Virtual Reality and Virtuality v W. Industries Limited

[1994] ATMO 59

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:      Opposition by W Industries Limited to trade mark application number A571111(9), VIRTUALITY, which is filed in the name of  Virtual Reality and Virtuality.

Virtual Reality and Virtuality, a business registered in New South Wales, lodged trade  mark application number A571111 on 23 January 1992.  It sought to register a series of six marks for all goods in class 9.  During examination the series was amended down to the two marks,

Virtuality
VIRTUALITY 

and on 4 June 1992, in the Official Journal of Trade Marks,  the Registrar advertised the acceptance of this application.

Section 49 of the Trade Marks Act allows a three months opposition period which commences when acceptance of the trade mark is advertised. This time can be extended by a maximum of another three months if the extension is sought before the first three months expire. On the final day of the initial three months, W Industries Limited, a British company of Leicester, England (hereafter W Industries), did apply to extend the opposition period.

The extension was allowed, and notice of opposition was duly lodged on 4 November 1992.

On lodging notice of opposition an opponent is allowed three months to serve evidence to support its claims.  This three month period is frequently found to be less than the time required, and, as often as not, an extension of that time is required.  This has been acknowledged,  as per  Mitty's Authorised Newsagency -v- the Registrar of Trade Marks, 78 FLR 217, where it was noted that the collection of evidence is a difficult and time consuming task, and that three months is notoriously inadequate. It is also acknowledged that for the Registrar to be able to determine opposition matters satisfactorily, it is best if all the material facts are fully disclosed. (Pioneer Hi-Bred Corn Co -v- Hy-Line Chicks Pty Ltd [1979] RPC 410 at 435). These two considerations act in favour of allowing a reasonable extension when a proper case is made out. In the present opposition, the time for serving evidence to support the opponent's case commenced on 4 November 1992 and was repeatedly extended in the ensuing months as W Industries applied for successive extensions of time. At various points in these proceedings the applicant objected to the continuing extensions claiming that the delays brought about were adversely affecting its business. Consequently, on at least four separate occasions, these opposed extension requests was set down for hearing. The two most recent of these hearings were decided on 19 January 1994 and 18 March 1994. In the first of these, when the time allowed for service had stretched from three to 13 months, the Registrar's delegate, Mr T. Williams, laid down the following final alternatives by which W Industries would be permitted to serve their supporting evidence. He said:

I put the opponent on notice that, if the time I have so far allowed is not sufficient for the service of the evidence in support, it should, within ten days of the date of this decision, provide further explanation of why this is so.  This should be in the form of a statutory declaration lodged with this office, and a copy should be served on the applicant at the same time.  The declaration should make clear what information has been obtained in support of the opposition, what form it is in, and when it is proposed that evidence be served on the applicant.

I will allow the applicant seven days, starting on the day after the declaration is served on them, to comment on the latest extension, and I warn the opponent that it should not expect a liberal exercise of the Registrar's discretion if the opponent finds that, contrary to its protestations, further time is needed.

W Industries did not serve the evidence in the time Mr Williams allowed, nor did it follow the alternate course he set out, and provide a declaratory explanation.  It applied instead for another three months extension of time which, if granted, would have run to March 1994 and thus brought the total time allowed for serving the supporting evidence to 16 months.  This extension of time was refused.  The time for serving evidence in support of the opposition therefore expired on 3 February 1994.  W Industries did not serve any evidence within that time.

Regulation 49 provides that where no evidence in support of an opposition is served, the trade mark applicant may apply for a hearing of the opposition.  On 30 May 1994, the applicant, Virtual Reality and Virtuality, made application under these provisions and a hearing was set down for Sydney, for 6 July 1994.  This hearing was conducted before me; the opponent was represented by Mr Khajaque Kortian of the Sydney firm of Spruson and Ferguson;  the applicant was represented by Mr Stephen C.G.Burley of Counsel, instructed by Mr John A. Andrews, Solicitor, of Sydney.

At the commencement of proceedings Mr Burley asked leave to address me on the matter that, on the previous evening, W Industries served the applicant with a quantity of material. He assumed this indicated that W Industries was seeking a further extension of time for serving evidence in support of the opposition.  When, however, the time allowed by regulation 43 has been terminated by a delegate's decision, the Registrar no  way of extending that  time.   The only means by which the opponent can now have evidence admitted to proceedings is by way of regulation 47.  Under this regulation  special leave may be granted to either party to adduce further evidence.  The requirements of the regulation, however, are specific.  So far it concerns application for the leave, it reads as follows:

47(1)  An opponent or applicant may not adduce further evidence except:

(a)by leave of the Registrar, if the parties agree in writing to further evidence being adduced; or

(b)by special leave of the Registrar granted on an application made for that purpose

(2)  An application for special leave under paragraph (b) of the last preceding subregulation shall, unless it is made at the hearing, be in accordance with Form 14.

(3)  The person making the application shall lodge with the application a declaration setting out the grounds on which the application is made and the nature of the further evidence which it is desired to lodge

(4)  The person making the application shall:

(a)within fourteen days after the making of the application, serve a copy of the application and a copy of the declaration on the other party to the proceedings; and

(b)if the copies are served after the making of the application, lodge at the Trade Marks Office a written statement indicating the place at which, and the day on which, the copies of the application and the declaration were served on the other party. 

W Industries makes no claim that any agreement, written or otherwise, exists between the parties, regarding a grant of leave to adduce any evidence. Furthermore the Registrar is not in receipt of any written application for the leave, either by way of Form 14 or otherwise. The first knowledge that I have had of the evidence is through Mr Burley's address at the hearing.  Certainly no declaration setting out the grounds of the application for special leave and the nature of that evidence has been tendered. 

The Registrar's delegate has moreover, in the two decisions I mentioned above, found it necessary to reprove the opponent and the opponent's agent for a casual approach to the time constraints imposed by the regulations.  Now I am asked to grant a special allowance of time for evidence delivered to the applicant's agent on the very eve of the hearing.  I must comment that the production of evidence in this manner, following on the heels of the delegates reproof for a neglectful attitude to evidentiary regulation,   seems to me to be somewhat  reckless.  

In any event, with the history as it is to date, compounded by consideration first of the serious inconvenience occasioned to the applicant, and second of the opponent's careless disregard for the orderly conduct of the matters before  this tribunal, it is quite clear that I would only be willing to grant the special leave on proof of compelling grounds. 

The tests for the admission of further evidence have been developed from Lord Denning's judgment in Ladd -v- Marshall [1954] 1 WLR 1489 and, except in particular circumstances, are determined on three levels. First it should be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage; second it should be shown that the evidence is likely to have an important effect on the outcome; and third the evidence should be credible.

Mr Kortian confirmed that he was making verbal application for special leave to adduce further evidence.  He then made submissions at some length but did not directly address the criteria I have listed.  He relied on argument that matters raised in the opposition went to the public interest, and therefore it was, he said,  more than usually desirable that I should be fully informed on the facts supporting the opposition.  He drew my attention to a previous case before the Registrar, where the delegate admitted evidence brought at the hearing and then noted that although the practice was not desirable, leave on certain occasions could be granted so long as it was clear, inter alia, that the application was not intended to ambush the other party (The Garden Co Ltd -v- Gardenia Overseas Pty Ltd, 27 IPR 237). Mr Kortian finally pointed out that the opposition had been successively under the care of three different agents, that his firm had only been given charge after the last hearing (March 1994), and that he had encountered difficulties in obtaining full records.

Mr Burley, in reply,  asserted the material which had been delivered to the applicant late on 5 July 1994, the day previous to the hearing, was voluminous, contentious, comprised material which would have been in the hands of the opponent for a number of years, and had been largely in the hands of Spruson and Ferguson by 19 April 1994.  He claimed that the opponent had most certainly acted with no intention other than to ambush the opposition proceedings.

Had the opponent provided a declaratory explanation of the circumstance and the nature of the evidence, then Mr Burley's assertions could have been fully examined.  However, as I have said,  no declaration on any kind has been filed.  The only explanation for the opponent's actions comes with Mr Kortian's submissions and, although I appreciate the difficulties of his situation, I find that in the circumstances these submissions fall a very long way short of justifying the  grant of this special leave.  I am not satisfied that the evidence could not have been obtained with reasonable diligence at an earlier stage; nor that it is likely to have an important effect on the outcome.  Finally I have not been given an account of what the evidence is and I have not had any submission which go to its credibility.

I therefore refuse the grant of special leave to adduce any further evidence.

On this finding, Mr Kortian submitted that his hands were tied, and he was not able to make any submissions in support of the opposition.  None of the grounds of opposition are therefore established.  I find no reason why this trade mark should not proceed to registration and I therefore dismiss the opposition.

Mr Kortian argued that the opponent's submissions regarding the adducing of further evidence were based on consideration of public interest, and in view of this costs should not be awarded against the opponent.  This point has not been established. Even if it had, it would then not necessarily be the case that the applicant, whose case has succeeded,  should be denied its costs.  I therefore award costs to the applicant which may be taxed by the officer appointed by the Registrar.

Helen R. Hardie

Deputy Registrar

8 August 1994