A recent decision of the Australian Trade Marks Office has assessed in detail the application of regulation 21.19 of the Trade Mark Regulations 1995 (the Regulations), following the changes to evidence provisions that came into effect on 15 April 2013.
Fed Square Pty Ltd v Federation IP Pty Ltd  ATMO 42 concerned an application for an extension of one month for the opponent to file evidence in support of two oppositions. The opponent sought the extension under regulation 5.15(a) of the Regulations, but also applied for the admission of that same evidence to be considered under regulation 21.19. The case is one of the first to consider the application and operation of regulation 21.19 in detail since the new evidence provisions came into effect.
The application of regulation 5.15(a) was considered first, but the extension was refused on that ground. The Delegate found that the opponent had not acted promptly and diligently at all times to ensure the filing of the evidence within the relevant period.
The Delegate then turned to consider whether the evidence should be allowed under regulation 21.19. This regulation provides:
Registrar may use information available
(a) information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b) the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c) the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d) provide the information to the party; and
(e) give the party a reasonable opportunity to make representations about the information.
(2) For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
The Delegate allowed the evidence under regulation 21.19, finding that it was of high probative value and likely to significantly affect the substantive opposition in contrast to an opposition run without it. Furthermore, the Delegate considered that the public interest in hearing the opposition on its merits and the intention of the new legislation to resolve oppositions efficiently outweighed the inconvenience to the party and the danger of circumventing the conventional evidence process.
The Delegate highlighted a number of important considerations regarding the application of regulation 21.19:
- The application of regulation 21.19 is discretionary. The Registrar may take into account information available on their own initiative, but is not required to and cannot be compelled to do so.
- It is not sufficient to highlight that the material sought to be admitted under regulation 21.19 is relevant to the proceedings. It is still at the discretion of the Registrar to decide whether to consider the information.
- Material admitted under regulation 21.19 is not limited in type, nor is it limited to a particular point in time at which it may be considered.
- Regulation 21.19 should not be interpreted as a substitute for the repealed further evidence provisions, or any available evidence stage, and parties should not try to circumvent the new extension of time provisions on the assumption that regulation 21.19 will apply.
- In considering whether to consider information under regulation 21.19, the nature and significance of the evidence put forward must be considered. Whether the material is of high probative value will be a crucial factor in determining its admission.
The application of regulation 21.19 in the future should continue to be monitored. Although the intention of the regulation is not to be a substitute for other evidence stages, it may well act as such if the primary consideration for the admission of evidence under that regulation is that it is of high probative value. In any event, it is apparent that caution must be exercised when seeking to rely on evidence under regulation 21.19 and it cannot be assumed that evidence will necessarily be admitted under that regulation.
This article first appeared here on 15 September 2015 in the INTA Bulletin, and was republished with permission from the International Trademark Association (INTA).