G8 applied for permission to file further evidence in relation to Light Path’s opposition to G8’s LE GEAR trade mark application.
Evidence in Support, Answer and Reply were filed by the respective parties in relation to the opposition to the registration of the LE GEAR trade mark. Following this, the matter was set down for Hearing and the opponent (Light Path) filed its written submissions to be relied upon at the Hearing.
Following the serving of its written submissions, G8 applied for permission to file further evidence, in the form of a declaration outlining the use in detail (not included in its earlier evidence) that it had made of its LE GEAR trade mark including sales and marketing figures. Much of this was previously submitted to the Trade Marks Office in support of G8’s trade mark application.
In opposing this further evidence, Light Path noted a convenience in G8 producing this additional evidence only after it had filed its Hearing submissions that noted the lack of sales or marketing figures.
It appears as though G8 failed to file this key evidence as a result of some misunderstanding of the opposition process, but it argued that such evidence is essential for the matter and if it was to not be considered by the Hearing Officer, the likely result is that G8 would be forced to file an appeal in relation to the matter where the evidence could be considered by the Courts.
The Hearing Officer settled on three key criteria for making his decision:
1. The Evidence could have been obtained earlier;
2. The Evidence is likely to bear on the outcome of proceedings; and,
3. The Evidence is credible.
The Hearing Officer makes little comment on point 1, but forms the strong view that the evidence is key to the matter and credible.
Ultimately, the Hearing Officer seems to rely on the likely need for an appeal to address the matter should the evidence not be allowed, concluding that ‘[i]f the Evidence were not permitted to be served, it is of such apparent weight that an appeal could be necessary in order that the relevance of the Evidence be argued before the Court. Therefore, although the need to serve the Evidence has arisen through the Applicant’s misunderstanding of the procedure adopted in matters before the Registrar, I consider, on balance, that it is appropriate that permission to serve and file the Evidence be granted.’
The further evidence was allowed and Light Path given a further two months to file any further evidence of its own.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Litigation Team, Trade Marks Team
Trade Marks Team