Aco Polycrete Pty Ltd v Krebar Pty Ltd - [2009] ATMO 95

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Objection by Aco Polycrete Pty Ltd to application by Krebar Pty Ltd for an extension of time to serve and file evidence in support of its opposition to registration of trade mark application 1164611(6) - HEELGUARD - filed in the name of Aco Polycrete Pty Ltd

Delegate:

Alison Windsor

Representation:

Extension applicant: Andrew Fox of counsel, instructed by Griffith Hack, Patent and Trade Mark attorneys

Objector: Sam Park of SamPark & Co, IP Lawyers

Decision:

2009 ATMO 95

Regulation 5.15 – disputed application for extension of time in which to serve evidence in support – extension allowed – costs awarded against objector

Background

Aco Polycrete Pty Ltd (“Aco”) filed an application to register as a trade mark the word HEELGUARD for various goods in class 6. The application was examined in the normal course of events and in due course was accepted for possible registration. It was advertised as such in the Australian Official Journal of Trade Marks (“AOJT”) on 11 September 2008.
It is relevant to note here that the acceptance was made on the basis of the specific application of subsections 41(5) and 44(4) of the Trade Marks Act 1995 (“the Act”), and that the following endorsements appear on the application record on the electronic register:
Provisions of subsection 41(5) applied.
Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
The endorsements reflect evidence of use of the word HEELGUARD as a trade mark, and supplied by Aco to the examiner during the course of examination of the application. They refer to a claim by Aco that the application has been used in the relevant trade, and that it has been used prior to the application date of other earlier dated and similar trade marks on the register which were raised as grounds for rejection in examination reports.
On 11 September 2008, Krebar Pty Ltd (“Krebar”)[1] filed a notice of opposition (“the notice”) to the proposed registration, as provided for by section 52 of the Act. The notice was expressed in the widest possible terms, effectively nominating all available grounds of opposition.
[1] The trade mark file includes a notification dated 26 October 2009 that Krebar has changed its name to Paige Stainless Pty Ltd. For convenience sake, I will refer to the opponent as Krebar in the course of this decision.
On 11 March 2009, Krebar applied for an extension of time until 11 June 2009 in which to serve its evidence in support. The office allowed the application despite a lengthy document from Aco objecting to allowance of the extension request.
On 11 June 2009, Krebar applied for another extension of time, taking the date for serving its evidence up until 11 September 2009. Aco did not object to the application and the extension was allowed.
On 11 September 2009, Krebar again applied for another three month extension of time to file its evidence, taking the final date up until 11 December 2009. This application was supported by a statutory declaration made by Tara Parkes, a trade marks professional of Griffith Hack patent and trade mark attorneys. Ms Parkes advised that Krebar expected that its evidence would be completed and served by 11 December 2009, and advised that part of the evidence would be provided in the week commencing 14 September 2009.
That part of the evidence, comprising a statutory declaration made by Tara Parkes, was received by IP Australia on 18 September 2009.
Aco received notification of the extension application and on 8 October 2009 filed an objection to the application, concurrently with a request to be heard on the matter. Mr Park, on behalf of Aco, requested that the matter be heard in the Sydney hearing sessions due to occur in the week of 9 to 13 November 2009. IP Australia advised that this was not possible, as the hearing schedule was already full.
However, following the cancellation of another hearing and the consequent availability of a space in the hearing schedule in Sydney, the parties were advised that the matter could now be heard, albeit on very short notice. Both parties agreed to the proposed hearing and they appeared before me, a delegate of the Registrar of Trade Marks, on Monday, 9 November 2009. Sam Park of sampark&co intellectual property lawyers, appeared for Aco. Andrew Fox of counsel, instructed by Tara Parkes of Griffith Hack represented Krebar.

The legal framework

Before moving onto the specifics of this case, it is appropriate to set out the legal framework applicable to this matter.
Opposition to registration is governed by section 52 of the Act as noted previously. Section 54 deals with opposition proceedings in general and provides:
Section 54. Opposition proceedings
(1) The Registrar must give to the opponent and to the applicant an opportunity of being heard on the opposition.
Note: For opponent and applicant see section 6.
(2) Subject to subsection (1), the proceedings for dealing with the opposition must be in accordance with the regulations.
Regulation 5.6 states that for the purposes of subsection 54(2) of the Act, regulations 5.7 to 5.17 set out the procedure to be followed in dealing with an opposition after the notice has been filed.
Specifically relevant to this matter are regulations 5.7, 5.15 and 5.16. Regulation 5.7 states the following:
Reg 5.7. Evidence in support
(1) If the opponent intends to rely on evidence in support of the opposition, the opponent must serve a copy of the evidence in support on the applicant within 3 months from the day on which the notice of opposition is filed.
(2) As soon as practicable after the opponent serves a copy of the evidence in support on the applicant, the opponent must file with the Registrar:
(a) the original evidence; and
(b) a statement setting out the date, place and manner of service of the copy of the evidence on the applicant.
Regulations 5.15 and 5.16 state:
Reg 5.15. Extension of period to serve evidence and service of further evidence
(1) A party to the opposition proceedings may apply to the Registrar:
(a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or
(b) for permission to serve a copy of further evidence on the other party.
(2) The Registrar may grant an application on reasonable terms specified by the Registrar.
(3) The Registrar must not grant an application unless the Registrar:
(a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
(b) has given the parties a reasonable opportunity to make representations concerning the application; and
(c) is reasonably satisfied that:
(i) in the case of an application to which paragraph (1) (a) applies -- the extension of the period for serving a copy of the evidence; and
(ii) in the case of an application to which paragraph (1) (b) applies -- permission to serve a copy of further evidence;
is appropriate.
(4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
(5) If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.
(6) Subregulations (2), (3) and (4) apply to an application under subregulation (5).
Reg 5.16. Conduct of opposition proceedings generally
(1) The Registrar may, at the request of a party to the opposition proceedings or on the initiative of the Registrar, give a direction in relation to the procedure in the proceedings.
(2) A direction given under subregulation (1) must not be inconsistent with these regulations.
(3) The Registrar must not give a direction unless the Registrar:
(a) is reasonably satisfied that parties to the proceedings have been notified of the proposed direction; and
(b) has given the parties a reasonable opportunity to make representations concerning the proposed direction; and
(c) is reasonably satisfied that the proposed direction is appropriate.
(4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

Procedural framework

Much of the content of Aco’s submissions go to the Registrar’s procedures for dealing with the service and filing of evidence of use in oppositions, and in particular those surrounding applications for extensions of time for the purpose. I will set out the relevant procedures here.
Regulation 5.15 makes it clear that extensions of time for the purpose of providing evidence are available to a party on application, under certain circumstances. These are set out in the regulation recited previously. The regulation does not, however, make specific reference to time frames for the purpose.
The Registrar has set up a number of “benchmarks” for the length of time allowed for the service of evidence during the various stages of the opposition, a copy of which may be found as Part 4 of the official application document provided by IP Australia. Part 4 is reproduced below:

Part 4 Maximum time likely to be allowed to prepare evidence

The Registrar’s benchmarks for the maximum time likely to be allowed to prepare evidence are as follows:

1. Evidence in support
· 9 months from date notice of opposition was filed

2. Evidence in Answer
· 9 months from date applicant received opponent’s evidence

3. Evidence in reply
· 6 months from date opponent received applicant’s evidence

A request for an extension which is within the relevant benchmark must be based on an explanation of what has been done thus far in evidence preparation and what is proposed to be done within the extended period.

Extensions that will take the time beyond the benchmark for the respective evidence stage may be granted on a case by case basis but only if there are compelling reasons to do so. IP Australia considers compelling reasons to be:

·   error or omission by an employee of IP Australia; or
·   error or omission by the person applying for the extension of time, or by the person’s agent; or
·   special circumstances
The meaning of ‘special circumstances’ is strictly confined. It may be a special circumstance if the evidence has already been served but after the due date

A request for an extension beyond the benchmark must be supported by a full and frank discloser of all the relevant facts. It is highly unlikely that any more than one such extension will be granted.

Paragraph 3.3 of Part 51 of the Trade Marks Office of Practice and Procedure makes the following comments:
3.3 Duration of extensions
The regulations applying under the Trade Marks Act 1995 give the other party to an opposition the right to make representations about the extension sought. This may assist the Registrar’s delegates in assessing the case made.
Nonetheless, the onus remains on an applicant for an extension to make a case for the time sought. The Trade Marks Office has set some benchmark limits to the accumulated time of these extensions. Such limits are not absolute but are intended for the guidance of applicants and their representatives. [emphasis added]
These limits have been and will be reviewed from time to time. In 1994 the Trade Marks Office lowered the comparable limits under the 1955 Act. This was done to reflect the generally shorter time required to prepare evidence because of the wider use of facsimile transmissions to revise draft declarations, to serve evidence or to seek information. Such improvements in communication have continued and the benchmarks applied under the 1995 Regulations have been set with this in mind.
The benchmark time limits generally correspond with the times at which the Registrar requires the applicant for extension to support its applications in declaratory form (see Annex A3).[2] They are as follows:
· Evidence in Support or in Answer: Where the statutory three months, together with the extensions sought, amount to nine months or more in total, the Trade Marks Office will put both parties to an opposition on notice that compelling reasons will be required if further extensions are requested. . Applications for extensions of time beyond a total of twelve months should indicate when the process is intended to be completed. These benchmark limits may be extended by six months if negotiations are involved.
· Evidence in Reply: Generally speaking, because such evidence is intended to be a reply to a known body of declarations, it can be expected to be easier to compile than was the evidence served in the earlier stages. Under the Trade Marks Act 1995, the benchmark limit for service of evidence in reply is set at a shorter time than that for evidence in support or in answer. Consequently, a warning will issue where the total sought, including the statutory period, is six months or more. Extensions beyond a total of nine months should indicate when the process is intended to be completed. These benchmark limits may be extended by three months if negotiations are involved.
[2] I have attached Annex 3 as an appendix to this decision.

Request for direction under the provisions of regulation 5.16

When he arrived at the hearing venue, Mr Sam Park, representing Aco, advised me that he would be requesting that I provide a direction in respect of a matter which had arisen on the Friday before the hearing. I took submissions on this matter at the beginning of the hearing.
Mr Park advised that Krebar had served two further declarations as part of their evidence in support. These declarations had arrived late on the afternoon of Friday 6 November 2009 and were left with a neighbouring tenant as his office was temporarily unattended. As he was out of the country at the time, Mr Park said, he was not aware that the evidence had arrived until he attended his office on Monday morning, the day of the hearing.
Mr Park said that he considered the content of the evidence provided could have some bearing on whether or not the extension request would be allowed. He said that if the content of the declarations was to have a material effect on the eventual decision on the allowance of the extension of time, he should be allowed the opportunity to consider the evidence and make submissions on its relevance. Additionally, he was concerned that the opponent would rely on the fact that the evidence had been filed and served prior to the hearing as an argument to support its case for allowance of the extension of time.
I pointed out to Mr Park that I did not consider the content of the evidence to be relevant to the matter in hand, and therefore the content would have no bearing on whether or not the extension application would be allowed. A decision in respect of whether the evidence already in the office would form part of the evidence in support would be dependent on whether or not I decided to allow the extension application after hearing both parties on that matter.
It was obvious that Mr Park was not satisfied with my assurances that the content of the evidence would not form part of my deliberations in the extension matter. However, despite his obvious unease about the matter, I directed that the hearing on the extension of time application would proceed as originally planned, and I requested both parties provide me with their submissions on the matter.

Submissions and discussion

Applicant’s submissions

Mr Park submitted that Krebar’s notice of opposition was filed in broad unspecific terms, and that its applications for extensions of time did not provide “any commentary or particulars on which of the at least 19 grounds of opposition in the notice of opposition the additional time was required”. In addition, Mr Park said, the third application, the subject of the hearing, exceeded the registrar’s benchmark period for serving evidence in an opposition.
Further, he submitted, the application for the third extension of time introduced a new reason for needing additional time. Whilst the first two applications had referred to “further time is required to complete the opponent’s statutory declaration”, the third application now referred, in addition to the already quoted reason, to further time being required for third parties to peruse third party draft statutory declarations and provide further particulars and documentation to complete these draft statutory declarations. Mr Park noted that this third party evidence was not foreshadowed or previously mentioned but appeared to be a relatively recent development. He also submitted that the Parkes statutory declaration filed on 18 September 2009 was filed out of time unless the third extension of time application is granted.
Mr Park went on to consider the content of the Parkes declaration, and its relevance to the opposition as a whole. In particular, he commented on the exhibits to the declaration, specifically on the dates of particular searches and the results of a Freedom of Information request in respect of the application file. He specifically highlighted the fact that these exhibits appear to have been on hand from dates within the first extension of time period granted, but were not provided as part of a declaration until September.
He then reiterated much of the material which he had provided to IP Australia in the course of objecting to allowance of Krebar’s first application for an extension of time. Much of this material details the history of previous dealings between the parties, both during the course of a business relationship and following the breakdown of that relationship in relatively recent times. Mr Park submitted that Krebar and its legal advisors had been on notice of Aco’s trade mark since as early as July 2007, and were aware of their potential to infringe Aco’s trade mark via use of various trade marks Krebar had applied for and/or registered.
Mr Park further considered the regulations and the Registrar’s benchmarks in respect of extensions of time for submitting evidence of use. He particularly highlighted the provisions of subregulation 5.15(3)(c) which are set out at paragraph 14, but which may be summarised as “the Registrar must not grant an application for an extension of time to serve a copy of evidence unless the Registrar is reasonably satisfied the extension of time is appropriate”.

Opponent’s submissions

Mr Fox on behalf of Krebar gave brief submissions. He said that the opposition has been on foot for only 11 months, and that significant progress in the completion of the evidence has been achieved. He stated that the proposed evidence had reached the stage where declarations by various deponents were being finalised and that it was “confidently anticipated that the evidence will be filed” by the date to which the extension of time relates. He submitted that there was undoubtedly a serious opposition on foot, and that the most recent extension of time application was backed up by cogent reasons. He noted that in a case such as this, there is a strong public interest in the opponent properly prosecuting its opposition by providing appropriate evidence, and that the evidence has been partly provided. He submitted that the applicant was not inconvenienced by the extension of time.

Discussion

The decision which must be made in this matter is embodied in the wording of regulation 5.15 – the Registrar must not grant an application for an extension of time for the purpose of filing of evidence unless reasonably satisfied that it is appropriate to do so.
The hearing officer in ABW Australia Pty Ltd v Sears, Roebuck and Co (1998) 42 IPR 468 stated that it is necessary to take account of five matters when considering whether the grant of an application for extension of time is appropriate:
·   the length of time already allowed;
·   the reasons put forward to justify the granting or rejection of the extension application;
·   whether the opponent has established that its opposition is serious;
·   the inconvenience likely to be suffered by the parties;
·   the public interest.

In Exxonmobil Oil Corporation v Shahin Enterprises (2002) 55 IPR 630, the hearing officer summarised the matters relevant to the grant of an application for an extension of time. He considered that the matter is governed by cases such as Vangedal-Nielsen v Smith (Cmr of Patents) (1980) 1 IPR 731 and Lyons v Registrar of Trade Marks (1983) 1 IPR 416 and provided a set of guidelines as follows:
·   the applicant seeking the extension of time has to make out a proper case;
·   there must have been no undue delay on the part of the potential opponent;
·   the private interests of the applicant and the opponent as well as the public interest are considered by ensuring that invalid rights are not granted and that proceedings are not protracted;
·   there is a serious opposition in train.
These matters were quoted in the Registrar’s decision Volkswagen Ag [2008] ATMO 79 (Volksworld), from which I have paraphrased the material. Both parties referred to this decision, taking opposing views on its relevance to this case. In any event, whether or not the decision itself is relevant, the authorities quoted above are relevant, and the guidelines serve to colour my decision.
Krebar’s third application for an extension of time was filed with IP Australia on 11 September 2009. This is the relevant date for the purposes of this decision. Krebar has the onus of providing sufficient information that will allow me to be “reasonably satisfied” that it is appropriate to allow the application. Allowing the application will also have the effect of allowing into the evidence in support the three declarations already received and any other proposed declarations, providing they are filed and served within the three month period requested.
Mr Park for Aco referred more than once to three matters –
·   that Krebar was well aware of Aco’s trade marks (from at least the middle of 2007) and therefore has had ample time to get its evidence into order;
·   that the evidence so far provided does not go to explaining any specific relevance to the grounds of opposition cited on the notice; and
·   that Krebar’s latest application for an extension of time would take the elapsed time beyond the Registrar’s benchmarks for serving and filing evidence in support.
In respect of the first matter, Aco’s application was advertised as accepted in the AOJT dated 11 September 2008. Until such time as the application is advertised as accepted, a potential opponent is not in a position to decide “yes” or “no” to filing a notice of opposition. The advertisement of acceptance has to be the trigger event for the process, even if the parties have had dealings prior to the event. Despite the history of dealings between these two parties, Krebar was not in a position to know if or when the opposed trade mark application was likely to be accepted, and probably had some cause to believe that its own registered trade mark would impede the application’s progress.[3]
[3] Registration 1104096 – PAIGE STAINLESS HEELGUARD – in class 6 for a range of building materials and other metal goods.
In respect of the second matter, I am unaware of any requirement that the evidence of use filed by either of the parties involved in an opposition should be organised to specifically deal with the grounds of opposition cited in the notice. While this would be an ideal, in most cases, it is not until just prior to the hearing that an opponent advises which grounds it intends to pursue. The grounds are elaborated and tied to the evidence at the hearing itself. In other cases, especially when an opponent does not provide anything extra to assist the decision maker, it is up to that delegate to assess the evidence and decide which grounds it supports. It is not necessarily evidence of a lack of diligence or an indication that the opposition is not serious if references to the grounds are not specified within the evidence.
The third matter is the Registrar’s benchmark time periods and the amount of time already elapsed. I set out the general procedural background previously in paragraphs 18 and 19 of this decision. Also relevant to the matter is paragraph 3.2 of part 51 of the manual which I have reproduced here:
3.2 Reasons in support of the application
Reg 5.15(2) says that the Registrar may grant an application for an extension of time to serve evidence, or further evidence, on reasonable terms specified by the Registrar. Under regulation 5.15(3), the Registrar must not grant an application for an extension unless satisfied that it is appropriate in the circumstances. Therefore, he or she should be aware of all the relevant information in order to determine the matter.
The extent of the information needed in support of an application for an extension of time will rise with the passage of time. While all applicants are required to give a full explanation of why additional time is required, a simple letter with a recitation of basic facts will prima-facie be acceptable for a first extension. If subsequent extensions are sought, more detailed explanations are required and these may be required in declaratory form. If the application is made late, ie after the end of the time as so far allowed, a supporting declaration is required in all cases. This should show the reason for the delay and be accompanied by the appropriate additional fee.
The Trade Marks Office specified requirements for filing of declarations in support of subsequent extensions, as published in the Australian Official Journal of Trade Marks of 8 May 1997. These have been reviewed and the current requirements were advertised in the Australian Official Journal of Trade Marks of 18 November 1999. (See Annex A3)
The revised requirements take account of cases where there are genuine negotiations in progress between the parties. Such negotiations may take time and it is likely to be in the interest of both parties to delay finalising and serving evidence until the negotiations are complete. Therefore, where negotiation is included in the reasons for seeking an extension under reg 5.15, support for the application in declaratory form is not required until later in the time scale. The current requirements can be seen most readily in the diagrams in Annex A3.
When a declaration is required, it should contain some or all of the following:
·   an explanation should be given regarding the delay in the gathering of the evidence,
·   the steps taken to remedy the delay, eg in obtaining the evidence, in reaching a settlement etc, should be outlined,
·   some indication should be given of the progress which has been made since any previous extension requests were made,
·   a timetable should be provided, in cases where negotiations are taking place, including an estimated date for their conclusion,
·   an explanation should be given of any alleged error on behalf of either the Office or the applicant for the extension, together with an estimate of the delay caused by that error,
·   the methodology and progress of any research should be stated, together with an estimated date of completion of the exercise, and
·   if waiting for any declarations, then a timetable of the efforts taken to obtain them should be included.
The Registrar considers that the provision of a supporting declaration, after a reasonable amount of time has passed, falls within the ambit of the “reasonable terms” specified in reg 5.15.
These guidelines refer to an increasing onus on the extension applicant to provide more detailed reasons with the passage of time. I have summarised the reasons Krebar gave for its three extension applications below:
First extension: Krebar’s legal representatives had sent a questionnaire requesting evidence and information to Krebar, noting that the answers to the questionnaire would form the basis of the main declaration for the evidence in support. Answers to the questionnaire had been received, but additional time was required to assess the material and prepare a draft declaration for review and eventual filing.
Second extension: Further research had been conducted, and evidence received to date assessed. A draft statutory declaration, along with additional queries and requests for further information was sent to Krebar on 11 May. Further time was required to receive the requested information and any additional documentation before the declaration could be completed. Krebar also said it had written to Aco proposing settlement and further time was required for their response. Krebar expected the evidentiary material to be completed by the end of the extension period if no settlement was reached.
Third extension: Via a statutory declaration made by Tara Parkes: Krebar has provided some of the information and documentation requested previously, and has also included details of third parties to contact to obtain additional information and declarations. A number of these parties have been contacted, declarations have been drafted, and these are in the process of reviewing by the parties concerned. Additional time is required to finalise this material and have it served and filed. Krebar believes that its statutory declarations and those of the third parties will be completed by the end of the extension period.
Mr Park expressed an opinion that Krebar had not provided any particulars on the grounds of opposition, and that the reasons provided for its extensions were insufficient. I do not consider it mandatory that, at this early stage, specific information needs to be provided in respect of the various grounds of opposition. That matter will resolve itself in the fullness of time. I am satisfied that Krebar has met the onus on it to explain the delays which have slowed its attempts to gather, serve and file its evidence in support. I am also satisfied that the references to third party declarations which surfaced in the third extension request have been sufficiently explained. It stands to reason that the process of gathering evidence to support either party’s case in an opposition is unlikely to be a linear process. Unless the legal representatives concerned are very familiar with their client’s business affairs, questionnaires and queries sent to a party are likely to result in a need to delve further to find the information required.
In respect of the Registrar’s benchmarks, these have been set up to benefit all parties involved with oppositions, and to prevent, at least to some degree, the often extreme delays which were used as tactics by some opponents and applicants. There is a public interest in having opposition matters dealt with expeditiously so that the Register appropriately reflects the current state of affairs in the marketplace.
In this case, Krebar reached the Registrar’s benchmark for serving and filing evidence in support via its second extension of time application. The third request is therefore outside the benchmark, as Mr Park has noted, but this does not mean it must immediately be rejected. There is a public interest in the Registrar having access to all relevant information when deciding an opposition. If a party provides satisfactory reasons for additional requests outside the benchmark limits then the extension request may be allowed. Each case is considered on its own specific set of facts.
I am satisfied that the reasons Krebar have given support allowance of the extension request. The reasons given allow me to infer that Krebar is actively gathering and preparing evidence of use in support of the opposition. The three declarations already supplied support this inference. I can see no evidence of undue delay, unlike that which was revealed in the Volksworld case, and allowing the extension seems to me to be the appropriate action.

Decision

I am satisfied that, on the circumstances of this case, it is appropriate to allow the extension of time, taking the date up to 11 December 2009. I direct that the opponent, Krebar, file and serve its complete evidence in support by that date.

Costs

Mr Park requested that costs be awarded against Krebar, no matter what my decision was to be, because he considered that Krebar had not provided sufficient particulars in respect of the evidence in support, the opposition in general and the extension of time application, which would allow his client a proper objective opportunity to assess the validity and substantive merits of both the extension request and/or the opposition as a whole. This is an interesting request, and one which has not been put to me before. However, the fact of the matter is that Aco requested to be heard on the extension request, rather than taking the less costly option of providing written submissions and allowing a delegate of the Registrar to weigh matters up and make a decision. On assessment of the information put before me, I have decided it is reasonable for the extension to be allowed. Aco is therefore unsuccessful in its attempt to block the extension request and thus prevent the opponent from putting its evidence before the Registrar. As costs usually follow the event, I award costs against Aco according to the official scale as set out in Schedule 8 to the Regulations.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

26 November 2009

EXTENSIONS OF TIME FOR SERVING EVIDENCE IN OPPOSITIONS

Regulation 5.15

Trade Marks Act 1995

In the Australian Official Journal of Trade Marks of 8 May 1997, the Registrar advertised requirements for declaratory support for applications made under regulation 5.15 for extensions of time to serve evidence. These requirements have been reviewed and, where they relate to applications sought when the parties are involved in negotiations, have been modified. The revised practice is set out below and shown schematically in the diagrams on the next page.

Regardless of whether or not a declaration is required, all applicants for an extension of time are required to support their applications with a full explanation of why additional time is required.
Declaratory support will be required for applications for additional time to serve evidence in support and evidence in answer:

when sought for reasons other than negotiation between the parties, and a total extension of 6 months has already been allowed beyond the statutory 3 month opposition period (diagram A), or
when sought for reasons which include negotiation between the parties, and a total extension of 12 months has already been allowed beyond the statutory 3 month opposition period (diagram B).

Declaratory support will be required for applications for an extension of time to serve evidence in reply:

when sought for reasons other than negotiation between the parties, and a total extension of 3 months has already been allowed beyond the statutory 3 month opposition period (diagram A), or
when sought for reasons which include negotiation between the parties, and a total extension of 6 months has already been allowed beyond the statutory 3 month opposition period (diagram B).

When support in declaratory form is required, the applicant must provide a declaration which should set out :
progress to date,

an expected timetable for completion of the evidence, and
compelling reasons why the additional time should be allowed.
In the case of late applications for extension of time, declaratory support will be required in all circumstances.

Opposition process - statutory time frames, and procedures for extending these times for Evidence in Support, Evidence in Answer and Evidence in Reply

A. Where the reasons for seeking the present extension are other than negotiation between the parties:

B. Where the reasons for seeking the present extension include negotiation between the parties:

ALL LATE APPLICATIONS CONTINUE TO REQUIRE DECLARATORY SUPPORT