Discretion to allow filing of further evidence must be exercised only in exceptional cases

In CheapFlights International Limited v Cheapflights Limited, the controller has refused to grant CheapFlights International Limited leave to file further evidence under Rule 23 of the Trademarks Rules.
On September 10 2002 CheapFlights International Limited applied to register the word mark CHEAPFLIGHTS in Class 43 of the Nice Classification. On advertisement, the application was opposed by Cheapflights Limited. Evidence was filed by the applicant and the opponent under Rules 19, 20, 21 and 22 of the Trademarks Rules.
This decision concerned an application by the applicant under Rule 23 for leave to file additional evidence. Rule 23 states as follows:

No further evidence may be filed unless, in any proceedings before the controller, the controller gives leave to either the applicant or the opponent to file evidence upon such terms as to costs or otherwise as the controller may think fit”.
The applicant sought leave under Rule 23 to file substantial evidence which had been filed in three cancellation actions concerning the parties and which it alleged pertained to the “allegation of bad faith and the allegation that an instance of confusion” had occurred. The controller found, in provisionally refusing the request, that the claims of bad faith and the instance of confusion were mentioned in the notice of opposition and expanded upon in the opponent’s Rule 20 evidence. Therefore, the applicant was clearly aware of, and had an opportunity to respond to, these claims under Rule 21. The controller stated in the letter of provisional refusal that:
while new material may have come to light… nothing has changed in terms of the nature of the objections raised against the application by the opponent to warrant giving the applicant a second bite of the cherry”.
Prior to confirming the refusal, the applicant was afforded an opportunity to be heard. At the hearing, the controller upheld its provisional decision and refused to grant the applicant leave to file further evidence under Rule 23.
The controller noted that the simple and clear purpose and effect of Rule 23 is to bring to a conclusion the evidence-filing phrase of opposition proceedings. The controller also stated that, while he is given discretion to permit the filing of further evidence, that discretion must be exercised only where exceptional circumstances are shown to exist.
The controller found that the correct principles to be applied in reaching a determination on the admission of Rule 23 evidence are those set down in Bus Eireann/Irish Bus v The Controller (Aircoach) ([2007] IEHC 221), rather than Hunt-Wesson Inc’s Trademark Application (1996 RPC 233).
The controller further stated that the applicant had a right under Rule 21 to gather and submit whatever evidence it desired to adduce in support of its application and should do so in a diligent manner. He found that, in this instance, it was not a case of “new evidence” not being available or not in existence when the evidence under Rule 21 was being filed, but a case of failure by the applicant to take the necessary steps to gather the evidence that appears very much to have been available and in existence at that time. The controller emphasised this distinction.
Referring to the decision in Aircoach, the controller stated that, if the opponent’s evidence under Rule 22 strays into the area of comment, lay opinion or argument, then the balance of fairness may be tilted against the applicant if it is refused the opportunity to file further evidence in reply to this material. However, the controller noted that the application for leave under Rule 23 must identify the specific non-factual elements of the opponent’s Rule 22 evidence which it wishes to address. The controller noted that, in this instance, the request for leave to file evidence under Rule 23 was extremely general and vague and the first time the applicant sought to identify the specific material was at the hearing.
Finally, the controller reiterated in respect of the allegations of bad faith that the opponent was upfront and consistent in stating its claims and gave formal, advance notice and particulars in good time to enable the charge to be defended. Therefore, the applicant was afforded more than a minimum level of protection to defend its good name.
Colette Brady, DFMG Solicitors, Dublin  

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