Retimans (Canada) Ltd v Hachette Filipacchi Presse

[2016] ATMO 54

TRADE MARKS ACT 1995

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

Re:Request to file additional evidence in oppositions by Hachette Filipacchi Presse to applications under section 92 of the Act by Reitmans (Canada) Limited to remove trade mark numbers 514899, 681214, 1000270 (3, 9, 16, 18, 25, 21, 25, 35, 41, 42) - ELLE - in the name of Hachette Filipacchi Presse

Delegate:

Nicole Worth

Representation:

Opponent: Blake Knowles of Cullens Patent & Trade Mark Attorneys

Applicant: Peter Le Guay of Thomson Geer Lawyers

Decision:

2016 ATMO 54

Regulation 21.19 of the Trade Marks Regulations 1995 – request to file additional evidence under reg 21.19 – not reasonable to exercise discretion – request refused.

Background

1. Hachette Filipacchi Presse (‘the Removal Opponent’) has requested under reg 21.19 of the Trade Marks Regulations 1995 (‘the Regulations’) that additional evidence be considered in removal proceedings involving three of its registered trade marks. Summarised details of the registered trade marks are below.

Registration No. 514899	Registration No. 681214	Registration No. 1000270
Classes: 18, 20, 21, 25, 35, 41, 42	Class: 25	Classes: 3, 9, 16, 18, 25
Registered from: 14 July 1989	Registered from: 14 July 1989	Registered from: 3 May 2004

1. The procedural history of the removal proceedings is as follows.

2. On 9 October 2013 Reitmans (Canada) Limited (‘the Removal Applicant’) filed applications under s 92 of the Trade Marks Act 1995 (‘the Act’) to remove the above three registrations for all of the goods and services in respect of which they are registered. The Removal Opponent filed notices of intention to oppose removal and statements particularizing the grounds upon which removal was opposed. Thereafter the parties agreed to a cooling off period, which was extended per reg 5.16(3). Removal proceedings recommenced with the Removal Applicant filing notices of intention to defend the removal request on 19 January 2015.

3. On 29 April 2015, 30 April 2015 and 1 May 2015 the Removal Opponent filed evidence in support of each of the registrations. Parts of that evidence are in French, in particular a document described as a licensing agreement between the Removal Opponent and another entity which used the registered trade marks under license in Australia; however no translation was provided.

4. A delegate of the Registrar informed the Removal Opponent on 8 May 2015 that any documents in French required an English translation, and that as the deadline for filing evidence had passed it would need to seek an extension of time to submit the translations. The Removal Opponent responded that it was seeking instructions regarding translation of the documents, but also that it should not require an extension of time for this purpose because an English translation would in itself only be an aid to the interpretation of existing evidence and no new evidence would be filed. A delegate of the Registrar responded on 21 May 2015 that per reg 21.18 a translation was indeed required. The delegate reiterated that the Removal Opponent should seek an extension of time, otherwise the Removal Opponent could request the Registrar to exercise her discretion under reg 21.19 once the translations were filed, noting that whether the material would be taken into account would be at the Registrar’s discretion.

5. No translation was forthcoming in the remaining evidence stages. I note that the Removal Applicant sough an extension of time to file part of its evidence in answer on the basis that it had anticipated a translation would be filed and so had not completed its evidence. The extension request was refused on the basis that the Removal Applicant could nonetheless have completed its response to the evidence that was in English. No mention was made of the translation during the evidence in reply stage. At the end of the evidence stages the Removal Applicant requested that the matters proceed to hearing.

6. In the meantime, a matter regarding opposition to registration was afoot between the parties (in relation to the Removal Applicant’s application to register the words ADDITION ELLE in respect of clothing). That matter was allocated to me and in response to a request from the Removal Applicant, I indicated that I intended hear that matter together with these removal actions on the basis that the removal actions had the potential to affect the outcome of the opposition to registration, and all the matters had completed the evidence stages. The hearing was eventually scheduled to take place on 23 August 2016. In the process of allowing the parties to comment upon my intended direction to hear the matters together, the Removal Applicant indicated that it considered the Removal Opponent’s evidence allegedly demonstrating use of the registrations was highly questionable. It indicated that evidence would be the subject of substantial argument in terms of relevancy and scope, in particular because the alleged use was based upon a licensing agreement in French for which no English translation had been provided.

7. On 13 May 2016, the Removal Opponent filed a translation of the French licensing agreement (and a certificate of verification) and requested that it be considered under reg 21.19.

8. On 23 May 2016 I indicated that I did not intend to allow the translation into proceedings as the Removal Opponent had not established that the exercise of the discretion under reg 21.19 was reasonable. I indicated that the Removal Opponent could request to be heard on the 21.19 request, otherwise I would assume it to be resolved.

9. The Removal Opponent disputed that the 21.19 request should be subject to a hearing separate from that of the substantive matter, and reiterated that the translation ought to be allowed.

10. I confirmed that the 21.19 request would be dealt with prior to the substantive hearing, and that, in the interests of efficiency, the hearing of the 21.19 request would be held by way of written submissions if the Removal Opponent pursued its request to be heard. This would allow time for a decision to issue well in advance of the substantive hearing. I reiterated my reasons for not allowing the translation.

11. The Removal Opponent confirmed it wished to be heard and filed its written submissions on 24 June 2016. The Removal Applicant was afforded the opportunity to make representations about the 21.19 matter, which it did on 30 June 2016. Thus no oral hearing took place but rather the hearing took place by way of written submissions, and it is now incumbent upon me to issue my decision.

The Law

1. Regulation 21.19 provides:

   Registrar may use information available

   (1)If:

   (a)    information that is available to the Registrar is relevant to proceedings before the Registrar; and

   (b)    the Registrar has reason to believe that the information is not known to a party to the proceedings; and

   (c)the Registrar proposes to take the information into account in making a decision in the proceedings;

   before making the decision the Registrar must:

   (d)    provide the information to the party; and

   (e)    give the party a reasonable opportunity to make representations about the information.

   (2)For the purposes of paragraph (1)(e) the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

2. The delegate in Fed Square Pty Ltd v Federation IP Pty Ltd (‘Fed Square’) [2015] ATMO 42 summarised at [35]-[40] the effect of reg 21.19 post legislative amendments to the Act and Regulations in 2013:

   Regulation 21.19 has been present as it appears in the Regulations since the commencement of the Trade Marks Regulations 1995 (Cth). The application of 21.19 is discretionary, allowing the Registrar of Trade Marks on her own initiative to take into account information available to her, but it does not require the Registrar to do so. A party cannot compel the Registrar in this regard. In addition, it is not sufficient to highlight that the material is relevant to proceedings - the Registrar still has to decide whether or not to take the information into account in making the substantive decision.

   …

   Under the current legislation, where there are no further evidence provisions, there is reduced evidence in reply stage and there are more rigorous requirements for extensions of time, it was anticipated that regulation 21.19 may play a different role in trade mark oppositions than it had in the past. I refer to the particular wording in the Explanatory Statement to the ‘Raising the Bar’ amendments[1] which states (my emphasis):

   Current regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. Following the restructuring of the Trade Marks Regulations by item 11, the Registrar will still have the discretion to consider whether the information is relevant and whether it should be taken into account. However, it is not intended that the provisions of current regulation 21.19 be used as a substitute for the repealed further evidence provisions.

   …

   The clear intention is that Regulation 21.19 should not be interpreted as a substitute for the repealed further evidence provisions. The fact that prior to the ‘Raising the Bar’ amendments Regulation 21.19 existed concurrently with the further evidence provisions affirms that the original intent of the regulation was to stand apart from the regular evidence stages of the opposition. Parties should not assume an entitlement to the application of Regulation 21.19 and the presence of an evidence stage appropriate for that material will not assist the party applying.

   [Footnotes original]

   [1] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) page 29.

3. The delegate also cautioned at [54]:

   Parties should not attempt to circumvent the extension of time provisions under the misguided assumption that Regulation 21.19 will apply in every case. Furthermore, while it is available to parties, it is clear that Regulation 21.19 should not be perceived or used as a substitute for the now repealed provisions allowing for the filing of further evidence (or, indeed any available evidence stage)…

   The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account.

4. I note also the delegate in TWG Tea Company Pte. Ltd v Tsit Wing International Company Limited (‘TWG’) [2015] ATMO 64 remarked:

   I have stated elsewhere[2] that a serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision.[3] This principle remains undiminished and is a potent factor to be weighed into the balance whenever a Registrar’s delegate exercises discretion under the legislation that has the potential to exclude evidence crucial to an opposition outcome.[4]

   [Footnotes original]

She too cautioned:

I am reluctant to accede without protest to an unsettling assumption that appears to have been made here by both parties. This is the assumption that, post commencement in April 2013[5] of stricter extension of time for evidence provisions as well as the removal of formal further evidence provisions, regulation 21.19 might almost be a given to assist in ‘wrapping up loose ends’ at the time an opposition comes before a hearing officer. Emphatically, opposing parties who intend to rely on such an assumption will do so at their peril. There remains an indisputable onus upon a party submitting evidence to exercise careful oversight of that process at all times. If the onus is properly met, there will be far fewer cases of omission such as those before me here. And oppositions should arrive at the end of the process in a properly organized state, with all parties clear about what evidence is safely in and what is in dispute, and if so, exactly why.

[2] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd (‘AgCare’) [2015] ATMO 7 (29 January 2015), para 40.

[3] Studio SrL v Buying Systems (Aust) Pty Ltd (‘Studio’) [1992] AIPC 90-858.

[4] See also Seven Network (Operations) Limited v Giorgio Armani SPA, Milan, Swiss Branch Mendrisio [2013] ATMO 70 (29 August 2013), para 16.

[5] By the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1).

1. Lastly, I bear in mind the comments of the High Court in Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 130 at [22] that:

   [T]he legislative scheme reveals a concern with the condition of the Register of Trade Marks. It is a concern that it have ‘integrity’ and that it be ‘pure’. It is a ‘public mischief’ if the Register is not pure, for there is ‘public interest in [its] purity’. The concern and the public interest, viewed from the angle of consumers, is to ensure that the Register is maintained as an accurate record of marks which perform their statutory function – to indicate the trade origins of the goods to which it is intended that they be applied.

   [Footnotes omitted].

2. Thus the exercise of the discretion under 21.19 must balance the private interests of the parties with the public interests in efficiency of proceedings and integrity of the Register.

Discussion

1. The Removal Opponent submits that the decision to exercise the discretion should be informed by the overarching purpose of Part 9 of the Act, which is that unused trade marks ought to be removed from the Register in order to protect the Register’s integrity and thus the interests of consumers. As corollary to that it is submitted that if Part 9 is intended to provide for the removal of unused trade marks, then it is also intended to allow for the maintenance of trade marks that have been used. As a general principle I agree with this submission. I consider also that the context and purpose of changes made to the Act by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which came into effect in 2012 and 2013, are to be borne in mind. Those changes were intended to effect quicker and more streamlined opposition processes, including reducing the availability of extensions of time and removing provisions to file further evidence.

2. The Removal Opponent also argues that its evidence in support in each removal matter comprises declarations by an unimpeachable declarant who in very precise detail gives compelling evidence of use of the registered trade marks. The evidence includes declaratory statements as to the existence and nature of the license agreement, the license agreement written in French, invoices from the alleged licensee (‘Children’s Worldwide Fashion’ or ‘CWF’) to Australian customers, catalogues showing the products to which item numbers in the invoices correspond, and sales reports provided to the Removal Opponent from CWF.[6] (Note that this is not the entirety of the Removal Opponent’s evidence, but rather that which is most pertinent to the license agreement). To that end the Removal Opponent argues that, bearing in mind the totality of the evidence, the declaratory statements are themselves persuasive evidence of authorised use and there is no evidence that rebuts or seeks to cast doubt upon them. However, as an aid should I find it necessary, it has filed the English translation of the license agreement.

   [6] The sales reports are also in French.

3. I mention also that submissions were made to the effect that the Removal Opponent had done enough to shift the burden to the Removal Applicant to show why the discretion should not be exercised. However, a request under reg 21.19 is a matter between the Registrar and the person making the request. Although an opposing party who may be affected by the decision is afforded the opportunity to make representations, there is no burden upon it to establish a case. It is the person seeking to adduce new evidence who must establish that it is reasonable to allow it.

4. There are a number of factors to be weighed in the exercise of the discretion, relating to public interests and the private interests of the parties. Relevant to this case and as stated by the Removal Opponent they include the following:

   • The relevance and probative value of the evidence.
   • The inconvenience to the parties.
   • The public interest in having proceedings before the Registrar executed with efficiency and certainty.
   • The delay by the [Removal] Opponent since being put on notice that a translation was required.
   • The denial of an extension of time request filed by the Removal Applicant.

5. The Removal Opponent makes submissions in respect of each, and so I will likewise address each of the factors above.

The relevance and probative value of the evidence

1. Several decisions of the Trade Marks Office have noted that the relevance and probative value of evidence sought to be adduced is of significant importance (see for example the Fed Square, TWG, AgCare and Studio decisions previously cited).

2. Here the Removal Opponent’s use particularly in respect of class 25 goods is based largely upon alleged authorised use by CWF. As indicated above, the evidence pertaining to the alleged authorised use by CWF includes declaratory statements, the license agreement in French, invoices, catalogues and sales reports. The additional evidence comprises a translation into English of the license agreement (with confidential material redacted) and a verification of translation from the Removal Opponent’s French counsel. Thus the translated license agreement appears to confirm the declaratory statements made in the evidence in support. In the absence of a translation the Removal Opponent’s case relies upon the strength of the declaratory statements and potential inferences that may be drawn from exhibits other than the license agreement.

3. I consider the translated license agreement is therefore relevant to a degree. There is potential that the Removal Opponent’s case may fail without it; however it is not clear that this is certainly so. The Removal Opponent’s arguments do not assist to clarify: it argues simultaneously that the additional evidence is of high probative value because it may resolve any doubts I could have regarding its claims, but also that its evidence properly filed is compelling and persuasive in its own right. Such arguments are perhaps unsurprising given the Removal Opponent’s desire to protect its position in either eventuality. Nonetheless, in my own assessment and taking into consideration the Removal Opponent’s submissions, I find I can conclude only that the additional evidence is somewhat relevant.

The delay by the Opponent since being put on notice that a translation was required

1. The Removal Opponent explains that its evidence in support in each matter was prepared by its French counsel and received by its Australian attorneys only 1 or 2 business days prior to the due date for filing it. As a translation could not be obtained by the due date, the evidence was filed in the form provided.

2. It subsequently received advice from the Registrar that evidence not in English would require a translation. It decided at that time that, in view of what it perceived to be the strong declaratory evidence as to the existence of a license and the expense of seeking extensions of time, it would not seek an extension of time to file a translation (nor, it seems, to file a translation under reg 21.19 at or around that time). It describes this as a judgment call based on the strength of the evidence already filed.

3. It is submitted that the Removal Applicant did not subsequently file any evidence that called into question the existence of the license agreement (and had that occurred that Removal Opponent would have responded in its evidence in reply). However, in submissions relating to the scheduling of the hearings, the Removal Applicant’s attorneys indicated that it would challenge that evidence. At that point the Removal Opponent considered it appropriate to clarify the matter by filing the translated license.

1. As pointed out by the Removal Applicant, the Removal Opponent therefore made a conscious and deliberate decision not to file a translation, despite being put on notice that one was required if it wished to rely upon that evidence. It therefore chose to bear a risk, and inherent to that risk is the chance that the other party might dispute what the evidence establishes. Such an argument by the Removal Applicant here would hardly be surprising given the evidence purporting to confirm the declaratory statements is not in English. Rather it is an argument I consider would (or should) reasonably be anticipated – particularly with respect to registration 681214 which is registered only in respect of goods in class 25 (to which the licensing agreement is most pertinent).

2. Nor is this a case wherein additional evidence has been filed shortly after the relevant due date (as was the case in Fed Square). Instead, the translation is sought to be adduced over a year after the Removal Opponent was put on notice that one was required, in response to a positive indication from the Removal Applicant that the evidence was indeed the subject of a challenge and relatively shortly before the hearing.

The public interest in having proceedings before the Registrar executed with efficiency and certainty

1. The Removal Opponent acknowledges that it is in the public interest that disputes be decided with efficiency and certainty, and that parties are to be discouraged from engaging in tactical manoeuvres to prolong proceedings. However, it argues, delays in proceedings (when they occur) are an inevitable and necessary evil, and case management should not take precedence over considerations linked to the merits of a case. It submits that such an approach would amount to a false economy because it would inevitably lead to appeals and therefore greater burden upon the Commonwealth purse.

2. The Removal Opponent does not argue that the additional evidence is crucial to its case, but rather says that ‘there is no evidence to suggest that the consideration of the translated license under reg 21.19 would lead to greater inefficiency and less certainty’ and ‘if the translated license were to be considered by the delegate as being of high probative value, then its exclusion from consideration would lead to greater inefficiency and less certainty’. It submits that my preliminary indication of refusing the 21.19 request appeared to place great emphasis upon avoiding delays to the hearing on 23 August 2016, but that this should not be a decisive factor. It also argues that proceedings have already been delayed by the joining of the removal matters with the opposition to registration,[7] and the rationale for doing so (being that the ultimate outcome in this dispute reflect as far as possible the actual ownership of intellectual property rights in Australia) ought to be applied in this instance. Thus it is better for proceedings to be delayed and for a correct decision to be arrived at than for proceedings to be heard on time with an incorrect decision potentially reached.

   [7] Although I point out that these removal proceedings had not been scheduled for hearing at all prior to the indication that they would be heard together with the opposition to registration.

3. Here I am unable to conclude that the relevance of the additional evidence is critical. As such, public interest considerations weigh more heavily into the determination. Post the introduction of legislative amendments in 2013, a regime specifically addressing the efficiency of opposition proceedings was implemented. In circumstances where (a) the Removal Opponent has been put on notice a translation was required, (b) it made a conscious decision not to file one, and (c) in response to a challenge to its evidence (which I consider a reasonably predictable challenge) seeks to file the translation over one year later, allowing the additional evidence into proceedings would render that regime otiose. I consider that in order to outweigh such circumstances, the nature of the additional evidence would need to be such that its omission would result in more than a possibility of failure.

The inconvenience to the parties

1. The Removal Opponent submits that allowing the translation would not lead to any appreciable or practical inconvenience for the parties. It says that the actual content of the translated document is modest (given the redactions made). It further argues that the Removal Applicant has had access to the untranslated evidence for over a year, and that if the Removal Applicant wished to rely upon extrinsic material to dispute the existence or scope of the license agreement, there is no reason that it should not have filed such material anyway. Moreover, so the argument goes, the Removal Applicant should provide cogent reasons to support any view that the filing of the translation would have dramatically altered its preparation of its evidence. Lastly, whilst the Removal Opponent avoids stating that it considers the additional evidence critical, it does submit that should it be unsuccessful in the removal proceedings in whole or in part because of a decision not to consider the translation, then it will likely appeal to the Courts (wherein the translated license will be tendered as evidence), resulting in greater inconvenience to both parties. To that end it submits that the balance of convenience favours exercising the discretion under reg 21.19.

2. Turning firstly to its submissions relating to the Removal Applicant, I reiterate that the Removal Applicant does not bear an onus in this matter. Additionally, although the Removal Applicant may have filed evidence disputing the existence and scope of the license agreement, it was not obliged to do so. It remains open to the Removal Applicant to make submissions regarding potential weaknesses of the Removal Opponent’s evidence without documentary evidence of its own (and the strengths and weaknesses of those submissions may likewise be debated). In any event, for its part the Removal Applicant submits that should the additional evidence be allowed, it would need to undertake further enquiries regarding any potential dispute over the proper translation (including potentially seeking a translation itself), and to prepare evidence in response having regard to a material change in the Removal Opponent’s case.

3. That the Removal Opponent might appeal should its case fail, due wholly or partly to a refusal to exercise the discretion under reg 21.19, is not a sufficient basis to conclude the balance of convenience favours it. Firstly, as already indicated it is not clear that the Removal Opponent’s case would fail wholly on the basis of not allowing the translation – the Removal Opponent itself does not submit so, and I am not certain that it would be. Secondly, an appeal that arises only partly because of the omission of the translation is an appeal that arises due to other factors as well, and thus is an appeal that may occur in any event.

The denial of an extension of time request filed by the Removal Applicant

1. I note firstly that this is not of itself a reason for the Removal Opponent’s request to be denied. Rather, it informs the consideration of whether a delay in proceedings is likely to occur should the additional evidence be allowed. The Removal Applicant previously sought an extension of time to file part of its evidence because it had anticipated that the Removal Opponent would file a translation. The request for an extension was denied; however the salient point is not the denial itself but rather that the extension was sought. This indicates, at least to a degree, that further time for the Removal Applicant to respond may be required should the additional evidence be allowed.

2. The Removal Opponent submits that the license agreement is an internal business document, and it is highly questionable whether there is any evidentiary material the Removal Applicant could provide in direct response to it. I noted in the previous section the Removal Applicant’s indication of at least some of the evidence it might wish to seek. It seems unlikely that the Removal Applicant would be able to complete its investigations in time for the hearing set down for 23 August 2016, and as such it is likely that the hearing would have to be delayed. As discussed in the previous sections of this decision, delay in proceedings should be counterbalanced against the relevance and probity of the additional evidence sought and the circumstances under which the request is made. If the delay is not justified, then it should not be allowed to occur.

Decision

1. The additional evidence sought to be adduced is somewhat relevant (although not necessarily critical) and therefore there is a possibility that the Removal Opponent’s case may fail without it. At the same time, in the context of legislative amendments which came into effect in 2013, the Removal Opponent has not shown that it is reasonable to allow the additional evidence now. Previous decisions of the Registrar wherein the discretion under reg 21.19 has been exercised have included factors such as the evidence being filed shortly after its due date (per Fed Square) and the evidence being critical to a party’s case (per AgCare). Neither of those is present here, nor are the other factors already discussed sufficient to support the Removal Opponent’s case.

2. I am not satisfied that it is reasonable to exercise the discretion available under reg 21.19 to allow the additional evidence, being a translation of the Removal Opponent’s license agreement with the entity CWF (and the verification of translation), into proceedings.

3. Accordingly the Removal Opponent’s request under reg 21.19 is refused.

Nicole Worth

Hearings Officer

Trade Marks Hearings

26 July 2016