PFIP International LLC v Planet Fitness Limited

[2023] NZHC 2125

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE

CIV-2023-485-261

[2023] NZHC 2125

UNDER

the Trade Marks Act 2002

IN THE MATTER

of an appeal against a decision [2023] NZIPOTM 12 of the Assistant Commissioner dated 6 April 2023

BETWEEN

PFIP INTERNATIONAL, LLC

Appellant

AND

PLANET FITNESS LIMITED

Respondent

Hearing:

9 August 2023

Appearances:

C L Elliott KC for the Appellant

G F Arthur KC and E M Greig for the Respondent

Judgment:

9 August 2023

JUDGMENT OF COOKE J

(Appeal against late evidence ruling)

[1]                  The appellant, PFIP International, LLC, is a large American-based multinational business that has operated fitness centres under the name PLANET FITNESS since 1992. It has not, however, operated in New Zealand. The respondent, Planet Fitness Ltd, who also operates fitness centres outside New Zealand, applied to register the trade mark PLANET FITNESS on 24 July 2019. The appellant opposes the registration on a number of grounds.

[2]                  The appellant filed its evidence with the Intellectual  Property  Office  of New Zealand (IPONZ) on 8 October 2020, and the respondent filed its evidence on 27 April 2021. The appellant filed reply evidence on 4 June 2021. On 15 July 2021

PFIP INTERNATIONAL, LLC v PLANET FITNESS LIMITED [2023] NZHC 2125 [9 August 2023]

IPONZ confirmed the case was ready for hearing, but the appellant advised on         8 December 2021 that it wished to apply for permission to file late evidence. That application was not pursued, however.

[3]                  On 24 March 2022 IPONZ again confirmed the case was ready for hearing, and the substantive hearing was set down on 4 October 2022. On 11 June 2022 the appellant again sought permission to file late evidence under reg 34(3)(b) of the Trade Marks Regulations 2003 (the Regulations). The respondent requested a hearing when IPONZ indicated it intended to grant permission for the evidence to be filed.

[4]                  The proposed evidence is in the form  of a further statutory declaration  of  Mr Rondeau, the Chief Executive Officer of Planet Fitness Inc USA. He says that that company had signed an area development agreement on  13 April  2022  with  a  New Zealand company, Castle Point Fitness NZ Ltd, to  expand  its  business  in New Zealand. Mr Rondeau attaches a media release made on 10 May 2022, and confirms the contents of that release are true and correct.

[5]                  Following the hearing the Assistant Commissioner declined permission to file late evidence by decision dated 6 April 2023.1 In her short written decision Assistant Commissioner Aldred declined to allow the late evidence on the basis that, at the very least the adduced evidence should be relevant before it could be filed, and she agreed with the respondent’s submission that it was not.

[6]                  Pursuant to s 170 of the Trade Marks Act 2002 (the Act) the appellant has a right of appeal from this decision notwithstanding that it is only an interlocutory decision. It appeals the decision to decline to receive the late evidence.

Approach on appeal

[7]                  Under reg 34 the Assistant Commissioner may allow late evidence to be filed if one of the specified prerequisites is met. It is accepted that one of those prerequisites, that “the evidence could not have been filed earlier” was met here.

1      Planet Fitness Limited v PFIP International, LLC [2023] NZIPOTM 12.

Assistant Commissioner Aldred found, however, that the evidence was not relevant and should not be received.

[8]                  The appeal accordingly involves an appeal against an interlocutory decision in which a tribunal has declined to exercise its discretion to receive late evidence. It is therefore an appeal against the exercise of a discretion which is to be considered in accordance with the principles set out by the Supreme Court in Kacem v Bashir.2

Assessment

[9]                  If a regulatory threshold for admitting late evidence under reg 34 is established, the Commissioner should consider all of the circumstances to determine whether it is fair to allow the evidence to be received. That will include an assessment of how relevant or important the evidence is to the issues to be determined, whether the other party is prejudiced by the filing including whether it should be given an opportunity to respond to the evidence, and the consequences of any delay.3 I agree with the Assistant Commissioner that leave should not be granted when the evidence is not relevant, however.

[10]              I also agree with the Assistant Commissioner that the proposed evidence was not relevant to the grounds of opposition. In particular:

(a)The appellant argued that the evidence was relevant to its argument that the trade mark application was made in bad faith under s 17(2) of the Act. That was because it was a concrete manifestation of the prospect that the appellant could commence operations in New Zealand. But the date for assessing bad faith is the date of filing on 24 July 2019, some three years earlier. Moreover a key aspect of the bad faith argument is that there was a discussion between the parties about a business relationship in 2007. But it was not suggested that New Zealand was mentioned in that discussion, which focused on Canada. I accept that, as a matter of principle, events after the filing date can cast light on the

2      Kacem v Bashir [2010] NZSC 112, [2011] 2 NZLR 1 at [32].

3      See, for example, Foodstuffs NZ Limited v Fresh Express Group Pty Limited [2007] NZIPOTM 40.

earlier position.4 But as submitted by the respondent, an agreement entered into 15 years after the meeting, three years after the trade mark filing date, and more than two years after the opposition was filed is not relevant to the assessment of the respondent’s knowledge at the date of filing, or the objective assessment of the respondent’s conduct for the purposes of considering this ground of objection.

(b)The appellant argued that evidence directed to the likelihood of public confusion both before and after the filing date can be relevant to opposition based on that confusion in accordance with s 17(1)(a) and (b). I accept that evidence of post-filing public confusion can be relevant to this ground of opposition.5 But again the likelihood of confusion is to be assessed at the filing date.6 When there has been no business activity in the market involving consumers prior to the filing date, evidence of an intention by the opponent to commence business some three years later has no relevance to such potential confusion, especially when that evidence does not directly concern the knowledge or confusion of consumers. The issue here will turn on whether the appellant had an international reputation that would give rise to confusion in New Zealand if the respondent’s application succeeded. The proposed evidence is not relevant to that even on a broad view of what may be relevant when assessing all the circumstances.

[11]              I do not accept the argument of Mr Arthur KC, however, that only the applicant’s conduct, and not the opponent’s conduct after filing could ever be relevant. As Mr Elliott KC submitted, whilst that may be most likely situation when post-filing evidence would be relevant, and it is what the previous cases have addressed, the fact that confusion can involve the activities of both the applicant and opponent means that it is possible that an opponent’s conduct post-filing may have some relevance. But

4      See, for example, DC Comics v Chequot Pty [2013] FCA 478, (2013) FCR 194.

5      Helena Rubenstein Ltd’s Application [Trade Mark] [1960] RPC 229; Conde Nast Publications Pty Ltd v Taylor (1998) 41 IR5 505; Korea Ginseng Corp v Calvin Klein Trademark Trust [2022] NZIPOTM 1 at [45].

6      Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 (CA) at 61.

here I do not accept that the proposed evidence has any relevance to either the bad faith or confusion grounds of opposition.

[12]              Even if the evidence could be said to be relevant to the extent that it was admissible it could only have little significance.7 It would have been within the Assistant Commissioner’s discretion to decline to accept it. I also do not accept the appellant’s criticisms that the Commissioner did not properly apply the discretion. Once she had determined that the evidence had no relevance it was obvious the evidence should not be received.

[13]              The appellant’s best point arises from the observations of Richardson J in Pioneer Hi-Bred Corn Company when explaining why further evidence should have been allowed on appeal in that case. He said that the ground of objection turned on the public interest, and within reasonable limits it “furthers that public interest to allow consideration of any available evidence that will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception or confusion”.8 But in that case the further evidence was of significance in addressing the underlying issue about confusion as at the date of filing. That is not so here.

[14]              Moreover since that decision the test for the admission of late evidence before the Assistant Commissioner has been changed. As Lang J observed in Muir Electrical Company Pty Ltd v The Good Guys Group Ltd the 2002 Act and the 2003 Regulations contain a “significant shift in emphasis” in relation to the requirements which are now more restrictive.9 Regulation 34 involves significant limitations on the ability to allow the filing of late evidence, and the discretionary power should be exercised in light of this.

[15]              I also accept the respondent’s further argument that had the evidence been sufficiently relevant to be allowed to be filed there are aspects of it that did not meet the threshold in reg 34 on the basis that it could have been filed earlier. Mr Rondeau

7      Relevance for admissibility involves a low threshold. See Wi v R [2009] NZSC 121, [2010] 2 NZLR 11 at [8].

8      Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd, above n 6, at pp 73–74.

9      Muir Electrical Company Pty Ltd v The Good Guys Group Ltd HC Auckland, CIV-2009-404- 4965, 18 December 2009 at [27]–[28].

confirms that what was said in the media release was accurate. That media release contains significant historic information about the appellant’s activities. As the Assistant Commissioner noted, if the evidence had been allowed to be received those parts of it would have needed to have been disallowed.10

[16]              For the above reasons the appeal is dismissed. The respondent is awarded costs on a 2B basis, including disbursements, to be fixed by the Registrar if they cannot be agreed.

[17]              I note that, as a consequence of the applications to file late evidence, and then this appeal, the hearing of the substantive decision has been delayed. I was advised that there was a practice at IPONZ to defer hearing substantive applications when there is an appeal to this Court against an interlocutory decision. If that is so I consider it would be appropriate for that practice to be reconsidered. It is unfortunate that an application filed in 2019 has not yet been heard. Any deferral of substantive proceedings to allow appeals to be pursued to this Court should depend on whether the issues sought to be appealed is of sufficient importance to warrant the substantive proceedings being stayed. The current practice also creates an unfortunate incentive on parties to pursue interlocutory appeals when there is some perceived advantage to them in delaying the substantive hearing. That is not appropriate.

Cooke J

Solicitors:

Henry Hughes Law Ltd, Wellington for the Appellant Duncan Cotterill, Wellington for the Respondent

10     Planet Fitness Ltd v PFIP International, LLC, above n 1, at [20].