Adriana Zurak and Marko Zurak v Rawson Global Pty Ltd
[2023] ATMO 51
•21 April 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Adriana Zurak and Marko Zurak for an extension of time to file a statement of grounds and particulars to oppose trade mark no. 2228857– INHAUSLIVING (fancy) - in the name of Rawson Global Pty Ltd
| Delegate: | Bianca Irgang |
| Representation: | Opponent: Mathews Folbigg Lawyers Applicant: Wen H Wu of Counsel instructed by Halfords IP |
| Decision: | 2023 ATMO 51 Application under regulation 5.9 of the Trade Marks Regulations 1995 (Cth) for an extension of time to file a Statement of Grounds and Particulars. Granted. Parties to bear their own costs |
Background
Rawson Global Pty Ltd (‘the applicant’) filed trade mark application number 2228857 INHAUSLIVING (fancy) on 22 November 2021, which gained early acceptance for possible registration on 6 December 2021. The details of the trade mark are as follows:
Trade mark: (the ‘Trade Mark’)
Trade mark application no: 2228857
Lodgement Date: 22 November 2021
Goods Specification: Class 35: Retail Services
Class 37:Renovation of buildings including bathroom renovation; Renovation of kitchens; Construction; Housing development (building and construction services)
The Trade Mark was advertised as accepted on 23 April 2022. On 2 May 2022 Adriana Zurak and Marko Zurak (‘the opponent’) filed a Notice of Intention to Oppose the Trade Mark. On 9 May 2022, IP Australian sent a letter to the parties advising that Notice of Intention to Oppose (‘NIO’) had been filed and that the opponent had until the 2 June 2022 in which to file its Statement of Grounds and Particulars (‘SGP’).
On 1 June 2022 the opponent filed an Extension of Time request (‘EOT’) under regulation 5.9 of the Trade Mark Regulations 1995 (Cth) (‘the regulations’) requesting an additional one month in which to file its SGP.
The opponent fulfilled the requirements for filing the EOT and stated that the request was made on the basis of regulation 5.9(4)(b) which is circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee. To this end, Adriana Zurak provided a statutory declaration outlining the circumstances beyond her control which prevented the filing of the SGP.
On the 9 November 2022 the Registrar rote to the opponent indicating that it intended to refuse the opponent’s EOT due to a lack of detail in the statutory declaration of Adriana Zurak and no information on what prevented Marko Zurak from completing the SGP by the due date.
The opponent filed another declaration made by Marko Zurak which provided additional information that the Registrar considered sufficient to support the EOT. The Delegate informed the parties of its intention to grant the EOT on 13 December 2022.
On 23 December 2023 the applicant duly objected and requested a hearing on the matter of the EOT. The applicant then filed its submissions for consideration on the written record. The opponent was provided with the opportunity to provide additional submissions but chose not to.
Evidence
The opponent has filed with this Office two declarations to support its request for an EOT. These declarations are as follows:
| Declarant | Position | Date Made |
| Ms Adriana Zurak | Business Administrator for the opponent’s business | 1.06.22 |
| Mr Marko Zurak | Manager and laborer for the opponent’s business | 22.11.22 |
The applicant provided written submissions by way of its legal representative.
The Hearing
The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing by way of written submissions on 6 March 2023. The opponent did not provide additional declarations or submissions beyond what was already on the official file. The applicant was represented by Wen H Wu of Counsel instructed by Halfords IP and provided written submissions for consideration.
The Law
Subsection 52(1) of the Act provides that any person may oppose an application to register a trade mark by filing a Notice of Opposition in the manner and form prescribed by the Act and within the prescribed period.
In this case the relevant advertisement was 23 April 2022 which means that the opponent’s NIO was due by 23 June 2022, The opponent filed the NIO on 2 May 2022. Pursuant to Reg 5.7(1) the statement of grounds and particulars was due on 2 June 2022. As the hearing is about an extension of time in which to file a SGP I turn to Reg 5.9 which provides for an extension of that deadline in Reg 5.7(1).
Regulation 5.9 states:
5.9 Extension of time for filing—application
(1) A person who intends to oppose an application under subsection 52(1) of the Act may request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under subregulation 5.6(1); or
(b) the period for filing a statement of grounds and particulars under subregulation 5.7(1).
(2) A request under paragraph (1)(a) or (b) may be made:
(a) within the period for filing the document in question; or
(b) before the trade mark is entered on the Register under section 69 of the Act.
Note: See subparagraph (3)(b)(ii) and subregulation 5.10(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must:
(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice or the statement of grounds and particulars has ended—the reason why the request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds:
(a) an error or omission by the person, the person’s agent, the Registrar or an employee;
(b) circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.
Regulation 5.10 deals with the power to grant the Request, and is set out below:
5.10 Extension of time for filing—grant
(1) The Registrar may grant a request under subregulation 5.9(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension.
(2) However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request.
(3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
Regulation 5.10(1) explicitly ties the power to grant the Request back to the grounds in reg 5.9(4). The presence of the word ‘may’ imports all the discretionary considerations that have been expounded by juridical consideration of the general extension of time provisions particularly in patents and trade marks matters. However, most of the general considerations are not of any prominence in relation to these facts. For example, there is a clear purpose to the extension and the Registrar is not functus official.
Discussion
There has been a lot of correspondence entered into by the parties on this matter. The main contention has always been the reasons why the opponent was delayed in filing the SGP. The sequence of events leading up to the opponents’ filing of its EOT is as follows:
23 April 2022 the Trade Mark Application was advertised as accepted.
2 May 2022 the opponent filed a NIO the Trade Mark.
9 May 2022, IP Australian sent a letter to the parties advising that NIO had been filed and that the opponent had until the 2 June 2022 in which to file their SGP.
Sometime during May Adriana Zurak became ill with the flu and was unable to work or complete the drafting of the SGP. The business was short staffed due to Covid related staff shortages and Marko Zurak was placed in the position of taking on long hours of work to keep the business going as well as all the family duties. He did not have access to a computer during work hours. Once back at work Adriana Zurak had a considerable backlog of work, staff shortages and engaged Mathews Folbigg Lawyers to handle the opposition.
31 May 2022, the opponent engaged Mathews Folbigg Lawyers to complete the SGP.
1 June 2022 the opponent (by way of its legal representative) filed an EOT under regulation 5.9 requesting an additional month in which to file its SGP.
2 July 2022 the opponent filed its SGP with grounds of opposition under sections 43, 44, 58A and 60 of the Act particularised.
9 November 2022 the Registrar informed the parties that it intended to refuse the opponent’s EOT due to a lack of detail and no information on what prevented Marko Zurak from completing the SGP by the due date.
22 November 2022 the opponent provided another declaration made by Marko Zurak which provided additional information.
13 December 2022 the Delegate informed the parties of its the intention to grant the EOT.
23 December 2023 the applicant duly objected and requested a hearing on the matter of the of the EOT.
Given all of the above information it is clear that the essence of the opponent’s case is that it has always had the intention to oppose the Trade Mark which was frustrated by the illness suffered by Adriana Zurak and covid-related staff shortages within the business. This was further compounded by the increased amount of work Marko Zurak had to do on the business and home front during that time period.
The applicant has argued:
Neither declaration precisely identifies the two unspecified weeks in May 2022 during Ms Zurak was ill.
Neither declaration annexes documentary evidence to support Ms Zurak’s period of illness, such as a medical certificate.
Neither declaration explains why Mr Zurak—who was taking on some roles in the business while Ms Zurak was ill—did not undertake the role of engaging a solicitor to prepare the SGP. He does not say that he did not know an SGP had to be prepared. He does not say he forgot about the SGP (and there is no reliance on the ground in Regulation 5.9(4)(a) (error or omission)). He does not explain why he did not attempt to engage a solicitor through telephone or email (both his mobile number and email address are in the NIO), or why he did not attempt to arrange for a solicitor to visit him at his place of work or residence.
Neither declaration precisely identifies the date on which Ms Zurak returned to work in May 2022.
Neither declaration explains, upon her return to work at some point in May 2022, why Ms Zurak did not prioritise engaging a solicitor to prepare the SGP over the other unspecified work she had to do.
There were 24 working days (Mondays to Fridays) between 2 May 2022 and 2 June 2022 inclusive. Assuming a 7.5-hour working day, that amounted to at least 180 working hours. Mr Zurak said he worked 10-hour days, so for him there were some 240 working hours.
Given this generous amount of time, the Potential Opponents’ declarations provide no answers to the following questions, which should cause the Registrar significant doubt:
a. When did Ms Zurak’s illness occur in May 2022?
b. When Mr Zurak took on more roles in the business during Ms Zurak’s illness, why did Mr Zurak not attempt to engage a solicitor to prepare the SGP, given all modern means of communication available to him?
c. When did Ms Zurak return to work in May 2022?
d. When she returned to work, why did Ms Zurak not prioritise engaging a solicitor to prepare the SGP, when she knew it was due on 2 June 2022?
· In effect, the circumstances demonstrate nothing more than this: in May 2022, both during and after Ms Zurak’s illness, the Potential Opponents made deliberate choices to prioritise other demands of their business, over taking steps to prepare and file the SGP.
Having regard to the evidence filed, and the submissions made, I am satisfied that the opponent had a serious intention to oppose the Trade Mark at all times. I am also satisfied that through circumstances outside of its control its intention to file its SGP was frustrated by a number of situations which further compounded each other to the point where the opponent attended and engaged legal representatives before the due date for the SGP. The actions of the opponent in attempting to meet all the deadlines at considerable effort around greatly impacted work loads belies the applicant’s assertion that the opponent’s failure to file the SPG by the due date shows a lack of prioritising the filing of the SGP.
On the contrary, the evidence indicates that the opponent has continually taken positive steps to meet all the deadlines. The opponent filed its NIO well before the due date and did engage legal representation before the due date for the SGP. The opponent also filed its request for an EOT before the due date for the SGP.
On the other hand, the applicant has argued that opponent made deliberate choices to prioritise other demands of its business, over taking steps to prepare and file the SGP. The applicant has stated that while the opponent’s behavior might have made good business sense, the opponent’s deliberate choices to prioritise other business demands over taking steps to prepare and file the SGP do not constitute “circumstances beyond the control of the person” within Reg 5.9(4)(b); and do not justify the Registrar in granting an extension sought under Reg 5.10(1). I am not persuaded by this argument.
It is clear that the opponent has always intended to mount a serious opposition against the Trade Mark and that there were circumstances outside of its control which frustrated its intention to file the SGP by 2 June 2022. This is evidenced by the opponent filing it NIO well before the due date and by the opponent dealing with the consequences of illness, staff shortages and considerably higher workloads. Despite this, the opponent engaged a legal representative before the due date of the SGP in order to have the SGP filed, presumably by the due date.
However, it was unlikely that the opponent’s legal representative would have been able to write up and file the SGP within the short time-frame between engagement and the due date for the SGP. Given the lack of sophistication of the opponent in these matters, the opponent has demonstrated a significant awareness of the due date for the SGP and despite the considerable challenges that faced it during the month from filing the NIO to putting in its EOT. Therefore, I am satisfied that there are ‘circumstances beyond the control of the opponent’ for the purposes of sub-regulation 5.9(4)(b) of the Regulations.
Having found circumstances outside the control of the opponent, I am given, by the wording of Reg 5.10(1), a discretion as to whether or not to allow the extension of time: see, for example, Cynthia Armaro [2007] ATMO 9 (12 February 2007), at paragraph 16. In deciding how to exercise this discretion, I adopt the principles developed by Hearing Officer Michael Homann in Re Ausorb Pty Limited (1996) 36 IPR 178, and consider that the most important factors in coming to a ‘fair and reasonable’ decision in the matter include the relative inconvenience to the parties concerned and the public interest, including the desirability of operating the trade mark system efficiently and without unreasonable delays. See also Re Hall (1998) AIPC 91-425 at 37,393-4, which also adopts those principles.
Should the EOT not be granted the opponent has lost the opportunity to pursue its opposition against the Trade Mark and test the grounds of opposition under sections 43, 44, 58A and 60 of the Act. As a consequence, the applicant would gain unchallenged registration of a Trade Mark that may cause problems in the marketplace for the opponent and Australian consumers. On balance, it seems that the relative inconvenience would be to the opponent if the extension is not granted.
In InsfinInsurance + Finance Group Pty Ltd v Razor USA LLC[1] Hearing Officer McDonagh considered a similar issue under s. 224 and stated:
There is undoubtedly a public interest in the system of registration of trade marks being conducted with regularity and certainty. There is also public interest in registered owners of trade marks who are in fact using their trade marks being able to continue to do so. I take guidance from the High Court:
In my opinion, however, it is in the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be. Kaiser Aluminum & Chemical Corporation v. Reynolds Metal Co. [1969] HCA 7; (1969) 120 CLR 136, per Kitto J at paragraph 14.
[1] [2008] ATMO 80.
Therefore, I consider that at this stage the public interest is served if the substantive opposition is allowed to continue and be resolved before the Registrar rather than the opponent having to bring a separate application to cancel the Trade Mark in court, which it could do on the basis of the same grounds on which the opposition is brought. I am satisfied that I should exercise my discretion to allow the extension of time as requested by the opponent.
Decision
Pursuant to sub-regulation 5.10(1) of the Regulations I extend the time for the opponent to file its SGP.
I order that the parties bear their own costs in relation to this hearing.
Bianca Irgang
Hearing Officer
Trade Marks and Designs Hearings
21 April 2023
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