Virgin Enterprises Limited v Group Pty Ltd
[2012] ATMO 24
•17 February 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by V Group Pty Ltd, for leave to serve further evidence in the matter of opposition by Virgin Enterprises Limited to registration of trade mark applications 1255988(25, 41) and 1255989(25, 41) - CLUB AND 'V' DEVICE AND V CLUB - filed in the name of V Group Pty Ltd.
Delegate: | Nicole Worth |
Representation: | Opponent: Andrew Fox of Counsel, instructed by Karen Hayne of Addisons Lawyers. Applicant: Richard Lancaster of Counsel, instructed by Melanie Plant of Wilde Legal. |
Decision: | 2012 ATMO 24 Section 52 oppositions: application under regulation 5.15 to serve further evidence – application partially allowed – costs thrown away agreed to be paid by Applicant. |
Background
This is a decision with reasons in the matter of an application for permission to serve further evidence in two related opposition to registration proceedings. V Group Pty Ltd, of Sydney, New South Wales (‘the Applicant’) filed trade mark application numbers 1255988 and 1255989 on 8 August 2008, details of which appear below:
| Application No: 1255988 Priority date: 8 Aug 2008 Class 25: Clothing, footwear and headgear. Class 41: Leisure centre, health club, fitness centre and gymnasium services; provision of recreational facilities; provision of facilities relating to yoga, gymnastics, weight training, body building, aerobics and physical exercise; instructional services relating to yoga, gymnastics, weight training, body building, aerobics, physical exercise and physical rehabilitation. | |
| Application No: 1255989 Priority date: 8 Aug 2008 Class 25: Clothing, footwear and headgear. Class 41: Leisure centre, health club, fitness centre and gymnasium services; provision of recreational facilities; provision of facilities relating to yoga, gymnastics, weight training, body building, aerobics and physical exercise; instructional services relating to yoga, gymnastics, weight training, body building, aerobics, physical exercise and physical rehabilitation. | V CLUB |
Grounds for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) were raised against registration of the applications the applications during examination. The applications were subsequently accepted for possible registration under the provisions of subsection 44(4). The acceptances were advertised in the Australian Official Journal of Trade Marks on 4 March 2010.
On 2 June 2010 Virgin Enterprises Limited (‘the Opponent’) filed notices of opposition to registration of the trade marks nominating most of the available grounds for opposition. After obtaining extensions of time in which to do so, the Opponent served partial evidence in support of their opposition on 28 February 2011 and the balance on 2 March 2011 (filed 1 March 2011 and 3 March 2011 respectively).
The Applicant did not serve or file evidence in answer nor a notice of an intention not to rely on evidence in answer. On 17 June 2011 IP Australia sent notice of overdue evidence in answer to the Applicant, to which there was no response.
After the conclusion of statutory period in which to serve evidence in answer and absent any such evidence, the Opponent, on 24 June 2011, requested a hearing in relation to both applications[1]. The hearing was accordingly set down for 21 October 2011 and I issued a direction containing a timetable for the parties to serve and file written submissions on 23 September 2011.
[1] The Applicant requested, and subsequently withdrew the request at the Opponent’s objection, to include a third opposition matter in the hearing (in relation trade mark application 1227587 where the roles of the parties were reversed, or a ‘cross opposition’).
The Opponent duly served and filed their written submissions on 7 October 2011, pointing out that the Applicant had not served any evidence in answer in these proceedings. It was only at this late juncture that the Applicant’s solicitor, Ms Melanie Plant, realised this to be the case. It appears from subsequent correspondence she was under the mistaken impression that evidence served in relation to a separate opposition matter between the parties, and/or evidence filed (but not served upon the Opponent) during the examination stage of the subject application, would be taken by the Opponent and/or the Registrar to have been brought into the subject opposition proceedings.
An added difficulty was that she did not have access to her client’s files, which were still held by her former employer. After some correspondence regarding the process of submitting evidence at this late stage, Ms Plant filed an application for permission to serve further evidence on 20 October 2011, supported by a declaration made by her, dated 18 October 2011, however not accompanied by the actual evidence which at that stage was not available to her.
The Opponent objected to the request and exercised its right to be heard. I heard the matter, as a delegate of the Registrar of Trade Marks, in Sydney on 21 October 2011 as scheduled, but in relation to the request for permission to serve further evidence rather than the substantive matters of the opposition. The Applicant was represented by Richard Lancaster of Counsel, instructed by Melanie Plant of Wilde Legal. The Opponent was represented by Andrew Fox of Counsel, instructed by Karen Hayne of Addisons Lawyers.
At the hearing the Applicant conceded that it had not served or filed evidence due to an oversight on the part of the Applicant’s solicitor, and submitted it was both necessary for the fair determination of this dispute and in the public interest that it now be allowed to do so. For its part the Opponent submitted that it was prepared to countenance the Applicant being permitted to now serve evidence which had been served in a separate opposition matter between the parties (which was also filed in support of the subject application during examination), on the proviso that no further evidence from the Applicant would be allowed and the Opponent given a period of two months in which to respond. However the Opponent vigorously objected to the Applicant being allowed to serve fresh evidence over that described above.
Submissions were also made by the Opponent regarding its costs thrown away by reason of the adjournment of the substantive hearing. The Opponent submitted a schedule of these costs which the Applicant’s solicitor agreed to pay (see the section of this decision entitled ‘Costs’, below).
The Applicant subsequently served and filed the further evidence it sought to adduce, being:
A statutory declaration made by Nathan James Thurston, Group Account Marketing and Advertising Director of Enigma Communications, with exhibits NJT-1 to NJT-3, dated 4 November 2011. The declaration is made in his capacity as an expert witness, giving his opinion as to whether the Applicant’s logo mark is substantially identical or deceptively similar to the Opponent’s trade mark registrations or applications; and whether the use of Applicant’s logo mark would be likely to deceive or cause confusion because of (a) the reputation of another mark in Australia, or (b) some connotation that the mark has.
A statutory declaration made by Lavinia Jeanne Strachan which was originally filed by the Opponent in a separate opposition matter. Ms. Strachan is a marketing psychologist and the Principal of the market research company Inview Pty Ltd. Her declaration was made 15 November 2010 with exhibits LJS-1 to LJS-2 (although I note LJS-2 is intended to be in colour whilst the copy filed and served is in black and white only). It provides her opinion, in her capacity as an expert, regarding the extent of overall similarity between the Applicant’s trade marks and CLUB V (of which the Opponent is pursing registration).
A statutory declaration made by Selena Short, a Director of V Club Pty Ltd (a wholly owned subsidiary of the Applicant), with exhibits A to R, dated 4 November 2011. Ms Short’s declaration provides detail regarding the development of the Applicant’s business and the development and use of the Applicant’s trade mark. Much of it is the same information as that which was served in relation to the separate opposition matter referred to earlier. Some information, such as the club’s membership numbers, awards won and marketing expenditure has been updated to reflect current realities. That which could be considered new information includes alleged further examples of the Applicant’s mark(s) in use, further information regarding leasing and development of the Applicant’s premises, and further information regarding the Applicant’s branding and marketing strategies.
Further submissions were also made by each party in support of their positions regarding the further evidence. The Applicant’s submissions reiterated the public interest in having all relevant information before the Registrar in determination of the dispute, and suggested that the Opponent was unlikely to be materially disadvantaged given it would have an opportunity to respond. For its part the Opponent objected to the further evidence on the basis that there was no adequate explanation as to why it was not previously served and filed (other than an ‘error’ on the part of the Applicant’s solicitor). The Opponent further contended that the Applicant should not be permitted to rely on its error as an excuse to bring fresh evidence into proceedings.
Discussion
As a preliminary matter I consider it helpful to address the issue of a request for permission to serve further evidence as opposed to a request for an extension of time to serve evidence in answer.
Hearing Officer Williams, in Bluescope Steel Ltd v Maan Enterprises Pty Ltd[2], considered a similar scenario to that here and commented at Annexure 1:
The further evidence on which the applicant sought to rely is “further” in the sense that the process for adducing such evidence is further to that of the earlier evidence stages set out in regulations.
There have been one or two unpublished decisions made at the Trade Marks Office in earlier years, to the effect that a party that had elected not to rely on evidence at first instance cannot describe any evidence that it later seeks to tender as being further evidence, since it is not “further to that which it has already filed”. The effect of viewing the word “further” in those narrow terms is that such a party may bring its evidence into contention only by way of a late extension of time to file, in the present matter, evidence in answer.
I reject such an interpretation on two bases. Firstly, as I have said above, the logical reading of the word “further”, where it occurs at reg 5.15 is as meaning further to the evidence stages that have been previously defined, by regs 5.7 to 5.9.
Secondly, the very considerable extension of time fees that would apply to some cases - but not to others, depending on the history of the matter – makes a restricted reading of the word “further” undesirable.
[2] Bluescope Steel Ltd v Maan Enterprises Pty Ltd [2011] ATMO 26 (29 March 2011).
I will proceed on this basis, taking into account the Opponent’s submissions though they have been made in the context of a request for an extension of time.
The legislation
The relevant provisions of regulation 5.15 of the Trade Marks Regulations 1995 (‘the Regulations’) are:
Extension of period to serve evidence and service of further evidence
(1) A party to the opposition proceedings may apply to the Registrar:
…
(b) for permission to serve a copy of further evidence on the other party.
(2) The Registrar may grant an application on reasonable terms specified by the Registrar.
(3) The Registrar must not grant an application unless the Registrar:
(a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
(b) has given the parties a reasonable opportunity to make representations concerning the application; and
(c) is reasonably satisfied that:
…
(ii) in the case of an application to which paragraph (1) (b) applies—permission to serve a copy of further evidence;
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.
Considerations
In considering whether it is appropriate to grant permission to serve further evidence, the Registrar will look to the reasons for the permission being sought and the nature of the evidence in question.
The principles for deciding whether it is appropriate to allow an application for further evidence were set out in Oxon Italia SpA’s Application[3] as:
It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage,
The evidence must be such that it would probably have an important influence on the result of the case,
The evidence must be such as is presumably to be believed, that is, it must be apparently credible, though not necessarily incontrovertible.
A further observation was made by Hearing Officer Homann in Studio SrL v Buying Systems (Aust) Pty Ltd[4] that where credible further evidence could be adduced which would enable the Registrar to finally determine the matter, rather than the parties relying on an appeal to the courts, that further evidence should be admitted into proceedings.
[3] Oxon Italia SpA’s Trade Mark Application [1981] FSR 408 at 409 (Ch D).
[4] Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858.
At the hearing, the Opponent cited decisions of the Registrar in which permission to serve further evidence, even where no other evidence had been served by the party, had been refused due to the tardiness of the applicant or its agent[5]. Whilst I am mindful of those decisions, I distinguish this case from them because here the failure to lodge any evidence was not due to the actions of the Applicant but rather the Applicant’s solicitor. I consider that the Applicant would be unduly disadvantaged, not through fault in its own actions but rather due to the actions of its solicitor, should I refuse to allow any of its further evidence into proceedings.
[5] Bluescope Steel Ltd v Maan Enterprises Pty Ltd [2011] ATMO 26 (29 March 2011); NSW Food Authority v National Foods Milk Limited [2009] ATMO 65 (25 August 2009).
At the same time, however, some consideration ought to be afforded to the Opponent’s position in having prepared for and arrived at the point of determination of the opposition only to have significant delay and the possibility of preparing further submissions thrust upon it.
With regard to the evidence sought to be adduced, I do not consider that permission ought to be granted in respect of the declarations of Nathan Thurston or Lavinia Strachan. I have not directed that the Applicant would be barred from serving fresh evidence at this late juncture. However I consider that for it to do so the evidence must be of substantial relevance and influence. Neither of these declarations go to demonstrating the Applicant’s use of the trade marks, but rather comprise of opinion regarding such matters as deceptive similarity. Although the statements of experts ought not to be discounted lightly, the public interest lies both in the Registrar having all relevant information before her in making decisions and in an efficient opposition process. I do not consider the declarations sufficiently influential to allow them into proceedings at this stage[6], and any further delay which may be caused by the Opponent responding to such evidence is unwarranted.
[6] I note that the Registrar’s delegate, in the separate opposition matter, did not make any comment upon the declaration of Lavinia Strachan. See V Group Pty Ltd v Virgin Enterprises Limited [2011] ATMO 108 (4 November 2011).
The declaration of Selena Short, however, is directly relevant as it outlines the history of the Applicant’s business and its development and use of its trade marks. I find I am in agreement with the words of Hearing Officer Murray in determining a similar matter[7]:
…I cannot help but conclude that the only reasonable course here, where the evidence at issue is the only evidence available in support of the opposition, is to follow Hearing Officer Homann’s lead and err (perhaps) on the side of caution. To decide differently, I would need to be fully satisfied of the complete irrelevance and lack of credibility of the material sought to be introduced.
[7] Gemini Marine CC v Gemini Inflatables (Aus) Pty Ltd [2009] ATMO 13 (10 February 2009).
Some new information is included, as described in the section of this decision entitled ‘Background’, which expands upon material provided in the separate opposition. I do not believe that the new information places an excessive burden upon the Opponent, which will be given a reasonable opportunity to respond. In respect of Ms. Short’s declaration I consider the public interest lies with having the relevant information before the Registrar so that the matter may fully aired and finally decided.
Decision
In accordance with the requirements laid down in regulation 5.15 I am satisfied that it is appropriate to grant the Applicant permission to serve the further evidence of Selena Short, with exhibits A to R. Copies of the evidence have been filed with this office, and served upon the Opponent. That being the case, I consider it appropriate to allow the Opponent two months from the date of this decision to file and serve its own evidence in response to the further evidence. Once it has done so, the substantive oppositions should be in fit state for hearing.
Costs
The Applicant’s solicitor agreed at the hearing to pay the Opponent’s costs thrown away as specified in the Opponent’s written submissions, and I award such costs against the Applicant. For ease of reference I reproduce them below (the numbered ‘Items’ referring to those appearing in Schedule 8 of the Regulations):
(a) Item 9: Preparation for substantive hearing (25% x $525 fee) $131.25
(b) Item 9: Preparation for hearing on 21/10/11 (50% x $525 fee) $262.50
(c) Item 11: Solicitor’s fee for attending hearing on 21/10/11 (1hr) $200.00
(d) Item 12: Counsel’s fees for attending hearing on 21/10/11 (1hr) $300.00
Total $893.75
Nicole Worth
Hearing Officer
Trade Marks Hearings
17 February 2012
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