Trade Marks Office procedure

Late evidence in the ATMO

The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 introduced new tougher rules for the filing of late evidence in trade marks oppositions.  The relevant provision is Regulation 5.15 which provides that an extension of time for filing may only be granted if the Registrar is satisfied that:

(a) the party despite making all reasonable efforts and acting promptly and diligently at all times, was unable to file the evidence by the deadline; or

(b) there are exceptional circumstances.

The regulation explains that “exceptional circumstances” includes:

(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;

(b)  an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;

(c)  an order of a court or a direction by the Registrar that the opposition be stayed.

The Explanatory Statement to the Amending Regulations explains:

New regulation 5.15 narrows the circumstances in which the Registrar will grant an extension of time to provide evidence.

The policy and intended operation of this regulation 5.15 is the same as for the corresponding regulation 5.9 at item 2 for the Patent Regulations above…

In the section of the Explanatory Statement relating to Regulation 5.9 of the Patent Regulations, it is stated:

Where a party cannot satisfy the Commissioner that an extension is justified under the test [provided by Regulation 5.9], the Commissioner will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time. (Emphasis added)

This presents a major obstacle to the introduction of late evidence but there is another door that has been left slightly ajar which will be available in some circumstances.

Regulation 21.19 (which was unchanged by the RTB amendments) provides a general discretionary power to the Registrar to inform herself by reference to any information available in the Trade Marks Office.  The Explanatory Statement to the amending regulations said that Reg 21.19 was “not intended to be used as a substitute for the repealed further evidence provisions.”

In the recent case of Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, however, the opponent successfully relied on Reg 21.19 for the admission of late evidence having failed to meet the requirements of Reg 5.15.

The hearing officer noted that the “clear intention is that Regulation 21.19 should not been interpreted as a substitute for the repealed further evidence provisions”  and that “I am being asked to exercise the discretion and allow precisely the same evidence under reg 21.19 that has failed the requirements under the extension of time provisions for evidence in support“.

The Opponent contended, however, that the effect of not permitting the additional evidence would be that it could not support several of its grounds of opposition at the substantive hearing and, unless it succeeded on s 44, would be left with no choice but to appeal to the Federal Court (which would be a de novo hearing) where it could rely on whatever grounds and evidence it then chooses.  The hearing officer appeared to accept that such an outcome would be “at odds with the broader purpose of the relevant ‘Raising the Bar’ amendments, which were to “reduce delays in the resolution of patent and trade marks applications” and to “streamline the opposition process”“.

The hearing officer referred earlier TMO authority (here and here) in relation to the previous extension of time provisions to the effect that it is preferable for oppositions to be decided by the delegate on their merits (on all of the relevant evidence) rather than to have a party whose evidence has been excluded for lateness being left with no alternative but to appeal.

He said that the “nature and significance” of the evidence must be considered and that if the material is of high probative value, that will be “a crucial factor in the determination of whether it should be admitted“.  In circumstances where:

(a) the evidence was immediately available (and in fact had been filed 7 days after the due date); and

(b) constitutes the primary basis for the oppositions including details of the Opponent’s use of, and reputation of, its marks in Australia;

the hearing officer considered that the evidence was “of high probative value and is likely to significantly affect the outcome of the substantive opposition.”  He considered that it was not the intention of the RTB amendments to entirely shut out oppositions where there is serious issue to be heard, the evidence is of high probative value and was submitted shortly after the due date.  Accordingly, the late evidence was accepted.

A final “cautionary note” was added to the decision.  The hearing officer pointed out that parties “should not attempt to circumvent the extension of time provisions under the misguided assumption that Regulation 21.19 will apply in every case.”  He noted that “it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose.

Nevertheless, the hardline that the RTB amendments appeared to have introduced seems to have been slightly softened.

Despite its success, costs were awarded against the Opponent.

Trade Marks Office procedure

Revocation in the ATMO

We know that trade mark infringement proceedings commonly include a cross-claim for revocation of the relevant mark.  Attack is one of the best forms of defence.  Prescribed courts are empowered to remove a trade mark from the register by ss 86-88 and 92 of the Trade Marks Act 1995.  Aside from applications based on non-use, these provisions do not extend this power to the Registrar of Trade Marks.  Once a mark is on the register, you have to go to court to get it off, right?  Not quite.

The Intellectual Property Laws Amendment Act 2006 introduced a new provision to the TMA, s 84A, which permits revocation by the Registrar if the mark should not have been registered in the first place and revocation is reasonable in all the circumstances.  A mark cannot be revoked under this provision, however, unless the Registrar gives the owner notice of her intention to revoke within 12 months of registering the mark.  The owner has a right to be heard.

It appears that in nearly a decade of operation, the discretion conferred by s 84A has only been exercised once.

In FPInnovation Pty Ltd [2012] ATMO 74, a delegate of the Registrar found that 13 registered trade marks ought not to have been registered because they carried misleading or confusion connotations and therefore “a ground under s 43 exists” (don’t get me started on s 43 – the confusion used to have to be inherent in the mark or its application to the relevant goods – apparently no longer).  The delegate’s conclusion that revocation was reasonable in all the circumstances appears to have been primarily based on findings that the applicant had deliberately chosen the misleading marks.

In the recent case of Aleem Pty Ltd [2015] ATMO 33, the facts were that a third-party wrote to the ATMO seeking revocation of the mark REFUELLING SOLUTIONS which had proceeded through to registration unopposed in several classes including “retail and wholesale provisions of and supply of fuels” and “refuelling services.”  The examiner had considered that s 41 TMA presented an obstacle to registration and sought further evidence to support registration under s 41(5) TMA.  That evidence was provided and the mark was registered with a s 41(5) endorsement.  The third-party contended that the mark ought to have been rejected pursuant to s 41(6).  A deputy registrar agreed and wrote to the owner indicating an intention to revoke the registration.  The owner requested a hearing and successfully persuaded the hearing officer that the registration should not be revoked.

The following principles emerge from the decision:

  1. The power to revoke under s 84A must be exercised with “great caution”;
  2. A third-party does not have a right to have a competitor’s trade mark revoked even if the registration is as a result of the registrar’s error;
  3. different delegates reviewing exactly the same material and applying the same law have a different opinion about the appropriate outcome” (wait, what?) and a “change of opinion as to the registrability of a mark did not constitute a basis for revocation of acceptance“.

The hearing officer accepted the holder’s contention that it could not be shown that “the trade mark should not have been registered” and so she did not need to consider the second part of s 84A, i.e. that it is reasonable to revoke the registration, taking account of all the circumstances.

The take home lesson is that s 84A TMA is a very poor alternative to an opposition proceeding.  A third-party writing to the ATMO seeking revocation of a competitor’s wrongly registered mark has no right even to have their letter considered – there is no obligation on the Registrar to consider whether to revoke the registration:s 84A(4) – and no opportunity to be heard if revocation is considered.  Further, the Registrar must be convinced that the mark should never have been registered in the first place (not just that she might have a different view) and that revocation is reasonable in all the circumstances.

It is no wonder the discretion appears to have been exercised only once.

Evidence, Trade Marks Office procedure

Evidence in the Trade Marks Office – Common problems – Part 1

Preparing evidence for opposition proceedings in the Trade Marks Office has its own set of traps for the unwary. Over the next few posts, I will highlight a few common weaknesses in TMO evidence.

Error #1: Ignoring the priority date

For most grounds of opposition, the critical date is the date of lodgement of the trade mark application. It is as at this date that the opposition must be assessed. Despite this, it remains common for parties to file evidence which only (or largely) relates to circumstances after the priority date.[1] Such evidence is often easily attacked as being entirely irrelevant or of very low weight.

In some cases, however, post-priority date evidence can be relevant.[2]

In Conde Nast Publications Ltd v Taylor,[3] Burchett J said:

[I]t is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date. … [I]t is cold common sense to see actual events as capable of illuminating the probabilities already inherent in the situation from which they arose. That evidence of events since the application date is material and admissible was accepted by Gummow J in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 439. As his Honour pointed out, the onus must be borne in mind, and also the difficulty in obtaining evidence of confusion or deception.

Thus, post-priority date evidence may be relevant insofar as it casts light on events as at the priority date.[4] That will not allow a party to rely on evidence of use of a trade mark after the priority date to establish proprietorship, reputation or likelihood of confusion as at the priority date where there was no actual use before the priority date. But evidence of matters after the priority date may be relevant to support an inference of relevant trade mark use and/or a likelihood of confusion existing as at the priority date.

Another limited exception is that evidence of trade mark use after the priority date may be relevant to the discretionary factors to be determined in respect of honest concurrent use under s 44(3).[5]

Evidence from after the relevant date should be used with caution but not necessarily avoided. It will sometimes provide the best evidence available of relevant use or confusion in the market.

[1] For a recent case where no weight was given to evidence from after the relevant date, see Roger Maier v Asos Plc [2014] ATMO 7.

[2] For a recent discussion of some of these authorities, see The H.D. Lee Company Inc v Tracey Taylor [2013] ATMO 49 from [34].

[3] (1998) 41 IPR 505 at 509.

[4] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 per Burchett J at 509; see also Johnson & Johnson v Kalnin (1993) 26 IPR 435 per Gummow J at 439.

[5] PB Foods v Malanda Dairyfoods Ltd (1999) 47 IPR 47 per Carr J at [70]-[72].