Sunil Varma v South Pacific Recordings Pty Ltd

[1992] ATMO 73

Trade Marks Act 1955
Decision of a Delegate of the Registrar of Trade Marks

Re Trade Mark Application 560452 in the name of Sunil Varma, and opposition by South Pacific Recordings Pty Ltd to Registration.  Adjournment of Hearing.

Background
On 23.1.92, trade mark application 560452 was advertised accepted for registration.  The application is in the name of Sunil Varma, ("the applicant") and the services specified in the application are "retail outlets selling video tapes, audio tapes and compact discs".  The trade mark the subject of the application is the letters SPR together with the device of a conch shell.

Registration of the application has been opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by South Pacific Recordings Pty Ltd ("the opponent"). The notice of opposition was lodged on 21.4.92 and in it the opponent claims, in general terms, that the applicant is not the proprietor of the mark and that the application should be refused in any case as use of the mark by the applicant would be likely to cause confusion in the market place.

Regulation 43 provides three months from the date of lodgement of the notice of opposition for the opponent to serve on the applicant "a copy of the declarations on which (it) relies in support of the opposition".  On 31.7.92 the parties were informed that as the originals of the evidence had not been lodged at this office, it appeared that no such evidence had been served; if that was so it was open to the applicant to request that the opposition be heard and decided.

The applicant requested such a hearing by letter of 14.10.92 and by letter of 21.10.92 the parties were advised that the matter was to be heard on 11.11.92. 

On 6.11.92 the opponent requested that the matter be adjourned.  As the opponent refused to consent to such a request, and as there was no apparent unforseen and compelling reason (such as sudden illness or car accident) why the hearing should not go on, the opponent was advised the that the matter would proceed as arranged.

The opponent was represented at the hearing by Ms Rena Sofroniou of counsel, instructed by the firm of Corrs Chambers Westgarth, solicitors.  The applicant's solicitors, Karl Zacca and Co, did not appear.

After the hearing commenced, I heard submissions from the opponent's counsel as to why the hearing of the opposition should be adjourned to await the result of Federal Court proceedings.  Adjournment of a hearing is open to me under regulation 50(2) of the trade marks regulations, which simply states that the Registrar may, if he thinks fit, adjourn a hearing from time to time and place to place.

Essentially, Ms Sofroniou submitted that passing off proceedings have commenced in the Federal Court, in which the applicant and the opponent are at loggerheads over precisely the mark the subject of the opposed trade mark application.  She tendered at the hearing a copy of one of the affidavits that will be relied on in those proceedings.  That affidavit was filed with the Federal Court on 15.10.92.  It would not be proper for me to comment on what it may or may not establish, but it tends in a direction that would be directly relevant to the proprietorship of the mark in Australia, and to the question of deception or confusion among customers.

She argued that because a Federal Court hearing was imminent it would be in the public interest if the present opposition matter was adjourned.  The court decision, when it issued, would go directly to questions that are relevant also to deciding if the mark - alleged to be deceptive and confusing - should be placed on the register of trade marks.  It is a truism that the public interest will often weigh heavily in favour of extension of time for service of evidence (Shanahan's Australian Law of Trade Marks and Passing Off, pp 69-70 of the 1990 edition) and it seems to me that the same consideration would apply to an adjournment aimed at full disclosure of the facts.

She freely admitted that the opponent had not properly contested the opposition before the Registrar up until it received legal advice from Messrs Corrs Chambers Westgarth, its newly appointed solicitor.  However, that failing had to be looked at in all the circumstances of the present case. 

Ms Sofroniou went on to submit that, after the receipt of instruction by the solicitor, the delays in assessing what needed to be done, given that a key party in the court proceedings is a resident of Fiji, should not rule out an adjournment as they did not amount to a deliberate flouting of the regulations relating to the service of evidence in support under the Trade Mark Regulations.  Rather, it was submitted that any possible preparation for the belated conduct of an opposition proceeding before the Registrar was overtaken by the setting of a time and place for the determination of that opposition. 

That in itself does not justify the putting off of an application for a belated application to serve evidence in support.  Ms Sofroniou was well aware of the availability of section 130 to extend the time for service of evidence even though that time has expired, and she foreshadowed such an application in the alternative to an adjournment.

However, when there are earnest and very relevant proceedings on foot in the Federal Court, I think that the opponent can point to them as being a good reason why the Registrar should pause before deciding the opposition on what appears to be a less than full disclosure of the facts.

As to how long the matter should be adjourned, I am forced (in the lack of any contrary submission from the applicant) to accept Ms Sofroniou's advice that a Federal Court hearing is likely before the end of February 1993. 

Had the hearing concluded today, I would in due course have dismissed the opposition for lack of evidence.  To that extent, an adjournment will deprive the applicant of what amounts to an uncontested victory.  However, if the opponent is not in earnest the applicant will not have been deprived of victory indefinitely, though it must wait until the resumption of the hearing. 

On the other hand, if the opponent is successful in the Federal Court, that is a matter which will be of direct relevance to the conduct of this opposition, and the public interest in having that factor before the Registrar weighs heavily in my decision at this time. 

Decision
My decision is that it is proper to adjourn the hearing of the matter until the last day of February next year.  That being a Sunday, the hearing stands adjourned until the next working day, Monday 1.3.93, at a time and place to be advised. 

If by that time the Federal Court has issued a decision, Ms Sofroniou has foreshadowed that this, and the material used to support it before the court, will form evidence in support of the opposition, for the service of which the opponent will belatedly request an extension of time. 

Such an extension request will be considered on its merits, but given my decision as above I will say now that prima facie an extension as foreshadowed appears appropriate.  The applicant will be given the chance to make submissions to the contrary before any such extension is further considered, and if such contrary submissions are made a hearing will be set down to consider the extension question.

Conversely, if by the end of February the court proceedings are not finalised, I do not see that the simple fact that they continue would in itself justify further delay.  The applicant will have by then seen an additional three months delay, necessary only because the opponent has failed to make use of the procedures set out for the conduct of an opposition, and the onus on the opponent to justify any further delay will be correspondingly greater. 

I will consider a resumption of the hearing before March next year if the two parties should agree on a common date and place.

My decision to adjourn the hearing is an administrative one, reviewable under the Administrative Decisions (Judicial Review) Act.

T. Williams

Hearing Officer

13 November 1992