Reiss Holdings – Late Evidence and the Removal of Trade Marks

Network Clothing Company v Reiss Holdings Ltd [2008] ATMO 35 (27 May 2008): http://www.austlii.edu.au/au/cases/cth/ATMO/2008/35.html

The Trade Mark Office has recently dealt with the issue of filing late evidence and its implication in s92 proceedings for the removal of a trade mark from the Register.

The opposition dealt with three issues described at [11]:

“…. The first relates to the proposed direction under regulation 5.16 to set a new date for the filing of evidence in support of the opposition. The second deals with Network’s request that the Registrar invoke the provisions of s224(1) and s224(3) due to an office error and..”

The third issue was perhaps of most interest, but interrelated with the issues above. It was addressed at [20] and was in relation to the Registrar’s failure to comply with section 97 of the Act.

Section 97(1) of the Act provides that ‘If there is no opposition to an application to the Registrar under subsection 92(1), the Registrar must remove the trade mark from the Register in respect of the goods specified in the application.

As a notice of opposition was not lodged within the requisite timeframe Reiss argued that the Registrar had no discretion and must remove the trade mark from the Register.

At [37]-[40] the Hearing Officer said:

37. The early filing of a copy of Network’s notice of opposition and evidence has established that it was Network’s clear intention to oppose the removal of its trade mark. I have come to the conclusion that had Network been informed of the shortcomings of their opposition, such notification being the normal course of events, then the owner would most likely have filed again in the correct timeframe and have served the documents as required. Indeed, when notified by letter dated the 29th August 2007, a letter which effectively took the place of the notification that should have been sent in May 2007, they quickly took steps to meet all requirements within the specified timeframe. This again demonstrated Network’s intention of mounting a serious opposition.
….
39. As the lapse in time between 11th September and the date of this decision should not be used to compound the initial error made by IP Australia, I propose a direction under regulation 5.16 to allow the opponent 3 months from the date of this decision to file and serve their evidence in support in accordance with regulation 5.7. Such an exercise requires that both parties be allowed to make representations in the matter prior to giving the direction.”