Warnaco Inc v Estee Lauder Cosmetics Limited

[2000] ATMO 61

TRADE MARKS ACT 1995

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

Re:Opposition by Warnaco Inc. to permission to file further evidence in relation to trade mark application 648996(3) - PLEASURES - filed in the name of Estee Lauder Cosmetics Limited.

Background

In this matter Warnaco Inc ('Warnaco') opposes an application by Estee Lauder Cosmetics Limited (ELC) for permission to file further evidence in relation to the substantive issue in which the trade mark PLEASURES in Class 3 is opposed by Warnaco.

This issue arose in the following way.  In a letter to the Registrar of Trade Marks dated 15 January 1999, Spruson and Ferguson, (Sprusons), legal representatives for Warnaco, brought attention to particular similarities in content and wording in statutory declarations by Patricia Hale, Tony Davies, Greg Powell and Dawn Cummings (the declarations).  These declarations were lodged as evidence in the substantive issue by ELC.  The letter commented that, as the declarations are in common form, they can hardly be seen as reflecting the individual knowledge of the declarants in question.  Further, the Sprusons letter observed that it is inconceivable that all three declarants could have individually hit upon the common wording of their declarations.  This might throw the probity of this portion of the evidence into some doubt.

Subsequent to the Sprusons letter, Baker and McKenzie, (Bakers), legal representatives for ELC, have sought to rectify this error by withdrawing the Hale and Cummings declarations, revising the Davies and Powell declarations and introducing two new declarations by industry experts as further evidence.

By letter dated 2 February 2000, a delegate of the Registrar wrote to Bakers stating that he thought that the scales tipped against the grant of permission to bring in additional evidence in answer.  He also drew ELC's attention to the right to a hearing of the issue.  ELC then requested to be heard in the issue of the request for permission to lodge further evidence in answer.

The hearing was before me, as a delegate of the Registrar, in Sydney.  Mr Brett Doyle of Bakers appeared for ELC.  Ms Annette Freeman of Sprusons lodged written submissions on behalf of Warnaco.   I am not going to dwell on these submissions and will focus instead on the relevant regulation, the case law and Mr Doyle's statutory declaration about how the requirement for permission to lodge further evidence in answer arose.

Discussion

Regulation 5.15 allows:

5.15   Extension of period to serve evidence and service of further evidence

(1)     A party to the opposition proceedings may apply to the Registrar:

(a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

(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:

(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and

(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.

Regulation 5.10 provides

5.10Period for service of a copy of the evidence in answer

(1)           If the opponent complies with regulation 5.7 or 5.8, the period for service of a copy of the evidence in answer to the opposition is 3 months from the day on which the opponent serves on the applicant:

(a)the copy of the evidence in support referred to in subregulation 5.7 (1); or

(b)the copy of the notice referred to in subregulation 5.8 (1).

(2)           If the opponent does not comply with regulation 5.7 or 5.8:

(a)the period for service of a copy of the evidence in answer to the opposition is the period of 3 months beginning on the day notified by the Registrar under paragraph (b); and

(b)the Registrar must, after the end of the period of 3 months referred to in subregulations 5.7 (1) and 5.8 (1), notify the parties in writing of the day on which the period for service of a copy of the evidence in answer to an opposition is to begin.

The equivalent portion of the regulations to the Trade Marks Act 1955 provides:

Further evidence to be by leave or special leave

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 sub-regulation 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.

(5) The other party shall, if he intends to oppose the application, give to the Registrar and to the person making the application notice of his intention to do so within fourteen days after the date on which the copies of the application and the declaration were served on him.

(6) Where special leave to adduce further evidence is granted, the other party sh all be entitled to reply to the further evidence.

(7) The Registrar shall notify the parties of his decision on the application for special leave.

Thus, the requirement under the Trade Marks Act 1995 is that person seeking to file further evidence seek permission from the Registrar to do so whereas under the 1955 Act, the person was to apply for special leave to file further evidence.  I consider that the words seek permission imply lesser stringency in the application of the provisions than do the words apply for special leave.  That said, however, I consider that the words seek permission imply that the situation in which permission would be granted will be something out of the ordinary. While Mr Doyle argued that the Trade Marks Act 1995 provides a presumption of registrability and this might influence my considerations, I do not think that this is so. The presumption derives from section 33 of the Act. Section 33 provides:

Application accepted or rejected

33.(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it.

Note:  For the grounds on which an application may be rejected see Division 2.

(2) The Registrar may accept the application subject to conditions or limitations.

Note:  For limitations see section 6.

(3) If the Registrar is satisfied that:

(a) the application has not been made in accordance with this Act; or
(b) there are grounds for rejecting it;

the Registrar must reject the application.

(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:  For applicant see section 6.

It is apparent that the provisions of section 33 operate on considerations that arise before acceptance of an application - this matter is a post acceptance consideration.

The principles that I am to apply might therefore be slightly less stringent than those in Studio Srl v Buying Systems (Aust) Pty Ltd (1991) 22 IPR 580 (decided under the Trade Marks Act 1995) where, to quote the headnotes, the principles applied by Hearing Officer Homann were:

(i) A hearing before the registrar is a hearing before an administrative tribunal to be distinguished from an appellate court which may have stricter criteria on the admission of fresh evidence.

Ladd v Marshall [1954] 1 WLR 1489; Thornhill’s Application [1963] RPC 13; Simac SpA Macchine Alimentari v Semak Electrics Pty Ltd (1985) 5 IPR 281, considered.

(ii) There was a public interest in proper resolution of opposition proceedings where the issue is raised of deception and confusion likely to be caused by use of the mark.

Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410, considered.

(iii) In the opposition hearing, it is of overriding importance that the registrar be fully informed of all relevant material dealing with use of the mark in so far as proprietorship through first user is in issue.

The issue the Mr Homann decided revolved around evidence in reply which did not respond to the evidence in answer but which raised fresh issues to be addressed - hence the request for special leave in order to address those issues.  Here, the situation is somewhat different.  My comments on how the situation has arisen are coloured by being based solely on the declaration of Mr Brett Doyle of Bakers.  In the circumstances, I must thank Mr Doyle for his remarkable frankness.

Mr Doyle says that through a combination of a number of circumstances, the declarations by Patricia Hale, Tony Davies, Greg Powell and Dawn Cummings were drafted by employees of Bakers in common form.  The first declaration was used as a pattern for the second and subsequent declarations.  This common form could lead to a defect being seen in the evidence as noted by Sprusons in the letter I have already referred to.  It is clear that Mr Doyle was responsible for the oversight of the preparation of these declarations but for a number of reasons, he was unable to perceive and rectify the situation - he had holidays and the first two declarations were executed in his absence, the declarations which he did see were presented to him individually so that he could not compare them and note the similarities and so forth. 

On the other hand, Warnaco has opposed the application by ELC to file further evidence and thus rectify the situation that has arisen.  This is perhaps not surprising in view of the Sprusons letter, which stated that they intended to challenge the validity of the evidence.  If the challenge to the validity of the evidence was to be genuine and successful, four declarations would be lost from the ELC evidence, which, if they had been properly prepared, might reasonably be seen as being material to the outcome of proceedings in one way or the other.

The declarations to be lodged are from experts in the relevant trade and are ones that might reasonably be seen, without me prejudicing the issue, as being material to the outcome of proceedings before the Registrar.  I think that there is a public interest in having substantive matters in terms of deception, confusion or the state of the market-place being aired as fully as possible prior to any recourse to the valuable time of the Courts.

Therefore, having regard to the reported nature of the error, the manner it was brought to the attention of ELC, the relevance and weight of the evidence in question, the need for both procedural fairness and accuracy of outcomes, the public interest in having the Register accurately reflect the state of the marketplace and the possible effects of an appeal on the efficiency of courts that the denial of the request might have, I allow the application for permission to lodge further evidence.

Costs

It is usual in issues before the Registrar to award costs to the successful party.  However, I note that the situation has arisen out of some lack of diligence on the part of the successful party.  In such circumstances, I do not think that an award of costs against the unsuccessful party is appropriate.

Ian Thompson

Hearing Officer

23 June 2000