Spirits Product Int BV v FKP Sojuzpodoimport
[2007] ATMO 55
•3 September 2007
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Directions in the matter of opposition by FKP Sojuzpodoimport to protection of International Registrations Designating Australia 932465, 932471 and 934031 - STOLICHNAYA ELIT trade marks - in the name of Spirits International NV.
Delegate: Terry Williams Representation: Opponent: written submissions by Allens Arthur Robinson
Applicant: written submissions by Mallesons Stephen JacquesDecision: 2007 ATMO 55
Relevance of court proceedings considered. Distinction between administrative and judicial considerations. Oppositions to remain suspendedBackground
On 27 July 2007 I issued a statement of the reasons for the decision of the Registrar of Trade Marks to suspend proceedings in the opposition by FKP Sojuzplodoimport (“FKP”) to the protection of International Registrations Designating Australia (IRDAs) 932465, 932471 and 934031. Those reasons also related to a second decision, the refusal to lift that suspension. The statement of reasons is attached, for the convenience of readers, and marked Annexure A. It sets out the facts in the present matter and I will not repeat them.
The consequence of those two decisions is that the Registrar of Trade Marks has deferred further conduct of the relevant oppositions at the Trade Marks Office while the Federal Court decides the outcome of rectification proceedings that were instigated by FKP and that have, as their target, certain earlier registrations owned by Spirits International NV (“Spirit”) who is also the holder of the IRDAs the subject of the suspended oppositions.
Since then, Spirit has sought, again, to have the oppositions run their normal course, ie to have the suspensions lifted. Responding to a matter I raised at paragraphs 57-59 of Annexure A, Spirit has now undertaken to restrict the time that it would require for preparing its own evidence in the event that, before the registrar was able to decide the oppositions, the Federal Court proceedings were to be finalized in a way that favours FKP.
I have therefore carefully considered the option of allowing the oppositions to run their course. Or, to put the matter into its proper perspective, I have considered it in terms of “given all the facts presented to me, and the undertaking by Spirit, is there sufficient reason why the oppositions should not run their course?”
However, even with the undertaking given by Spirit, the oppositions could not be decided until the completion of at least the evidentiary phase of the court proceedings, for reasons that I will set out below.
I have already set out, in Annexure A, my reasons for believing that the Court’s determination of the issues would be preferable to any administrative determination of the comparable issues. I will explain, below, what I see to be the proper distinction between an administrative assessment of those issues and a necessarily judicial determination of them. For the moment, it will suffice to say that, if the evidence that would be relevant to the oppositions is directly linked to that which would go before the Court, and since the Court’s determination would be preferable to the registrar’s at the end, there are only two sensible options:
- if the link between the opposition evidence and the court proceedings can be properly severed – do so. Allow the oppositions to run, ensuring that they run efficiently so that the opposition matters are decided expeditiously, without impediment or distraction by the court matters
- if the link cannot be severed – the oppositions should remain suspended.
I have therefore allowed both parties to make representations at a telephone conference set up for that purpose and, following this, in writing. Having heard from both parties, I am of the view that the opposition proceedings should remain suspended. I will now set out my reasons for this.
It is very clear that the matters with which the Federal Court would be concerned are complex. The state of proceedings between the parties is such that I am satisfied that a serious matter is being seriously litigated.
What is becoming quite clear is that Spirit has taken a very narrow view of the proper scope of the proceedings at the Trade Marks Office. It would be, as they correctly argue, for the Federal Court to determine what, if any, defect there might be in the existing state of the register and to make any necessary orders to put this right. With this, at least, the lawyers for FKP are in agreement. Spirit, however, goes further in its latest written submissions. There they argue that it would be entirely inappropriate for the registrar to “go behind” the existing state of the register. They argue that it is entirely inappropriate for FKP to pursue, in the opposition forum at the Trade Marks Office, issues going to the proper ownership of the trade mark rights arising from the oldest registrations of the STOLICHNAYA trade mark.
It is here that, having carefully considered the matter, I must disagree. FKP pursues grounds of opposition under at least two provisions that may make this issue relevant to the consideration of the Registrar of Trade Marks. In view of paragraph 52, part of Annexure A, it may assist the parties if I explain why, having further reflected on the matter, I believe this to be so.
Firstly, under s 58, FKP has alleged that “the applicant is not the owner of the trade mark”. Clearly, Spirit is most definitely the “registered owner” (s. 6) of those earlier trade marks, and FKP cannot succeed under s 44 unless and until it also succeeds in the Federal Court. . However, the opposition as grounded under s 58 and s 42 requires another and deeper consideration of ownership.
It is well understood that, for s 58 purposes, the registrar is required to consider common-law ownership. Typically, this amounts to a relatively simple question: who (if anyone) was the first to use a substantially identical trade mark before the filing date of the application the registration of which is being opposed[1]. However, the essence of FKP’s case in the Federal Court is that it, and not Spirit, is the true and proper owner of the STOLICHNAYA trade marks. This is relevant to the ground of opposition under s 58, and the Registrar of Trade Marks would be required to use her best efforts, as an administrator, to deal with the arguments that FFP may put to her on that question.
[1] See McGarvie J in Settef v Riv-Oland Marble 10 IPR 402 at 413, or more generally, Shanahan’s Australian Law of Trade Marks and Passing Off, 3rd edn, at 11.70.
Again, the lawyers for FKP have indicated that they intend to proceed with the argument that use by Spirit would be contrary to law (the ground of opposition under s 42) because of the same set of underlying facts.
There are likely to be complex arguments here, under either head. Both parties agree that the evidence itself will be complex, since allegations of misrepresentations relating to the law of the former USSR are involved. The Registrar of Trade Marks would not relish tackling these knotty issues, but is duty bound, as an administrative official, to try and untangle them to the best of her ability. In doing so, she would be required to deal with a significant subset of the evidence in the Federal Court. Because of this, the registrar could not reach a decision before that evidence is completed, and I accept that this will be a protracted process, just as Spirit argues.
The proper role of the Registrar of Trade Marks would, as I have said, be entirely administrative in nature. She is duty-bound to consider facts put to her for the sole purpose of deciding if a ground of opposition under either s 42 or s 58 is established and if, therefore, protection in Australia of particular IRDAs ought to be refused. This does not transgress the line separating administrative power from judicial. Of this, in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, Madgwick J said at 26 (my own emphasis added):
However, in my opinion the fact that the existence of any contrariety to law is to be exercised in some circumstances by an administrative body and, in other circumstances, by a judicial body does not mean that the phrase "if its use would be contrary to law" should have an ambulatory meaning, depending upon what kind of tribunal is to apply it. Nor can any reticence on the part of an administrative decision-maker to express an opinion on a matter of law be encouraged. The idea that "contrary to law" in the context of judicial proceedings means contrary to all laws, whilst in the context of proceedings before the Registrar it means contrary to laws which are easy for the Registrar to determine or which are "clear cut", is not sustainable. As a matter of practice, delegates of the Registrar have in some cases determined that a trade mark submitted for registration is contrary to law as a result of its being in breach of other legislation: see Re Application by Slaney (1985) 6 IPR 307 at 309 where a trade mark was found to be in breach of the Health Legislation Amendment Act 1983 (Cth) and Re Application by Athol Thomas Kelly (1987) 8 IPR 667 at 672 where it was found that the trade mark would infringe the Advance Australia Logo Act 1984 (Cth). I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex, should not. Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power. The High Court so held in R v Quinn; Ex parte Consolidated Foods Corporation (1977) 138 CLR 1, of a power to remove a trade mark from the Register.
Madgwick J further observed, at paragraph 28 of Advantage:
I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law. Further, there is no reason why the Registrar could not seek legal advice before forming his/her opinion. It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies from the Registrar's decision to this Court where any error of the Registrar may be corrected.
I believe that the same principles would require the Registrar of Trade Marks to fully consider the ownership ground just as much as the s 42 ground to which Madgwick J expressly referred.
I accept that, as Spirit argues, it would be open to FKP, now, to elect to withdraw its oppositions to registration and to leave the ownership question entirely for the Federal Court. FKP could have elected to worry about what to do about the present IRDAs, which become protected trade marks and registered in Australia as such, if and when it is successful in attacking the earlier registrations. However, Spirit goes further:
The position is simple: the grounds of opposition cited in paragraph 5 of FKP's 24 August submissions [ie sections 42 and 58] are not presently available to FKP in any arguable sense. The Registrar must determine an opposition in accordance with the legal position as it stands, not in accordance with a legal position as it might possibly stand in the event that a Court was, at some point in the future, to make orders for rectification in respect of certain trade marks, the ownership of which FKP presumably then plans to argue is inextricably linked with ownership of the Opposition Trade Marks. At the present time, and unless and until the Register is rectified by a Court in accordance with section 88, there can be no dispute that Spirits is, as a matter of law, the owner of the STOLICHNAYA trade mark and the other trade marks which are the subject of the Proceedings. If the Oppositions were to be decided today, it is clear that the Registrar would not be able to entertain the grounds cited in paragraph 5 of FKP's 24 August submissions. If FKP intends to waste unnecessary time and expense in putting on evidence which relates to its claims for rectification in the Proceedings, that is a matter for FKP, however Spirits submits that such evidence could not be relied upon to support the present Oppositions.
This, however, goes too far. It might well be inferred that the Registrar of Trade Marks would not lightly come to an assessment on the ownership issue that impugned the validity of an existing registration. Thus, the onus on FKP would be a heavy burden. However, it is certainly not beyond the bounds of possibility that a ground of opposition could be established if convincing evidence is brought in. FKP has elected to make the attempt. Presumably it prefers to oppose protection of any more of what it sees as Spirit’s misappropriated trade marks at an administrative level rather than through litigation. It is not for me to question, much less obstruct, FKP in its chosen course. If Spirit wishes to argue grounds of ownership and contrariety to law before the Registrar of Trade Marks, the registrar is duty-bound to consider those issues. If consideration of those issues involves evidence that will be also considered by the Federal Court, so be it. The end result is that these oppositions at the Trade Marks Office cannot be uncoupled from the preparation of the evidence for the Federal Court. That in turn being so, it would be prudent for the registrar to also await the conclusion of the Court’s deliberation on the evidence that will come before the Court.
As to the perceived inconvenience of this to Spirit, I understand that it will not appreciate the indeterminacy of the present IRDAs. That, however, is part and parcel of legislation that expressly allows for opposition to protection. In the meanwhile, Spirit can at least take some comfort from the fact that it is already the registered owner of the trade mark STOLICHNAYA, which may assist in protecting against any apprehended importation of goods that might potentially infringe its asserted rights in STOLICHNAYA ELIT.
Accordingly, and having regard also to what I have already said in Annexure A about the ultimate relevance of the Court proceedings to the ground of opposition under s 44, I direct that the oppositions remain suspended until the Court proceedings are resolved.
Terry Williams
Hearing Officer
3 September 2007Annexure A: Statement of reasons for earlier decisions, issued 27 July 2007.
Background
In this matter, various trade marks have been registered, under the Madrid Protocol, on the International Register at the International Bureau. These Madrid registrations designate, and thus seek protection in, Australia. In respect of Australia, the currently recorded holder of the international registrations is Spirits International NV te Rotterdam (“Spirit”). That name was duly recorded at the Trade Marks Office in March 2007 on the basis of relevant instruction coming from the International Bureau. Because the database at the Trade Marks Office is dependant on notification from the International Bureau, it should be appreciated that being recorded as the holder of an International Registration Designating Australia can be something of a moveable feast.
In what follows, it will be convenient to use the term Spirit somewhat loosely, in order to designate either the holder of the relevant trade marks or the related, similarly-named entity that is active in Federal Court proceedings to which I will come in due course.
The process under the Madrid Protocol has resulted in the following Australian records of International Registrations Designating Australia (“IRDAs”). In the terminology of the Madrid Protocol, an IRDA is very much analogous to a domestically-filed application to register a trade mark. The trade marks the subject of these IRDAs are all variations on the theme of STOLICHNAYA ELIT, in class 33:
IRDA number Trade Mark 932465
STOLICHNAYA ELIT
932471
934031
(as label on bottle device, not fully show)
The IRDAs have been examined, and accepted for possible protection of the trade mark in Australia. This is now opposed by FKP Sojuzplodoimport (“FKP”). Opposition to protection is the Madrid analogue of opposition to registration under s 52 of the Trade Marks Act 1995 (“the Act”). Part 17A of the Act authorises reg 17A to make the necessary adaptations of the Act but these are, for present purposes, immaterial.
The present dispute is about an administrative decision taken as part of this opposition process. It is necessary to set out some of the legislative framework that supports and governs the dispute, which I will further describe in due course. Section 54 of the Act provides:
54 Opposition proceedings
(1) The Registrar must give to the opponent and to the applicant an opportunity of being heard on the opposition.
Note: For opponent and applicant see section 6. [For present purposes, ‘applicant’ and ‘holder’ are therefore analogous. See reg 17A.2]
(2) Subject to subsection (1), the proceedings for dealing with the opposition must be in accordance with the regulations.
The Registrar of Trade Marks is thus required to conduct oppositions within the broad framework provided by the regulations. These (regs 5.7 and 5.8) allow an initial period of three months for the service and filing of evidence in support by an opponent. Thereafter, regs 5.12 and 5.13 allow for the service and filing of evidence in answer by the holder/applicant and of evidence in reply by the opponent (regs 5.9 - 5.11) respectively. The process of those evidence stages is itself subject to regulation 5.15, which governs how a party may apply for an extension of time for the service and filing of evidence and how the registrar may deal with that request.
In other matters, FKP has, by way of a cross-claim currently before the Federal Court and made against Spirit, challenged the terms of existing trade mark registrations that stand now in the name of Spirit.
The trade marks the subject of FKP’s cross-claim, which I will refer to below as “the existing registrations”, are also in class 33 for trade marks involving essentially the word STOLICHNAYA. They were entered in the Australian (rather than the Madrid) register at various times between 1976 and 1996. In the Federal Court proceedings, FKP seeks an order that it, rather than Spirit, be recorded as the owner of the existing registrations.
Suspension of oppositions
On 4 December 2006 the lawyers for FKP sought a direction from the Registrar of Trade Marks that would suspend the opposition proceedings while the Court proceedings were resolved. Specifically, the direction has the effect of suspending all three of the present matters at a stage where FKP has yet to file or serve evidence in support.
A suspension of the opposition involves a direction under reg 5.16. This provides as follows:
5.16 Conduct of opposition proceedings generally
(1) The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.
(2) A direction given under subregulation (1) must not be inconsistent with these regulations.
(3) The Registrar must not give a direction unless the Registrar:
(a) is reasonably satisfied that parties to the proceedings have been notified of the proposed direction; and
(b) has given the parties a reasonable opportunity to make representations concerning the proposed direction; and
(c) is reasonably satisfied that the proposed direction is appropriate.
(4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
This power allows the registrar’s delegates to ensure that, within the broad framework set by the regulations that I have previously referred to, efficiency and procedural fairness are both ensured in the management of opposition cases. At its most mundane level, reg 5.16 would allow the registrar to propose and make directions that would compensate a party for undue delays in deciding an extension of time application. These delays can range from the simplest, such as the loss of a letter or some other unfortunate circumstance arising at the Trade Marks Office.
The delay, however, need not be a matter of days or even weeks. A case in point would be British Sky Broadcasting Ltd v Skynetglobal Limited[2], where a review, under the Administrative Decision (Judicial Review) Act, of the decision to register the trade mark delayed the consideration of a somewhat analogous request for an extension of time, made under reg 5.2, to oppose the registration in question.
[2] (2003) 57 IPR 93
Thus, directions of a quite substantial effect can also be given under this provision where a sufficient case is made. The provision can thus be used to suspend an opposition - in other words, to defer, to a date to be fixed, the due date for evidence or for determination on the merits - where it appears that there is good reason to do so. The registrar’s experience is that, used in this way, a suspension can be an efficient alternative to repeated applications under reg 5.15 for extensions of time for serving evidence[3].
[3] Illustratively, in the present matter, FKP’s request for suspension actually incorporated also an application for an extension of time to serve evidence in support and both the suspension and the extension request draw their documentary support from common material.
It should be noted that the power to give directions suspending an opposition, like the power to extend time for serving evidence, arises only under the regulations, not the Act. This is because the general extension of time provision, s 224 of the Act, is excluded from nearly all aspects of opposition proceedings by the action of various parts of reg 21.28. Actions under regs 5.7 and 5.8 are thus “prescribed acts” under regulation 21.28. They are therefore not, under s 224(8), “relevant acts”, and the logic of the legislation is such that they are not within the scope of s 224.
Registrar’s practice in suspending
If a prima facie case is made for suspension, the registrar’s practice is to suspend where both sides agree that suspension is appropriate. The main administrative decisions in this regard[4] acknowledge that it is undesirable to have the same or a very similar issue dealt with both administratively and in the Court, particularly on the basis of different evidence. It is also clear that adversarial examination of evidence in Court proceedings will generally produce a more accurate factual basis for any administrative decision, and is accordingly to be preferred.
[4] Beyond Properties Pty Ltd v Andrew Knight [2006] ATMO 87, Silhouette International Schmied AG v Aust Opthalmic Supplies Pty Ltd [2001] ATMO 124, Ayrton Senna Promocoes v Senna Racing (1998) 41 IPR 395, Outrigger Hotels v Evangelista (2000) 49 IPR 164
Where one party disputes the need to suspend, it is necessary, having allowed the parties to make representations on the question, to take into account the balance of convenience[5] as between the parties. Regard must also be had to administrative convenience and to the public interest. The latter will tend to lie with the efficient running of the intellectual property system, as manifested both at the Trade Marks Office and in the Courts, though regard may also need to be had to the interests of third parties (if any). Further, as Hearing Officer Thompson pointed out in Beyond Properties, supra, delay in finalizing an opposition at the Trade Marks Office is prejudicial to an applicant only where, firstly, the opposition decision is likely to favour the applicant, secondly, it can be assumed that the decision will not itself be appealed by the unsuccessful opponent; and, thirdly, and in the absence of such an appeal, a significant further delay would be caused by awaiting the decision of the Court.
[5] Or, as it was put in Re Applications by Yamazaki Mazak Corp (1992) 24 IPR 321, causing “minimal prejudice”. Delay in such matters is, in fact, more often a balance of inconvenience.
Reasons for suspensions
FKP provided a brief account of the cross-claim. It is alleged by FKP, in this, that the ownership of the existing registrations was obtained in various ways that are all, very loosely, contrary to law. The cross-claim goes to who can appropriately claim to be the successor in title of the true and original owner of the first of the existing registrations, which, as I have said, dates back to 1976.
There were some irregularities that needed to be resolved with the opposition proceedings as they then stood at the Trade Marks Office but, when this was done, on 15 January 2007 a delegate of the registrar wrote to both parties, proposing to suspend the oppositions and allowing the parties 21 days to make representations on that issue. On 15 February, in the lack of any representation from Spirit, a delegate of the Registrar of Trade Marks made the decision (“the first decision”) to suspend the oppositions.
Immediately they received the letter advising of the first decision, the lawyers for Spirit wrote to the Trade Marks Office, asking for additional time to address the issue. The relevant submissions on which Spirit relied were subsequently filed, on 16 March. On 16 April, another delegate, having considered these submissions, made a decision (“the second decision”), refusing to lift the suspension.
Spirit has now requested that the registrar issue written reasons for the two decisions. This request is made under both reg 21.20 of the Trade Mark Regulations 1995 and under s 13 of the Administrative Decisions (Judicial Review) Act. I now provide those reasons, drawing on the records on the official file and the material that was available to the two delegates when they made their respective decisions, and setting out, below, the arguments put by Spirit against the making of the second decision.
Reasons for first decision
In the lack of any adverse comment from Spirit, the delegate had regard to the simplified explanation of the cross-claim in the Court proceeding. It was obvious that the Court proceedings, which impinge directly on the terms of the existing registrations, could go to the very heart of s 44, one of the grounds in the present opposition proceedings. If FKP is successful in the cross-claim, the opposition at the Trade Marks Office would then need to be decided on a very different basis to that which FKP now encounters. In the lack of any objection by Spirit, the delegate had regard to the apparent seriousness of the cross-claim, its potential to have an impact on the oppositions and the apparent lack of disadvantage to Spirit. The balance of convenience thus favoured suspending the oppositions, which would also be administratively convenient and avoid the potential for any decision at the Trade Marks Office to be brought into dubious standing by a subsequent decision of the Court.
Reasons for second decision
In reaching the second decision, the delegate had the benefit of detailed submissions from the lawyers for Spirit. The lawyers for FKP have yet to have an opportunity to respond to these and it may be helpful if I set out the kernel of them now, as part of the process of setting out reasons for the second decision.
In the present case, Spirit argues there is no true commonality of issues between the Federal Court proceedings and the oppositions. The Federal Court is being asked to make a determination on the ownership or validity of the existing registrations, which are presently owned by Spirit. This determination will not itself dispose of any issue required to be considered in the oppositions.
Spirit’s lawyers have asserted that FKP does not presently have a valid ground of opposition. This is said to be “clear” from the O’Brien declaration[6] and from the application for suspension, though the most that can fairly be said is that this is an inference that might be drawn. The lawyers did, however, assert that Spirit has 14 years of use of the STOLICHNAYA trade marks. This is something on which the delegate was aware that Spirit might rely.
[6] This declaration was filed by FKP to support suspension of the opposition, and also to support an application for an extension of time to serve and file evidence in support.
Spirit argues that the present oppositions would not, in large part, turn upon the same facts, circumstances and issues of law as are alleged in the Federal Court proceedings. It was not the case that "determination of the oppositions would ultimately be subject to the outcome of the Federal Court Proceedings" as the lawyers for FKP had put it.
Spirit argues that FKP’s only prospect of successfully opposing registration of the ELIT Trade Marks is if FKP (rather than Spirit) is found, in the Federal Court proceedings, to be the lawful owner of the existing registrations. Without the Federal Court making such a finding, Spirit argues that FKP has no ground on which to oppose the registration of the ELIT trade marks. This is said to be the only nexus which lies between the oppositions and the Federal Court proceedings.
This is, as Spirit points out, not a case in which the parties are engaged in concurrent litigation relating to the particular trade mark which is the subject of the opposition. This circumstance, as Spirit argued, distinguishes the present case from cases in which the discretion to grant a suspension is more commonly exercised. The Federal Court proceedings will not determine if the use of the ELIT trade marks (or any other trade mark) infringes any trade mark owned by FKP, or if such use is misleading or deceptive in breach of the Trade Practices Act 1974, which would be relevant to s 42.
This is, therefore, not a case in which the Court will be deciding a legal issue which also falls for consideration in the oppositions. Nor is it open to FKP to attack the validity of the existing registrations in the context of the oppositions. In the present case, there is no actual commonality of issues between the Court proceedings and the oppositions.
Spirit asserts that, if the Federal Court decision provides FKP with a basis on which to challenge registration of the opposed trade marks and FKP wishes to do so, the appropriate course is that FKP apply for cancellation of those trade marks under s 88 of the Act. This is partially right, in that this would be a strategy that FKP might adopt. What, ultimately, is at the heart of the second decision is the delegate’s assessment of other courses which FKP might follow.
Spirit has asserted, as has FKP, that the Court proceedings will be complex. Spirit has estimated that a Court decision before 2009 is not likely, that an appeal of any decision at first instance cannot be ruled out and that, overall, it is efficient if the proceedings at the Trade Marks Office are allowed to continue.
It is clear from the submissions of Spirit, from which I have quoted extensively, that there will not be a great deal of overlap in either the evidence or the subject matter of the opposition and Court proceedings, with one critical exception.
At paragraph 28 of the written submissions, Spirit cautiously circumnavigates the full relevance of s 44 of the Act to the current matter. It is said, not surprisingly, that the STOLICHNAYA ELIT trade marks, the subject of the presently-suspended oppositions, are not substantially identical to the STOLICHNAYA trade marks that make up the substance of the existing registrations. However, Spirit has not brought attention to bear on the question of those trade marks being “deceptively similar” for the purpose of the same legislative provision.
If it be accepted that, for the purposes of s 44, a delegate of the registrar may well find that the STOLICHNAYA ELIT and STOLICHNAYA trade marks are deceptively similar, it is clear that the terms of s 44(3) and (4) might well come into play in the present opposition. Spirit would, in such a case, and if FKP is successful in its cross-claim, be able to obtain registration of the presently opposed IRDAs only by relying on what is said, by Spirit, to be 14 years of its own use in Australia. In other words, given the clear and predictable relevance of s 44 to the present matter, it is equally clear that the present oppositions would be decidable on one basis if FKP is successful in its cross-claim, but on another, and more complex one, if it is not.
The delegate accepted the point made by Spirit, that in the absence of an end to the opposition, it will be denied access to the protection of registration for its ELIT trade marks until the oppositions are decided at the Trade Marks Office. It appears that Spirit is sincere in this desire, and clearly it needs relevant registrations in order to activate the Customs seizure provisions of s 132. What is not at all clear is how Spirit sees this need for expedition in the opposition as affecting the case that it (and FKP in consequence) might be entitled to conduct at the Trade Marks Office.
In seeking the lifting of the suspension, Spirit has argued that the opposition proceedings may well finish before the Court matter is concluded. However, if that proves not to be so, it is very arguable, given the relevance of s 44 to FKP’s case, that Spirit itself may need to bring in extensive evidence of use. Critically, Spirit has not said that it would be quick upon this course were FKP successful in the cross-claim. In other words, Spirit appears to lack the courage of its convictions, wishing to preserve its own options in full, should its predictions of the future Court matter be wide of the mark.
There is no indication that FKP, for its part, will fast-track its own role in the present opposition. If Spirit’s lawyers are correct in the assertions they make about the case on which FKP might rely, FKP faces an uphill battle. Certainly, it does not appear to be able to make out even the beginning of a ground under s 44 as the Australian register now stands. Presumably, therefore, it will wish to search widely and diligently for other potential grounds, since to do otherwise would be to fast-track its own failure. That is not to say that the registrar would allow FKP, under cover of the process in the regulations, to delay the inevitable, ad nauseum. However, simple fairness would say that, absent some resolution in the Federal Court, FKP is entitled to a fair time to gather its own evidence to support its uphill struggle.
It would have been open to Spirit’s lawyers to give undertakings as to Spirit’s own case in the event that the opposition was overtaken by a speedy resolution in the Federal Court. That would have given it an equitable base from which Spirit might also ask the Registrar of Trade Marks to give directions rigorously constraining the time available to FKP, or to otherwise prevent it relying on the existence of the Court proceedings as a ground for extending time.
With neither of those things in place, speculation about the length of the opposition timetable is more conjectural than Spirit’s lawyers assert. The lawyers for Spirit, apparently wishing to preserve Spirit’s own options while forcing FKP to battle on an uphill slope, have simply invited the registrar’s delegate to speculate on the what-ifs of the present opposition and the what-ifs of the Court matter. The registrar’s delegate concluded that there was not sufficient likelihood that the Court proceedings would entail a significant delay over and above the potential delays of a seriously-contested opposition. The registrar’s delegate therefore concluded that the proper course was to leave the opposition suspended until the Court proceedings were resolved.
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