Southcorp Brands Pty Ltd v BIN-VIN (Shanghai) Trading Co Ltd

This matter concerned an opposition by Southcorp Brands Pty Ltd (the Opponent) to the registration of a trade mark by BIN-VIN (Shanghai) Trading Co Ltd (the Applicant). The Opponent filed a Notice of Intention to Oppose and subsequently a Statement of Grounds and Particulars, raising grounds under sections 42(b), 44, 60, and 62A of the Act. The Applicant filed a Notice of Intention to Defend but did not file any evidence in answer or submissions. The Opponent filed evidence in support of its opposition, and later sought to file further evidence, which was considered by the delegate of the Registrar.

The primary legal issue before the delegate of the Registrar was whether to admit the late-filed evidence from the Opponent and, if so, to determine the opposition on its merits. The delegate was required to decide whether the grounds of opposition, particularly under section 62A of the Act concerning bad faith and misleading conduct, had been established. The delegate also had to consider the Applicant's lack of participation in the proceedings and the potential for procedural unfairness.

The delegate reasoned that while the Act and Regulations do not strictly require the consideration of late-filed submissions or evidence, Regulation 21.15(4) allows the Registrar to be informed on any matter in a way deemed appropriate. The late-filed declaration contained probative material relevant to the opposition that could not have been included in the initial evidence. Given the Applicant's non-participation and lack of disadvantage, and the principle that serious oppositions should be decided on their merits with all relevant information, the delegate admitted the Gibson Declaration. The delegate found that the Applicant's conduct, in conjunction with its associated entities, demonstrated a pattern of attempting to misappropriate the Opponent's goodwill and pass off its goods as those of the Opponent, particularly in relation to the Penfolds brand. This conduct was found to fall short of acceptable commercial behaviour, establishing the ground of opposition under section 62A.

Consequently, the delegate refused to register the trade mark. The Opponent was awarded costs against the Applicant in accordance with the general rule that costs follow the event.