Warnaco Inc v Estee Lauder Cosmetics Limited

This matter concerned an opposition by Warnaco Inc. ('Warnaco') to a trade mark application by Estee Lauder Cosmetics Limited ('ELC') for the mark PLEASURES in Class 3. The dispute arose when Warnaco, through its legal representatives, raised concerns about the similarity in content and wording of several statutory declarations filed by ELC as evidence. Warnaco argued that these common-form declarations cast doubt on their probity and whether they genuinely reflected the individual knowledge of the declarants. In response, ELC sought permission to withdraw some declarations, revise others, and introduce new evidence from industry experts. The application for permission to file further evidence was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether to grant ELC permission to file further evidence in answer to Warnaco's opposition, notwithstanding the initial issues with ELC's evidence. This involved considering the relevant regulations, specifically Regulation 5.15 of the Trade Marks Regulations, which governs applications for permission to serve further evidence, and Section 47 of the Trade Marks Act 1995, which requires leave or special leave to adduce further evidence. The delegate also had to assess the principles applicable to such applications, distinguishing them from stricter criteria for admitting fresh evidence in court proceedings, and consider the public interest in the proper resolution of opposition proceedings.

The delegate reasoned that while the initial error in the declarations was due to a lack of diligence on ELC's part, the circumstances of the error, its prompt identification, and the potential materiality of the proposed expert evidence warranted granting permission. The delegate noted that the Trade Marks Act 1995's requirement to "seek permission" implied a less stringent standard than the previous "special leave" provisions. Applying principles that favoured a full airing of substantive matters concerning deception, confusion, and market conditions, and considering the public interest in an accurate trade marks register, the delegate allowed ELC's application.

Ultimately, the delegate granted ELC permission to lodge further evidence. However, in light of the initial lack of diligence by ELC, the delegate determined that an award of costs against Warnaco was not appropriate in this instance.