Soncini v Registrar of Trade Marks

REASONS FOR JUDGMENT 1 This is an appeal, pursuant to s 104 of the Trade Marks Act 1995 (Cth) ("TM Act") from a decision of a delegate of the Registrar of Trade Marks given on 30 August 2000. For convenience, I refer to the delegate as the Registrar. 2 On 25 November 1999, the second respondent ("Warnaco") applied, pursuant to s 92(1) of the TM Act, for orders removing from the Register three trade marks in the applicant's name ("the Trade Marks"). The principal ground of each application was that the applicant had not, during the period specified in s 92(4)(b) of the TM Act,used the Trade Marks in good faith in Australia in relation to the relevant goods. The non-use period specified in s 92(4)(b), in the circumstances of this case, was the three year period from 25 October 1996 to 25 October 1999. Warnaco's application was correctly brought under the TM Act and not its predecessor, the Trade Marks Act 1955 (Cth): see TM Act, s 251. 3 The Trade Marks were as follows: · No 637440 for bEWARE · No 637441 for bEWARE dESIGNS · No 637442 for bAby bEWARE Each of the Trade Marks was registered in class 25 in respect of "all types of clothing, headgear, footwear for men, women and children". Each has a registration date of 11 August 1994. 4 The circumstances of the present case are a little unusual. The applicant's then solicitors filed notices of grounds of opposition to the non-use applications on 23 December 1999, in accordance with s 96 of the TM Act. The applicant failed, however, to file any evidence in support of these grounds within the prescribed time of three months from the date of filing of the non-use applications: see Trade Marks Regulations 1995 (Cth), regs 5.7, 9.4. In these circumstances, the Registrar held that the opponent to the applications(the present applicant) had not discharged the onus imposed on him by s 100(1) of the TM Act to rebut the allegations of non-use made by Warnaco. Accordingly, the Registrar ordered that the Trade Marks be removed from the Register. The applicant was ordered to pay the second respondent's costs. 5 After the Registrar gave the decision, the applicant's current solicitors inquired of IP Australia as to whether it was possible to apply for an extension of time under s 224 of the TM Act in which to file evidence in opposition to the non-use application. Section 224(2) provides as follows: "If, because of: (a) an error or omission by the person concerned or by his or her agent; or (b) circumstances beyond the control of the person concerned; a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act." The applicant's solicitors received a negative response from a representative of IP Australia. Although the basis for that response is not made explicit in the evidence, Mr Webb, who appeared for the applicant, suggested that the representative had taken the view that the failure to take the very step required by the Trade Marks Regulations cannot itself be an "error or omission" for the purposes of s 224(2)(a) of the Trade Marks Act: cf Kimberly-Clark Ltd v Commissioner of Patents (No 3) (1988) 84 ALR 685 at 695, per Jenkinson J. In any event, the applicant's solicitors accepted that there was no alternative but to file an appeal against the Registrar's decision. 6 Section 197 of the TM Act provides that, on hearing an appeal against a decision of the Registrar, the Court may, inter alia: "(a) admit further evidence orally, or on affidavit or otherwise; (b) …; (c) …; (d) affirm, reverse or vary the Registrar's decision or direction; (e) give any judgment, or make any order, that, in all the circumstances, it thinks fit; (f) …". 7 An "appeal" under s 104 is not an exercise of the appellate jurisdiction of the Court, but of its original jurisdiction: Jafferjee v Scarlett (1937) 57 CLR 115, at 119, per Latham CJ; Eclipse Sleep Products Inc v Registrar of Trade Marks (1957) 99 CLR 300, at 308, per Dixon CJ, Williams and Kitto JJ. It follows that it is not necessary on the appeal to determine whether the decision of the Registrar was correct when made: Jafferjee, at 119; Malibu Boats West Inc v Catanese (2000) AIPC 91-605, at 37,914, per Finkelstein J. 8 Warnaco has chosen to play no part in the hearing of the appeal. At the scheduled hearing of the appeal on 15 March 2001, Mr Webb appeared on behalf of the applicant and Ms Marsic appeared for the Registrar. 9 At that hearing, Mr Webb sought to rely on two affidavits that detailed the extensive use made by the applicant of the Trade Marks during and after the relevant period. These affidavits, of course, had not been before the Registrar. I indicated to Mr Webb that, although I had formed no concluded view about the scope and proper exercise of the discretion conferred by s 197(a) of the TM Act, there seemed to me to be an issue as to whether I should exercise the discretion in the applicant's favour. I particularly had in mind the absence of any explanation as to why the applicant had put no evidence to the Registrar in opposition to the non-use application. Mr Webb thought it prudent to seek an adjournment to allow further evidence on this issue to be prepared. The adjournment was granted. 10 During the adjournment, additional affidavits were filed on the applicant's behalf. They were duly served on both respondents. At the adjourned hearing, the only appearance apart from Mr Webb on behalf of the applicant was again that of Ms Marsic for the Registrar. Mr Webb read the additional affidavits in support of the applicant's case. 11 The evidence shows that the applicant gave instructions to his then solicitors not only to file grounds of opposition to the non-use applications, but to file evidence in support of his opposition to the application. In response to a request from his solicitors, the applicant sent by express post certain documentary material for incorporation in affidavits. It appears that this material may not have reached the solicitors. In any event, the solicitors did not take steps to ensure that affidavits were filed on the applicant's behalf within the time prescribed by the Trade Marks Regulations. 12 The first question is whether the substantiative affidavits on which the applicant now relies should be admitted into evidence on the appeal pursuant to s 197(a) of the TM Act given that the applicant adduced no evidence before the Registrar. On one view, s 197(a) of the TM Act could be read as implying that the power conferred on the Court to admit further evidence is enlivened only where there was some evidence before the Registrar. Otherwise (so it might be argued) the evidence could not be described as "further evidence". 13 The Registrar submitted that the words "further evidence" should not be given a narrow construction. Ms Marsic contended that s 197(a) is designed to enable the Court to have before it all evidence relevant to the substantive matters in dispute. Mr Webb adopted this submission, but added that an important factor to take into account is the public interest in ensuring that the merits of a non-use application are addressed: cf Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136, at 143, per Kitto J. The public interest, so he argued, supports a broad view of the power in s 197(a). 14 I am inclined to the view that this construction of s 197(a) is correct. Section 197(a) is intended to be facultative. Moreover, the sub-section confers powers on a Court exercising original, not appellate, jurisdiction. Subject to discretionary considerations, there is no obvious legislative policy suggesting that the Court should be precluded from receiving evidence on the "appeal" merely because none was before the Registrar. On the contrary, unless the Court can receive the evidence, it may well be precluded from giving effect to the public interest. The sub-section should therefore not receive a narrow construction. 15 In any event, as Mr Webb pointed out, this is not a case where there was no evidence before the Registrar. The non-use application was supported by statutory declarations filed on behalf of Warnaco, in compliance with reg 9.1 of the Trade Marks Regulations. The Registrar appears to have decided not to hold a hearing, presumably because the applicant (that is, the opponent in the non-use application) had filed no evidence: see TM Act, s 99; reg 21.16. Nonetheless, the Registrar had Warnaco's statutory declarations before him and their contents amounted to evidence: reg 21.17. Thus, even if the expression "further evidence" in s 197(a) is satisfied only where there was at least some evidence before the Registrar, the affidavits relied on by the applicant in this Court can be described as "further evidence" in that sense. 16 It follows that there is a discretion, pursuant to s 197(a) of the TM Act, to admit the evidence tendered on behalf of the applicant in support of the appeal. In my opinion, the discretion should be exercised in favour of admitting the evidence. The applicant has shown that he intended to file evidence in opposition to the non-use application before the Registrar. The fact that he did not file evidence within the prescribed period resulted from a combination of his solicitors' failure to implement his instructions and certain documents going astray in the post. 17 It is unnecessary to consider in detail the substantive evidence adduced on behalf of the applicant. It shows that each of the Trade Marks "bEWARE" and "bEWARE designs" was used with the applicant's permission, by a company, Barrowish Pty Ltd, in which he had an interest. This is taken to be use of the two Trade Marks by the owner thereof: TM Act, ss 7(3), 8(2). The evidence is sufficient to establish, in my opinion, that each of the Trade Marks "bEWARE" and "bEWARE designs" was used by the applicant during and after the period specified in s 92(4)(b) of the TM Act (that is, 25 October 1996 to 25 October 1999) on and in relation to clothing for women. That use was "ordinary and genuine" and was therefore bona fide: see Imperial Group Ltd v Philip Morris & Co Pty Ltd [1982] FSR 72, at 79-80, per Lawton LJ. 18 The evidence equally clearly establishes that there was no use by the applicant of the Trade Mark "bAby bEWARE" during the relevant period. Mr Webb acknowledged this, but submitted that there was a discretion not to remove this Trade Mark from the Register if sufficient reason appeared for leaving it there (Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158, at 221, per McLelland J (and authorities cited there)). He further submitted that the discretion should be exercised in the applicant's favour. Mr Webb contended that the prominence of the word "bEWARE" in the "bAby bEWARE" mark and the fact that the registration was for identical goods as the other Trade Marks suggested that the use of the "bAby bEWARE" mark by anyone other than a person acting with the authority of the registered proprietor would be likely to "deceive or cause confusion" within the meaning of s 10 of the TM Act. This, so he argued, was sufficient reason to restore the "bAby bEWARE" mark to the Register. 19 Not without some hesitation, I accept the argument advanced by Mr Webb in relation to the "bAby bEWARE" mark. I have not had the advantage of hearing a contradictor on this issue. In the absence of such a contradictor, I think that the risk that use of the mark would deceive or cause confusion is sufficient to justify an exercise of discretion in the applicant's favour. 20 I propose to make the following orders: