Renault SAS v Always Hire Limited
[2023] NZHC 304
•27 February 2023
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
I TE KŌTI MATUA O AOTEAROA TE WHANGANUI-A-TARA ROHE
CIV-2022-485-000084
[2023] NZHC 304
UNDER the Trade Marks Act 2002 IN THE MATTER OF
Trade Mark Registration No. 704656 (Master)
BETWEEN
RENAULT S.A.S.
Appellant
AND
ALLWAYS HIRE LIMITED
First Respondent
COMMISSIONER OF TRADE MARKS
Second Respondent
Hearing: 20 February 2023 Appearances:
J Oliver-Hood for Appellant
No appearance for First Respondent
S P Connolly and S M Perera for Second RespondentJudgment:
27 February 2023
JUDGMENT OF VAN BOHEMEN J
This judgment was delivered by me on 27 February 2023 at 12:00 pm Pursuant to Rule 11.5 High Court Rules
Registrar/Deputy Registrar Date……………………………..
Counsel/Solicitors:
J Oliver-Hood, Auckland Capstone Law, Auckland Crown Law, Wellington
RENAULT S.A.S. v ALLWAYS HIRE LTD [2023] NZHC 304 [27 February 2023]
[1] The appellant, Renault S.A.S., appeals the decision of the second respondent, the Assistant Commissioner of Trade Marks, revoking Renault’s trade mark No 704656 MASTER for Class 12 goods.
[2] The Assistant Commissioner’s decision followed an application by the first respondent, Allways Hire Ltd, for revocation of the Renault trade mark on the basis it had not been put to genuine use for a three-year period. Allways Hire applied for revocation in order to progress its own application for registration of the trade mark MASTER for Classes 7, 37 and 44.
[3] Renault did not respond to the notice by the Intellectual Property Office of New Zealand (IPONZ) of the Allways Hire application for revocation. Renault did not file a counterstatement or evidence by the deadline of 16 November 2021. Nor did it seek any extension of the deadline.
[4] The Assistant Commissioner found that Renault had not discharged its onus of proving it had made genuine use of its trade mark during the applicable non-use period and revoked the Renault trade mark as of 24 November 2020.
[5] Renault appeals the Assistant Commissioner’s decision. Renault seeks leave to adduce further evidence to show that it has made widespread, continuous and genuine use of its MASTER mark.
[6] Renault has also lodged a new application for registration of the MASTER mark in the event its appeal is unsuccessful.
[7] The Commissioner opposes Renault’s appeal and its application to adduce additional evidence. The Commissioner says Renault is attempting to remedy its failure to engage in the initial process, which is contrary to the scheme of the Trade Marks Act 2002 (the Act) and well-established principles regarding appeals. The Commissioner also says it is not certain that the new evidence, if it had been provided to the Assistant Commissioner, would have resulted in the revocation being declined.
[8] The Commissioner also says that any interests Renault may have in the MASTER mark can be taken into account as part of opposition procedures to Allways Hire’s application for registration of its MASTER mark and Renault’s own new application for registration of the MASTER mark.
[9] With the leave of the Court, Allways Hire did not appear at the hearing of the appeal.
Relevant background
[10] On 20 May 2004, Renault’s MASTER mark was registered with effect from 19 November 2003, the date of Renault’s application. The registration was with respect to Class 12 of the Nice Classification.1 The registration was stated to be in respect of: motor vehicles and parts and fittings thereof.
[11] The trade mark was renewed on 18 September 2013. The renewal was effective until 19 November 2023.
[12] On 20 November 2020, Allways Hire applied to register its MASTER mark in the following stylised form: .2
[13] The Allways Hire application sought registration for goods and services in Classes 7, 37 and 44 of the Nice Classification in relation to the hire of machines and equipment for earthmoving, construction and related activities and for the hire of agricultural and horticultural equipment.
1 Regulation 2 of the Trade Marks Regulations 2003 provides that class means a class of goods or services according to the Nice Classification.
Under s 5(1) of the Trade Marks Act 2002:
Nice Classification means the classification of goods and services for the registration of marks published from time to time under the Nice Agreement:
Nice Agreement means the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks adopted at Nice on 15 June 1957, as amended from time to time.
2 The size of the trade mark Allways Hire seeks to register is considerably larger than shown in this judgment.
[14] On 25 November 2020, IPONZ advised Allways Hire, by way of a Trade mark compliance report, that it did not accept the Allways Hire application. The reasons included that:
(a)Section 25(1)(b) of the Act prevented registration of a trade mark that was confusingly similar to a trade mark with earlier priority for the same or similar goods and/or services; and
(b)A search of the Register of Trade Marks had revealed at least one confusingly similar trade mark with an earlier priority for the same or similar goods and/or services.
[15] Attached to the IPONZ report was a search report which identified two registered trade marks for the word Master, including the Renault registration.
[16] On 15 September 2021, Allways Hire applied under ss 65 and 66 of the Act for revocation of the registration of the Renault MASTER mark on the basis that the registration was preventing the Allways Hire application from proceeding to acceptance and registration. The grounds included that the Renault MASTER mark had not been put to genuine use in trade in New Zealand in relation to any of its goods following the date of registration of 20 May 2004 through to 14 September 2021.
[17] By letter dated 16 September 2021, IPONZ advised NZMarks Ltd, agents for Renault, of the Allways Hire application for revocation of the Renault MASTER mark. The letter advised that the deadline for Renault to file a counterstatement and evidence was 16 November 2021.
[18]Renault did not file a counterstatement or evidence.
[19] By decision dated 16 December 2021, the Assistant Commissioner of Trade Marks revoked the Renault MASTER trade mark.
Decision of Assistant Commissioner
[20] The Assistant Commissioner held that, under reg 96(2) of the Trade Marks Regulations 2003 (the Regulations), if the owner or licensee of a registered trade mark fails to provide a counterstatement and evidence within two months of being sent a copy of an application for registration, the Commissioner must determine the application on the documents filed by the applicant.
[21] The Assistant Commissioner found that Allways Hire was an aggrieved person under s 65(1) of the Act. In the absence of any evidence, the Assistant Commissioner found that he could not be satisfied that Renault had discharged its onus of proving it had made genuine use of its trade mark during the applicable non-use period as set out in s 66(1)(a) of the Act.
[22] Accordingly, the Assistant Commissioner held that the Renault MASTER trade mark was revoked.
Renault appeal
[23] By notice dated 3 February 2022, Renault has appealed the Assistant Commissioner’s decision. The notice states that the decision was wrong in fact and law. The notice also seeks leave to adduce further evidence on appeal pursuant to r 20.16 of the High Court Rules 2016.
[24] The grounds of appeal are that Renault had made widespread, continuous and genuine use of the MASTER mark in the course of trade in New Zealand in relation to the goods for which it is registered, including the three years prior to the Allways Hire application and dating back to Renault’s date of application.
[25] The grounds for the application to adduce further evidence are that it is in the interests of justice for leave to be granted given the clear and overwhelming evidence of Renault’s use of the MASTER mark and that Renault’s failure to respond to the Allways Hire application and to file and serve evidence was inadvertent.
Further application by Renault to register MASTER mark
[26] On 21 July 2022, Renault filed a further application for registration of the MASTER mark in relation to Class 12. The application is under examination pending determination of this appeal.
Relevant provisions of Trade Marks Act 2002
[27]Section 3 of the Act provides that the purposes of the Act include to:
(a)more clearly define the scope of rights protected by registered trade marks; and
(b)simplify procedures for registering a trade mark in order to reduce costs to applicants and to reduce business compliance costs generally; and
…
[28] Under s 10, the owner of a registered trade mark has the exclusive right to use, and to authorise others to use, the registered trade mark.
[29] Section 17(1)(a) provides that the Commissioner must not register as a trade mark any matter the use of which would be likely to deceive or cause confusion.
[30] Section 25(1)(b) provides that the Commissioner must not register a trade mark in respect of goods and services that is similar to a trade mark that:
… belongs to a different owner and that is registered, or has priority under section 34 or section 36, in respect of the same goods or services or goods or services that are similar to those goods or services, and its use is likely to deceive or confuse.
[31] Section 34 provides that if different persons separately apply for the registration of trade marks that are identical or similar to each other and are in respect of identical or similar goods or services, the first application received by the Commissioner has priority over all the other applications.
[32] Section 65 provides that an aggrieved person may apply to the Commissioner for the revocation of the registration of a trade mark on any of the grounds set out in s 66.
[33]Under s 66(1), the grounds for revoking a trade mark include:
(a)that at no time during a continuous period of 3 years or more was the trade mark put to genuine use in the course of trade in New Zealand, by the owner for the time being, in relation to goods or services in respect of which it is registered;
[34]Section 66(1A) provides that, for the purposes of s 66(1)(a):
… continuous period means a period that commences from a date after the actual date of registration and continues uninterrupted up to the date 1 month before the application for revocation.
[35] Section 66(2) provides that there are not grounds for revoking a registration for non-use if the non-use is due to special circumstances outside the control of the owner of the trade mark.
[36] Section 67 provides that if an owner intends to oppose an application for revocation of the registration of a trade mark under s 66, the owner must, within the period specified by the Commissioner, provide proof of the use of the trade mark if the ground in s 66(1)(a) forms the basis of the application or raise the special circumstances that justify the non-use of the trade mark if s 66(2) applies.
[37] Section 68(1) provides that if the Commissioner is satisfied the grounds for revocation exist, the Commissioner must:
(a)if the grounds exist in respect of all of the goods or services in respect of which the trade mark is registered, revoke the registration of the trade mark; or
(b)if the grounds exist in respect of only some of the goods or services in respect of which the trade mark is registered, revoke the registration of the trade mark in so far as it relates to those goods or services.
[38] Under ss 170 and 171, persons aggrieved by a decision of the Commissioner may appeal within 20 working days of the decision being given.
[39] Section 172(2) provides that appeals must be heard only on the materials stated by the Commissioner unless a party, either in the manner prescribed or by special leave of the court, brings forward further material for the consideration of the court.
[40] Section 173 provides that, in determining an appeal the Court may do any of the following things:
(a)confirm, modify, or reverse the Commissioner’s decision or any part of it;
(b)exercise any of the powers that could have been exercised by the Commissioner in relation to the matter to which the appeal relates;
(c)in the case of an appeal against the registration of a trade mark, permit the trade mark proposed to be registered to be modified in any manner that does not substantially affect its identity. However, in any such case, the trade mark as so modified must be advertised in the prescribed manner before being registered.
[41] Section 199 provides that regulations may be made for all or any of the purposes set out in the section. These include prescribing procedures, requirements, and other matters, not inconsistent with the Act, in respect of the registration, or renewal or alteration or cancellation, of trade marks under the Act.
Relevant provisions of Trade Marks Regulations 2003
[42] Regulation 96(1) of the Regulations provides that the owner of a trade mark that is the subject of an application for revocation for non-use may oppose the application by filing, within two months of being sent the application, a counter- statement and evidence of the use of the mark or of special circumstances of the kind referred to in s 66(2).
[43]Regulation 96(2) provides:
If the owner or licensee does not, within the period specified, file the counter- statement and, if applicable, evidence of use of the mark or of the special circumstances, the Commissioner must determine the application on the documents filed by the applicant.
Rule 20.16 of High Court Rules 2016
[44]Rule 20.16 of the High Court Rules provides:
(1)Without leave, a party to an appeal may adduce further evidence on a question of fact if the evidence is necessary to determine an interlocutory application that relates to the appeal.
(2)In all other cases, a party to an appeal may adduce further evidence only with the leave of the court.
(3)The court may grant leave only if there are special reasons for hearing the evidence. An example of a special reason is that the evidence relates to matters that have arisen after the date of the decision appealed against and that are or may be relevant to the determination of the appeal.
Evidence Renault seeks to adduce
[45] Renault seeks to put in evidence an affidavit affirmed on 30 November 2022 by Beatrice Levy Moulin, Intellectual Property Director of Renault.
[46] Ms Moulin states that Renault has designed, manufactured and sold light commercial vehicles under the MASTER trade mark since 1980 and has sold light commercial vehicles under the MASTER trade mark in New Zealand since 2012. Ms Moulin states that sales in New Zealand since 2012 comprise 881 MASTER vans; 125 MASTER campervan conversion vehicles; and 26 MASTER minibus vehicles.
[47] Ms Moulin says Renault licences Renault New Zealand Ltd to sell MASTER vehicles via the Renault dealer network and that the vehicles can currently be purchased from 15 dealerships across New Zealand.
[48] Ms Moulin provides images of the MASTER van taken from the Renault New Zealand website and a catalogue for the MASTER range.
[49] Ms Moulin offers no explanation as to why Renault did not file a counter- statement or evidence in opposition to the Allways Hire application for revocation of the Renault MASTER mark.
Submissions by counsel for Renault
[50] Mr Oliver-Hood, counsel for Renault, says Renault does not dispute that the Commissioner’s decision was properly made on the basis of the documents filed by Allways Hire and in accordance with ss 66 and 67 of the Act and reg 96 of the Regulations. In that respect, Renault does not pursue the statement in its notice of appeal that the decision was wrong in fact and law.
[51] Renault’s case is that, even if the decision was properly made, it is open to the Court to grant leave to Renault to adduce evidence to show that, if that evidence had been available to the Assistant Commissioner, Renault’s MASTER mark would not have been revoked. Mr Oliver-Hood submits that it is in the interests of justice and consistent with the purpose and functions of the Act to allow the appeal and direct that the MASTER registration be restored to the register.
[52] Mr Oliver-Hood accepts that the power to allow further evidence is to be exercised sparingly and that the cogency, relevance and possible effect of the evidence on the result must be taken into account. However, Mr Oliver-Hood submits that the interests of justice must govern the question of whether special leave should be granted for further material to be brought forward in accordance with s 172(2) of the Act.
[53] Mr Oliver-Hood refers to DaimlerChrysler AG v Sany Group Ltd, where Miller J accepted that trade mark cases display features that make the task of an applicant to adduce further evidence under r 20.16 of the High Court Rules a little easier in practice because of the public interest in ensuring that the monopoly rights in a trade mark are not conferred in error.3 In that decision, Miller J had been satisfied there were special reasons to allow further evidence to be adduced.
[54] Mr Oliver-Hood also refers to Reiss (Holdings) Ltd v Network Clothing Company (Sales) Pty Ltd, where Mallon J accepted there was some public interest in the register reflecting the market and some efficiency in having the register accurately reflect the current position.4 In that decision, Mallon J also granted leave to adduce further evidence.
[55] Mr Oliver-Hood says that, given the evidence of Renault’s continuous use of the MASTER mark, it is likely that, even if the revocation were upheld, Allways Hire’s application for registration of its mark would be unlikely to succeed and Renault’s new application for registration would likely be granted. In these circumstances, the more efficient course would be to grant the appeal and restore Renault’s mark to the register.
3 DaimlerChrysler AG v Sany Group Ltd HC Wellington CIV-2008-485-2333, 22 April 2009 at [6].
4 Reiss (Holdings) Ltd v Network Clothing Company (Sales) Pty Ltd HC Wellington CIV-2007-485- 2571, 19 May 2008.
[56] Mr Oliver-Hood acknowledges the evidence Renault seeks to adduce is not fresh and could have been presented to the Assistant Commissioner. However, he submits that the cogency and relevance of the evidence is such that it should be admitted. This is not a case of Renault using the first instance hearing as a dummy run, as discussed in Telecom Corporation of NZ Ltd v Commerce Commission.5 Nor has Renault’s registration been clogging up the register like an abandoned vessel in the shipping lanes of trade, as discussed by Jacob J in Laboratoire de la Mer Trade Marks.6 Renault has been making full use of the mark. Mr Oliver-Hood acknowledges, however, that it is possible that, if the Assistant Commissioner had heard the evidence, he might have “trimmed down” the scope of the mark in exercise of the powers in s 68(1) of the Act.
Submissions on behalf of the Commissioner
[57] Mr Connolly, counsel for the Commissioner, submits that the Act sets out a prescriptive process for the revocation of trade marks. In the absence of a counter- statement and evidence from Renault, the Assistant Commissioner was entitled to make a decision on the basis of the Allways Hire application. Further, it would be contrary to the scheme of the Act and well-established principles regarding appeals to allow Renault now to adduce evidence that it could have but failed to present to the Commissioner.
[58] Mr Connolly notes that, as discussed in Laboratoire de la Mer and by the Supreme Court in Crocodile International Pte v Lacoste, s 66(1), is a “use it or lose it” provision.7 The onus placed on the owner by s 67 reflects a deliberate and intended policy outcome; namely, that an owner risks losing registration of a trade mark if it fails to file a counter-statement and evidence in reply to an application for revocation. It would run counter to that policy outcome for the Court to allow a party that failed to engage with the first instance process then to adduce evidence and, in effect, turn an appeal into a first instance hearing.
5 Telecom Corporation of NZ Ltd v Commerce Commission [1991] 2 NZLR 557 (CA) at 558.
6 Laboratoire de la Mer Trade Marks [2002] FSR 51 (Ch) at [19].
7 Crocodile International Pte v Lacoste [2017] NZSC 14, [2017] 1 NZLR 679 at [51].
[59] Mr Connolly says that the principles that apply to applications to adduce evidence on appeal are clear. The Court of Appeal’s decisions in Rae v International Insurance Brokers (Nelson Marlborough) Ltd and Hodgson v Hodgson establish that admitting further evidence on appeal is exceptional rather than routine, and that evidence that is not fresh should not be admitted unless the circumstances are exceptional and the grounds compelling.8 Mr Connolly submits that questions of credibility and cogency and the interests of justice fall for consideration only after those thresholds have been satisfied.
[60] Mr Connolly submits that the present case is on all fours with the situation considered by the Court of Appeal in ICE SA v Swatch AG (Swatch SA) (Swatch Ltd).9 In that decision, the Court of Appeal held that it would be fundamentally wrong to grant an application to admit further evidence on an appeal against a decision by the Commissioner, which was upheld by the High Court, declining an application to register a trade mark where the applicant acknowledged that the evidence was not fresh and should have been presented in a wider way to the High Court.10
[61] Mr Connolly says that, by its own admission, Renault has provided no evidence of exceptional circumstances to explain its failure to present to the Assistant Commissioner the evidence it now seeks leave to adduce. Therefore, there is no basis for admitting the evidence regardless of its credibility and cogency and regardless of other public interest considerations.
[62] Moreover, Mr Connolly says it is far from certain that, if the evidence had been before the Assistant Commissioner, the outcome would have been to uphold the registration of the Renault MASTER mark in full as contended by Mr Oliver-Hood. As registered, the mark applied across the broad class of “motor vehicles and parts and fittings thereof”. On the basis of Ms Moulin’s evidence, it appears the MASTER mark has been used only in respect of vans and related vehicles. Given the powers in s 68(1) to revoke a registration in part where use in New Zealand has been established only in respect of some of the goods and services covered by the mark, it is quite possible the
8 Rae v International Insurance Brokers (Nelson Marlborough) Ltd [1998] 3 NZLR 190 (CA) at [192] – [193]; Hodgson v Hodgson [2015] NZCA 404, [2015] NZFLR 979 at [40] – [ 44].
9 ICE SA v Swatch AG (Swatch SA) (Swatch Ltd) [2013] NZCA 654.
10 At [18]
Assistant Commissioner would have revoked the generality of the registration and limited it only to vans and related vehicles.
[63] For the same reason and given the very different businesses of Renault and Allways Hire, Mr Connolly says it is also far from certain that upholding the Renault MASTER mark, particularly if upheld only in part, would mean the Allways Hire application to register its mark would fail. The Commissioner might well conclude that there would be no risk of confusion if the two marks were on the register.
[64] In that regard, Mr Connolly submits that the public interest lies more strongly in upholding the Assistant Commissioner’s decision and allowing the registration applications of Allways Hire and Renault, including the exercise of rights of objection, to play out. Mr Connolly says that, if Renault’s original registration were restored, there would be a risk that s 25 of the Act would continue to operate as a barrier to Allways Hire progressing its application because the inquiry at that point is only as to whether the goods and services to which the proposed mark will apply are similar to those to which the registered mark applies. By contrast, if neither mark is registered, the inquiry under s 17 will be on whether the use of the marks would be likely to deceive or cause confusion. In the circumstances of the two application, the Commissioner might well conclude there was no risk of deception or confusion if both marks were registered, albeit with some adjustment of scope.
Analysis
[65] It is common ground that an appeal against a decision of the Commissioner or Assistant Commissioner under s 66 of the Act is a general appeal to which the principles set out by the Supreme Court in Austin, Nichols & Co Inc v Sticting Lodestar apply.11 The appeal court must be persuaded the Assistant Commissioner’s decision was wrong but, in reaching that view, no deference is required beyond the customary caution regarding the evaluation of witnesses where credibility is at issue.12
11 Austin, Nichols & Co Inc v Sticting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141.
12 At [13].
[66] Even to re-state those familiar principles is to highlight the unusual nature of the appeal. As Mr Oliver-Hood accepts, it cannot be said the Assistant Commissioner’s decision was wrong. Section 67 of the Act required Renault to provide proof of use of its MASTER trade mark if it intended to oppose the Allways Hire revocation application. Because Renault failed to provide any such proof, reg 96 of the Regulations required the Assistant Commissioner to decide the application on the basis of the Allways Hire application. That application asserted there had been no use of the Renault MASTER mark. In these circumstances, the Assistant Commissioner took the only course open to him and revoked the Renault trade mark.
[67] In accordance with s 172 of the Act, unless Renault obtains leave to adduce the evidence in Ms Moulin’s affidavit, the appeal must be heard only on the materials stated by the Commissioner. In that case, the appeal must fail for the reasons already stated.
[68] Accordingly, Renault’s appeal is not, other than in form, an appeal against the Assistant Commissioner’s decision, even if filed within the 20 working days mandated by s 171. In substance, it seeks a rehearing of the Allways Hire application, but this time on the basis of the evidence it should have and could have provided to the Assistant Commissioner. The principal question for decision, therefore, is whether to grant special leave, as required by s 172, to adduce that evidence.
[69] In accordance with r 20.16(3) of the High Court Rules, Renault must satisfy the Court there are “special reasons” for hearing the evidence. Even without reference to previous decisions, it is apparent that Renault’s application cannot meet that threshold. The Act prescribes a procedure that must be followed if the owner of a registered trade mark intends to oppose an application for revocation of that mark. Renault failed to follow that procedure. Renault has provided no explanation for that failure. Whatever the merits of its substantive case for registration of the mark, there are no special reasons for granting Renault’s application.
[70] I agree with Mr Connolly that to grant Renault’s application would be contrary to the scheme of the Act. The Act grants the holder of a registered trade mark monopoly rights over the use of that mark. To meet the statutory purpose of defining
the scope of rights protected by a registered trade mark, those monopoly rights must be exercised in accordance with the rest of the Act. The Act provides procedures for others to apply for registered trade marks and to apply for revocation of trade marks that have already been registered in order to advance their own applications for registration. In the latter case, the Act prescribes the actions that the owner of a registered trade mark must take if it wishes to oppose an application for revocation of the trade mark. The Act and the Regulations made under it prescribe the evidence that can be taken into account when decisions are made on an application for revocation.
[71] To allow the holder of a registered trade mark that has failed to comply with these prescriptions to adduce on appeal evidence that it could have adduced earlier would be to put the applicant for revocation and the Commissioner to additional costs and burdens. That would not be consistent with the statutory purpose of simplifying procedures for registering a trade mark in order to reduce costs to applicants and reducing business compliance costs generally. Nor would it be consistent with the “use it or lose it” character of s 66 of the Act which s 67 is clearly intended to reinforce.
[72] The above conclusions are reinforced by the decisions of the Court of Appeal on applications for leave to adduce additional evidence, including in relation to appeals under the Act.
[73]In Rae v International Insurance Brokers, the Court of Appeal stated:13
The principles upon which further evidence is admitted are designed to balance the interests of the person seeking to adduce such evidence on the one hand with the interests of the opposite parties on the other. They are also designed to reflect the public interest in ensuring, so far as is possible, that parties put up their best case at trial. Any other approach would be very wasteful of public resources. The conventional requirements are that the further evidence must be fresh, it must be credible and it must be cogent. Evidence is not regarded as fresh if it could with reasonable diligence have been produced at the trial.
… While the absence of freshness is not an absolute disqualification, the criteria for admission in such circumstances must be very strict. In our view, when the evidence is not fresh it should not be admitted unless the circumstances are exceptional and the grounds compelling. In addition, it will need to pass the tests of credibility and cogency.
13 Rae v International Insurance Brokers (Nelson Marlborough) Ltd, above n 8, at [191] – [192].
[74] That case concerned the application of the rule in the Court of Appeal Rules 1955 concerning the admission of further evidence. That rule required special leave to adduce further evidence and special grounds unless the further evidence related to matters subsequent to the decision at trial. In that respect the rule is similar to the combined effect of s 172 of the Act and r 20.16 of the High Court Rules, which require special leave and special reasons for that leave.
[75] The above passage from Rae v International Insurance Brokers was cited with approval by the Court of Appeal in Hodgson v Hodgson, even though, in that case, what the Court described as the “lower standard” of the interests of justice applied, rather than the special reasons standard in r 20.16(3).14
[76]With respect to the interests of justice the Court stated:15
… the interests of justice require the parties to put their best case forward at trial in order to avoid wasting the Court's limited time and resources. A high value must be placed on finality when the parties have been afforded that opportunity and failed to take it. Before it will be admitted anew on appeal, the interests of justice thus require that known but unused evidence be credible and cogent; and that the appellant should point to compelling circumstances causing the omission of that evidence at trial. The standard to be met is rightly high.
[77] It follows that whether the higher standard of special reasons in r 20.16(3) or the lower standard of the interests of justice applies, an applicant for leave must point to compelling circumstances causing the omission of the evidence at the first hearing.
[78] It is unnecessary to decide whether an applicant must show compelling circumstances before questions of cogency and credibility are considered. Whether the questions are considered sequentially or together, it is still necessary to point to compelling circumstances that relate to the omission of the evidence at first hearing. Renault has offered no explanation as to why it failed to put the evidence before the Assistant Commissioner. It follows that its application must fail.
[79] That conclusion is confirmed by the Court of Appeal’s decision in ICE SA v Swatch SA, where the questions at issue were largely the same as those raised by
14 Hodgson v Hodgson¸ above n 8, at [36] – [37] and [42].
15 At [44].
Renault’s application for leave.16 The fact it concerned a second appeal does not alter the principles at issue. Moreover, r 45 of the Court of Appeal (Civil) Rules 2005 requires only that the leave of the Court be obtained for the admission of further evidence. Unlike r 20.16, it imposes no requirement for “special leave”. Arguably the applicant had to meet a lower standard than Renault must meet in the present case.
[80] In ICE SA v Swatch SA, the Court said that if it admitted the evidence in that case, it could not consistently refuse any other application to admit evidence that was not fresh and which should have been adduced earlier, whether at the High Court or at first instance. The Court held that such an outcome would run directly against r 45 “and the firmly established and soundly based principles that govern its application.”17
[81] The same considerations apply here. If Renault’s application were granted, the Court would have little basis for declining an application to adduce further evidence that was asserted to be cogent and credible, regardless of whether the evidence was fresh and regardless of the reasons that evidence that was not fresh had not been adduced at first instance. That would be contrary to the clear policy of the Act that applications for revocation must be dealt with efficiently and without imposing unnecessary cost. It would also be inconsistent with the requirement for special leave set by r 20.16 and the decisions of the Court of Appeal on how that requirement is to be applied.
[82] The observations of DaimlerChrysler AG and in Reiss (Holdings) concerning the public interest in ensuring that the monopoly rights in a trade mark are not conferred in error, and in the register reflecting the market, do not bear in this context. In addition, in each of those cases, the applicant had put forward relevant material for consideration at first instance.18 In Reiss (Holdings¸ Mallon J was satisfied the applicant was looking to introduce only new evidence that it said it was not properly on notice about.19 Those circumstances do not arise in the present case.
16 ICE SA v Swatch SA (Swatch SA) (Swatch Ltd), above n 9.
17 At [18].
18 DaimlerChrysler AG v Sany Group Ltd, above n 3; Reiss (Holdings) Ltd v Network Clothing Company (Sales) Pty Ltd, above n 4.
19 Reiss (Holdings) Ltd v Network Clothing Company (Sales) Pty Ltd, above n 4, at [28].
[83] For all these reasons, Renault’s application for leave to adduce evidence must be dismissed. Because the evidence is excluded, Renault’s appeal must also be dismissed. On the evidence before the Assistant Commissioner, the decision to revoke Renault’s MASTER mark was mandated by the Act and the Regulations and was clearly correct.
[84] It is unnecessary in these circumstances to canvas the other submissions made by counsel regarding the possible consequences of admitting the evidence and the related public interest considerations they discussed. For completeness, however, I record that I agree with Mr Connolly that it is far from clear that the Assistant Commissioner would have upheld the Renault MASTER mark in its entirety if the information in Ms Moulin’s affidavit had been in evidence. While Renault may have used the mark, its use was far from comprehensive, given the scope of the goods and services for which the mark was registered. In that respect, the scope of the registration could well have been seen as at least a partial clog on the register.
[85] On the other hand, I decline to speculate on whether the public interest would be better served by allowing the current application processes to run their course rather than by upholding the appeal and restoring the registration of the Renault MASTER mark, as suggested by Mr Connolly.
[86] I do not consider that s 25 operates as an automatic barrier to progressing an application for registration of a trade mark that is similar to a trade mark that has already been registered. The assessment required by s 25(1)(b) is not just whether the two trade marks are in respect of similar goods and services but also whether “use” of the new trade mark would be likely to deceive or confuse. In that regard, the IPONZ compliance report on the Allways Hire application for registration conflated the two elements of the assessment into an inquiry as to whether the two trade marks were “confusingly similar”. That approach risks misapplying the Act. However, the decision on the Allways Hire application under s 25 is not before the Court on this appeal.
Result
[87] Renault’s application for special leave to adduce additional evidence is dismissed.
[88] Renault’s appeal against the decision of the Assistant Commissioner revoking registration of Renault’s MASTER trade mark is dismissed.
Costs
[89]Mr Oliver-Hood requests the opportunity to be heard on costs.
[90] Given the above result and the reasons for it, and the low prospects of Renault’s appeal succeeding given the weight of Court of Appeal decisions, I see little scope for Renault avoiding an order for at least 2B costs in the usual way.
[91] If Mr Oliver-Hood wishes to make submissions on why such an order should not be made, he may file a memorandum of no more than five pages by 20 March 2023.
[92] Any memorandum in reply, also of no more than five pages, may be filed by 10 April 2023.
G J van Bohemen J
3
1