some way seek to shift an onus onto the TM Applicant, this is also plainly not the case. The production of the documents sought in the Notice would not require the TM Applicant to prove anything (aside, of course, from a reasonable excuse the TM Applicant does not produce the documents). The onus of establishing the opposition remains with the Requestor. It would be the Requestor’s task to show what, if anything, is established by the documents sought.
In relation to the timing of the Request, such requests may in theory be made at early stages of proceedings or before evidence has been filed by a party, as reflected in the following:
The practice of requiring a party to make subpoenas returnable days, weeks or months before the trial, as is appropriate, has been followed by judges administering the Commercial List for many years. It is a practice designed to further the ends of justice, in particular by avoiding the time wasting and distractions during the trial involved in dealing with objections, sometimes lengthy, to the production of documents. It is also designed to minimize the need for amendments of pleadings, for wasteful adjournments, and overall to enable the Commercial Court to carry out its task of providing an expeditious hearing of commercial disputes. This is an important service to the commercial community and the judges involved are ever anxious to institute appropriate procedures to ensure both an expeditious hearing and one conducted with the minimum of time wasting and consequent cost.[12]
The applicants' suggested rule imposes a requirement that, to avoid the stigma of fishing, a party must already be in possession of some evidence before issuing a notice to produce (or, presumably, any other compulsive interlocutory process). But historically the concept of fishing was not concerned with the prior possession of evidence but rather that there was a prior pleading which raised issues for which the evidence sought by the process would be relevant. [13]
[12] Ibid 716.
[13] Bailey v Beagle Management Pty Ltd [2001] FCA 60, [28] (Heerey, Branson and Merkel JJ).
When the Deputy Registrar first issued her intention to refuse to issue the Notice, the TM Applicant had yet to file a notice of intention to defend its application, and so the Request was in my view premature in the sense that there was no certainty that contested proceedings were afoot. As such, requiring production at that time would likely have been oppressive. It would, in effect, have been impose a production requirement on a stranger to inchoate proceedings.
As of writing this decision, however, the TM Applicant has filed its notice of intention to defend the application. Thus the doubt as to whether the opposition is live is removed, and the TM Applicant has been made a party to the opposition proceedings. Otherwise, I see no general issue with the timing of the Request. However, as my later discussion suggests, on the specific facts of this matter, it strikes that the Request may have been better supported had evidence in support, and likely also evidence in answer, already been filed.
Fishing and relevance
As foreshadowed, the substance of the Request bears further discussion. Returning to the concept of fishing:
A "fishing expedition", in the sense in which the phrase has been used in the law, means, as I understand it, that a person who has no evidence that fish of a particular kind are in a pool desires to be at liberty to drag it for the purpose of finding out whether there are any there or not.[14]
[14] Associated Dominion Assurance Society Pty Limited v Sir John Fairfax & Sons Limited (1952) 72 WN (NSW) 250, 254 (Owen J).
In its SGP, the Requestor alleges, among other things, that the TM Applicant misrepresented to the examiner the actual use of the trade mark. Yet on requesting the issuance of a notice to produce, recall that the Requestor stated (my emphasis):
it is not possible for the Opponent to assess practically the basis on which the Application has been accepted or properly prepare evidence in support of the Opposition without being able to review the materials relied on by the Examiner in accepting the Application on the alleged ground of continuous prior use or the alternatively argued honest concurrent user
That is, the Requestor appears to suggest it is currently not in possession of any material that might suggest whether such a misrepresentation occurred or not. Similarly, in its written submissions the Requestor stated (my emphasis):
it is not possible for Fantech to meaningfully advance either of these two grounds of opposition through the provision of appropriate Evidence in Support (including Evidence in Support to either contradict the Invoices and Sales Data or in support of an alternative inference being drawn from those documents) without having first had access to the documents being sought;
This all suggests, at least in relation to the s 62(b) ground, that the allegation in the SGP will remain mere allegation unless these documents are produced. This strikes as a clear example of attempting to use the coercive powers in s 202 to embark on a fishing expedition. That is, for s 62(b), the Requestor seeks these documents, ‘not to obtain evidence to support his case, but to discover whether he has a case at all’.[15] As such, the TM Applicant’s evidence of use of the trade mark submitted during examination is not relevant (be it adjectival or otherwise) to any issue in the present proceedings. Other than relying on the fact of the acceptance under s 44(4) of the trade mark application itself, the Requestor has offered up none of its own facts that might support its assertions, indeed, the Requestor has not filed evidence in these proceedings at all yet. The fact of acceptance does not itself give rise to a serious question of false particulars, even in combination with the TM Applicant’s filing history as outlined by the Requestor.
[15] Commissioner for Railways v Small (1938) 38 SR (NSW) 564, 575 (Jordan CJ).
The SGP also alleges that the TM Applicant has abandoned the Trade Mark, and suggests the Requestor holds some evidence, such that mention of possible abandonment could be gleaned from correspondence that the Requestor or its representatives have exchanged with the TM Applicant. This might have potentially formed the basis for a (perhaps more confined) request to require production. But, since none of this alleged correspondence is in evidence in these proceedings, I am left with only the Requestor’s allegations, and as such no concrete basis, upon which to found a view as to relevance to any of the grounds of opposition.
Insofar as the Requestor suggests that this material will be crucial to its case under s 44 for the purposes of its evidence in support, why this might be was left unclear. The Requestor of course bears the onus to establish a ground of opposition, including s 44. However, presuming that the Requestor has already nominated at least one prior mark that satisfies either or both of ss 44(1)-(2) (which it should have included in its SGP), it is possible that the TM Applicant (in its evidence in answer) may choose to lead evidence in respect of matters contemplated by ss 44(3) or (4). If, at that stage of the proceedings, the Requestor considers the TM Applicant’s evidence in answer to be wanting, then the Requestor may lead evidence in reply or point out the deficiencies when it makes its substantive submissions on the opposition. Further, if the TM Applicant’s evidence does indeed apparently satisfy s 44(4), the Requestor can then file evidence in reply showing even earlier use, for example, under s 58A.
At least in relation to the s 44 ground, it appears that the Requestor has taken the view that it needs to respond to evidence that has not been (and indeed might never be) led by the TM Applicant. Some of the Requestor’s submissions indicate that it is concerned that the Hearing Officer in the substantive opposition might decide to take into account evidence filed with the examiner. This is to assume that a blatant breach of the fair hearing rule will occur. Hearing Officers are trained to comply with administrative law norms, including procedural fairness. Indeed, this is why in this opposition (and in every other), this office will put the TM Applicant on notice that if it wants to rely on its evidence filed during examination, then it will need to refile it as part of its evidence in answer. This advice has not been provided to the TM Applicant in these proceedings just yet, as it appears in the letters acknowledging the filing of the Requestor’s evidence in support and inviting the ATM pplicant to file its evidence in answer. In any case, supposing there might be a breach of the fair hearing rule is no basis on which to exert a coercive power.
Turning also briefly to the s 62A ground, the Requestor’s submissions at the hearing suggested that this ground too offered some basis for requiring the production of the documents sought. The Requestor says the TM Applicant offered it certain undertakings that it would, among other things, not use the subject mark in Australia. This submission suggests that an offering up of those invoices that were redacted as part of the FOI process, might also provide some basis on which the application was filed in bad faith. How that might work in practice is unclear. Evidence, for example, of historical trade mark use as was apparently looked at by the examiner would not normally inform as to the motives for filing the application. At any rate, in the absence of any actual evidence from the Requestor, this looks like an attempt to discover whether there is some basis (or perhaps a further basis) for this ground of opposition.
In sum, if no evidence of use is filed by the TM Applicant in these proceedings, then it quite obviously runs the risk that s 44 may be established without any potential escape via ss 44(3)-(4). If the TM Applicant choses to file said evidence, and it has the problems that the Requestor anticipates it may have, then the Requestor will be free to file evidence in reply and/or submissions that highlight those deficiencies. In either case, both parties will have had ample opportunity to contest this aspect of the proceedings on their merits. That the Requestor thinks the TM Applicant might file evidence of use in relation to the s 44 ground, and that the evidence may not satisfy s 44(4) provides me with no basis upon which to found any fact that might justify that I require the Applicant to open up its own records so that the Requestor might begin to evaluate its prospects under s 62(b), s 62A or some other free-standing ground of opposition.
Other matters
The information contained within the redacted parts of the documents sought is claimed by the TM Applicant to be confidential. I note that the Requestor states in the Request that it agrees to receive the information properly identified as confidential on the basis that it is restricted to those persons (including the Requestor’s external lawyers) who reasonably need to see it for the purposes of the opposition. I bear in mind also that in weighing the competing private interests of the TM Applicant with the public interest in the due administration of justice, particularly that all relevant material is available to the parties to advance their cases, it is the latter concern which is predominant.[16]
[16] Southern Pacific (n 9) 720.
I note also that the Requestor undertakes to pay the reasonable expenses of the TM Applicant in producing the requested documents.
Additionally, whilst the Requestor is already in possession of the documents with redactions, it seeks whole unredacted copies on the basis of simplicity and convenience - some of the documents being in the order of several hundred pages long.
While each of these other matters are generally supportive of the issuance of the Notice, they do not outweigh the fishing and relevance issues discussed above.
Decision
For the reasons given above, I am not satisfied that it would be appropriate to issue the Notice.
Adrian Richards
Supervising Hearing Officer
Delegate of the Registrar of Trade Marks
3 March 2025

[2025] ATMO 46

3 March 2025

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Civil Procedure

Legal Concepts

Discovery

Procedural Fairness

Jurisdiction

Statutory Construction