Retimans (Canada) Ltd v Hachette Filipacchi Presse

This matter concerned an appeal from a decision of the Registrar of Trade Marks. The appellant, Retimans (Canada) Ltd, sought to oppose the registration of a trade mark by the respondent, Hachette Filipacchi Presse. The core of the dispute revolved around the Registrar's discretion under regulation 21.19 of the Trade Marks Regulations 1995 (Cth) to consider information not formally submitted as evidence by the parties.

The legal issues before the court were whether the Registrar was obliged to consider certain information under regulation 21.19, and whether the delegate's refusal to do so was an error. Specifically, the court had to determine the scope and application of regulation 21.19, particularly in light of legislative amendments in 2013 known as the 'Raising the Bar' amendments, and whether it could be used as a substitute for the repealed further evidence provisions.

The court affirmed that regulation 21.19 confers a discretion on the Registrar, not an entitlement for parties to compel the Registrar to consider information. The delegate's summary of the regulation, referencing prior decisions and the Explanatory Statement to the amendments, was found to be correct. The court emphasised that the intention of the amendments was not for regulation 21.19 to replace the former further evidence provisions. The delegate correctly reasoned that simply highlighting the relevance of material or the potential failure of an opposition without it was insufficient to warrant the Registrar exercising her discretion under regulation 21.19. Additional circumstances making it reasonable for the material to be taken into account were required, and the delegate's refusal to allow the use of regulation 21.19 in this instance was not an error.