54.3. Production of documents

The Registrar is authorized by section 202 of the Trade Marks Act 1995 to require the production of documents or articles. In most instances the Registrar issues such a notice as a result of a request from a party to proceedings before the Registrar. In deciding whether to exercise this power the Registrar must be satisfied that the production of the documents is for “the purposes of this Act”, that is the documents are relevant to the proceedings. Since the Registrar is empowered by the Act to order “production” and not “discovery” of documents (see part 54.3.3.2 below), she must also be satisfied that what is being requested does not amount to a de facto request for discovery.

3.1  Relevance of documents to the proceedings

Before acceding to a request for the issue of a notice for production of documents (or articles), the Registrar must be satisfied that the request relates to proceedings under the Act and that the documents (or articles) sought are relevant to those proceedings. The test to be applied is one of adjectival rather than substantive relevance. That is, the Registrar is required to consider whether the documents could be relevant rather than would be relevant to the issues to be determined in the proceedings.

The issue of relevance was considered by the Federal Court in GS Technology Pty Ltd v The Commissioner of Patents (1997) 39 IPR 583 in relation to a notice requiring production of documents under section 210 of the Patents Act. The court said that:

… whilst it would be appropriate to reject a request for the issue of a summons on the ground that the request is fanciful or purely speculative, it is true nonetheless that an applicant for the issue of a summons need not show that the documents requested are actually relevant to the matter at hand.  It is sufficient, in accordance with the conventional test in this area, that the material sought by the summons is, on reasonable grounds, arguably relevant to the issues in the litigation.

In Taco Bill Mexican Restaurants (Australia) Pty Ltd v Taco Bell Corporation (1999) IPR 613 the Deputy Registrar concluded that the documents sought were arguably relevant to one of the grounds of opposition.

3.2  Production or discovery?

The following definitions given in The Oxford Companion to Law, Clarendon Press, Oxford 1980, demonstrate the distinction between production and discovery.

Production. In England the High Court has power to order a party to produce any documents relating to the matter in issue, or to produce any documents for the inspection of another party.

Discovery. The process by which parties to a civil cause in England may, within limits, obtain information of the existence and contents of all documents relevant to the matters in dispute between them. The object is to elicit documents before the trial so as to eliminate surprise at the trial and promote fair disposal of the case.

In court proceedings it is common to order discovery to find out what documents exist, and to order production to enable inspection of relevant documents. However, the Registrar is only empowered to order production, and the documents to be produced must therefore be identified with a degree of particularity. While this does not necessarily require the identification of individual documents, the nature of the documents being sought must be clearly specified.³

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3.3  Issue and service of a notice for production

Only a person connected with the proceedings before the Registrar may legitimately request him or her to require production of documents. The requestor should provide all the necessary details of the person on whom the notice is to be served, a description of the documents required and an explanation of the relevance of the documents to the proceedings.

The Registrar will then consider the request and decide whether the material sought “could” be relevant to the proceedings and whether it is identified with “reasonable particularity”. If the Registrar is not satisfied that the notice should issue, the requestor will be advised of the reasons and given an opportunity to respond. If the Registrar is satisfied that the notice should issue, the requestor will be asked to provide a notice in the appropriate format for execution by the Registrar.

3.3.1  Format of the notice

The appropriate format for the notice is given in Annex A3.  The notice specifies the relevant opposition action and case file number, the name and address of the person required to produce the documents and a clear description of the documents to be produced. The following should be noted in preparing the notice:

a. There must be proper identification of the person on whom the notice is to be served. In the case of a company, this is usually an identified person in the company, or “the proper officer” of the company. In the case of a partnership, consideration should be given to whether it is a single person in the partnership, or all the partners. Note that a person cannot be required to produce documents that are not in their possession.

b. The notice must indicate with “reasonable particularity” the item(s) to be produced.

c. The notice must provide sufficient space for the return date to be inserted by the Registrar. The return date is the date by which the person on whom the notice is served must produce the documents to the Registrar.

3.3.2  Service of the notice

The completed notice, signed and dated by the Registrar, is returned to the requestor for them to serve on the person named in the notice, together with any explanatory material the Registrar includes with the notice. For example, the Registrar may require the notice be accompanied by copies of sections 202 and 153 of the Trade Marks Act in order to inform the person named about the Registrar’s power to require production, and of the penalty that may be incurred through failure to comply with the notice.

The notice must be served in sufficient time for it to be reasonable for the documents to be produced the documents by the return date specified in the notice.

The requestor is to inform the Registrar of the date of service as soon as practicable after the notice has been served.

3.4  Response to a notice requiring production

A notice requiring production of documents, which the Registrar issues, is enforceable by the provisions of section 153(2) of the Act which provides:

A person:

a. who has been required by the Registrar to produce a document or any other thing; and

b. to whom a reasonable sum has been tendered in payment for expenses;

must not fail to produce the document or thing.

Penalty: 10 penalty units.⁴

A person to whom reasonable expenses have been paid, must therefore produce the documents to the Registrar unless they can demonstrate that there was a “reasonable excuse” for their failure to do so (see part 54.3.4.2 below). The documents may be delivered to the Registrar at the address shown in the notice on or before the return date specified in the notice. If the documents are sent by courier or Australia Post, they should be dispatched in sufficient time for delivery by the return date.  If the person producing the documents is a party to the proceeding before the Registrar, the documents may be delivered by filing them with the online services page or uploading them to Objective Connect.

If the person objects to producing some or all of the documents, or wishes to have some or all of the documents treated as confidential, they do not need to produce them but they must notify the Registrar of the objection and the basis for it before the return date.  If the person requires additional time in which to comply with the notice, the person must inform the Registrar of this before the return date and explain why (see part 54.3.4.2 below).

3.4.1  Reasonable expenses

The requestor is to pay reasonable expenses associated with the production of the documents.  What constitute reasonable expenses will vary greatly with the nature and number of documents sought but might include:

• cost of locating the documents or articles
• copying costs (if appropriate)
• conduct of the documents to the address shown on the notice
• compensation for loss of income (if applicable).

It might also include the costs incurred by a person reasonably objecting to the production of documents.

An offer of payment for reasonable expenses does not necessarily require an ‘up-front’ payment in cash – although payment of conduct money sufficient for the person to deliver the documents to the address shown on the notice would generally be appropriate.

Any points of contention around the payment of reasonable expenses – such as whether the work involved in obtaining the requested material would be likely to result in a party’s ‘reasonable expenses’ adding up to a considerable amount – should be discussed and settled between the parties, preferably before the producing party begins to collect the documents, and at the very least before the documents are produced to the Registrar. The Registrar is unlikely to restrict access to the produced documents, pending resolution of belated disputes about the quantum of what might or might not have constituted ‘reasonable expenses’ incurred by a party.

3.4.2  Reasonable excuse

Under section 153(2A) a person is not obliged to produce documents if there is a reasonable excuse. The onus is on that person to establish a reasonable excuse to the Registrar’s satisfaction.  A reasonable excuse may include:

• failure of the requestor to offer to pay reasonable expenses
• insufficient time to comply with the notice
• the notice is in the nature of discovery (or a fishing exercise)
• compliance is oppressive (e.g. a vast number of documents to be provided or examined)
• the document or article is not in the possession or control of the person required to produce it
• the documents are not sufficiently identified
• the documents are not relevant to the proceedings.

If a person cites the failure of the requestor to offer to pay reasonable expenses, it is the responsibility of the requestor to satisfy the Registrar that a reasonable and contractually binding offer was made. (The Registrar has no power to enforce payment of moneys – enforcement of contractual agreements is a matter for the courts).

The notice is issued by the Registrar and it is for the Registrar, not the requestor, to be satisfied that there is a reasonable excuse for non-compliance. A claim that the documents are confidential will not generally be a reasonable excuse for non-compliance. However, the Registrar will be guided by the criteria for exempt documents in Part IV of the Freedom of Information Act 1982 and may be prepared to receive the documents in confidence and limit access to them in the manner prescribed by that Act.

PLEASE NOTE: The Registrar must be informed of a claim for a reasonable excuse or an objection to the production of some, or all of the documents, before the return date in the notice.

3.4.3  Non-compliance with notice

Where a notice is not complied with, and the Registrar is not satisfied there is a reasonable excuse for non-compliance, the matter may be referred to the Director of Public Prosecutions for action with regard to the penalty provisions section 153.

3.5  Access to produced documents

A notice under section 202 requires production of the specified documents (or articles) to the Registrar. The person who has requested their production may then request copies of the documents. If a third party has produced the documents, the other party in the proceedings may also seek access to them. Subject to any issues of confidentiality, copies will be provided, on payment of any necessary fee, if appropriate. If the material produced is voluminous, or unsuitable for copying, the Registrar may require that it be inspected at the Trade Marks Office.

In some instances, particularly if the documents are produced by a third party, the Registrar may decide to grant access only in accordance with the Freedom of Information Act 1982.

3.6  Registrar’s consideration of produced documents

If the documents are produced during the relevant statutory period allowed for the requestor to file its evidence, the requestor should inform the Registrar and the other party that the documents form part, or all, of its evidence.

PLEASE NOTE: The time allowed for the requestor to file its evidence will NOT be extended on the basis that the requestor is waiting for the documents to be produced.

If the documents are produced after the period allowed for the requestor to file its evidence has ended, they may still be taken into account by the Registrar when the merits of the proceeding are determined as the Registrar is not bound by the rules of evidence (reg 21.15(4)). However the requestor needs to establish a compelling case for the documents to be considered (see part 51.2.2.6).

³ Guidance on the "degree of particularity" required in specifying the documents is provided in court decisions dealing with subpoenas - see for example Small v Commissioner of Railways (1938) SR (NSW) 564 at 573, Spencer Motors Ltd v LNC Industries Ltd [1982] 2 NSWLR 921 at 929 and Lucas Industries Ltd v Hewitt (1978) 18 ALR 555.

⁴ See notes 1 and 2 to part 54.2