Andando Pty Ltd v DDT Liners (Australia) Pty Ltd Now Teneo Group Ptd Ltd
[2016] ATMO 43
•29 June 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Andando Pty Ltd to registration of trade mark application no. 1688574 – DDT Liners – in the name of DDT Liners (Australia) Pty Ltd – Request by Andando Pty Ltd for extension of time to file evidence in support, and objection by DDT Liners (Australia) Pty Ltd.
| Delegate: | Hearing Officer: Bianca Irgang |
| Representation: | Opponent: Chris Neville of Condon Charles Lawyers Applicant: Not present at the hearing |
| Decision: | 2016 ATMO 43 Regulation 5.15 – extension of time to file evidence in support– no exceptional circumstances – not making all reasonable efforts to comply – not acting promptly and diligently at all times – request for extension of time refused. |
Background
This decision concerns an application for an extension of time to file evidence in support under regulation 5.15 of the Trade Mark Regulations 1995 (‘the Regulations’).
The substantive matter concerns an application by Teneo Group Ptd Ltd formerly known as DDT Liners (Australia) Pty Ltd[1] (‘the applicant’) for registration of the trade mark DDT LINERS, and opposition to registration by Andando Pty Ltd (‘the opponent’). Those proceedings began in September 2015 by which time changes to the Regulations brought about by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), (‘RTB’), had been in effect for a considerable amount of time having commenced on 15 April 2013.
[1] However, I note that the application was made originally in the name of DDT Liners (Australia) Pty Ltd.
The trade mark application was accepted for possible registration and the official notice of acceptance was published in the Australian Official Journal of Trade Marks dated 10 September 2015.
The opponent filed its Notice of Intention to Oppose the registration on 25 September 2015 and then filed its Statement of Grounds and Particulars on 28 October 2015. The application filed its Notice of Intention to Defend the opposition on 26 November 2015. The opponent then had until 28 February 2016 in which to file its evidence in support.
The opponent did not file its evidence on 28 February 2016 but applied, under regulation 5.15 of the Regulations for a one month extension of time until 29 March 2016. The opponent’s reasons for requesting the one month extension of time may be summarized as follows:
Mr Maxwell Lawrence Brady is the only director of the opponent and has no employees who have been available to assist him in gathering evidence;
As the opponent has been operating in excess of 20 years there was a significant amount of material to review in support of the opposition;
A large amount of the material the applicant needed in support of its opposition had been archived and it took longer than expected for Mr Brady to identify the relevant documents and provide them to his lawyers;
Mr Brady delivered the records to his lawyers on 19 February 2016 along with a list of witnesses who were prepared to provide further evidence;
Narrowing down the number of witnesses to provide evidence in support of the opponent’s opposition took longer than Mr Brady anticipated;
As well as gathering the evidence Mr Brady also continued with his other business operations and general day to day issues that ‘we all experience’;
Mr Brady was also spending a significant amounts of time on his farm in Yass preparing it for sale;
Mr Brady states that this proceeding is related to a number of other proceedings and legal disputes the opponent and its related entities are involved in and that those matters have also required a significant amount of the applicant’s time in providing information and instructions; and
Mr Brady asserts that he has moved as quickly as he could to get the evidence in support together and that he has been informed by his lawyers that all the evidence can be completed and filed within the one month extension of time requested.
The Senior Examiner was not satisfied that the reasons provided justified an extension of time and she intended to refuse the extension request stating:
An extension under reg. 5.15 (2)(a) requires a party to have made “all reasonable efforts” to comply with relevant filing requirements and to have acted “promptly and diligently” at all times. In order to be satisfied that an extension of time is appropriate, the extension applicant is required to provide sufficient information to justify the amount of time requested. A time-line of the steps taken in the preparation of evidence is helpful.
Mr Brady has explained a number of issues that have slowed the preparation of evidence however, based on the information before me, it also appears that Mr Brady prioritised his time at the farm in Yass over the preparation of evidence. Without knowing whether there was some urgency in preparing the farm for sale in the months of November and December, I cannot be satisfied that the opponent made all reasonable efforts to comply with the filing requirements and acted promptly and diligently at all times.
In addition, the opponent has not provided any details of exceptional circumstances under reg. 5.15 (2)(b) to justify the extension.
The Senior Examiner gave the opponent additional time in which to provide additional written reasons or to request and pay for a hearing in the matter by the 29 March 2016. The Senior Examiner also advised the opponent:
A one month extension will take the period for evidence in support to 29 March 2016. It will not be decided before this date whether the extension is to be granted. It is the opponent’s responsibility to continue preparing the evidence and ensure it is filed no later than 29 March 2016.
The opponent requested and paid a hearing on the matter on the 29 March 2016.
I was delegated to hear and decide the matter. The opponent came before me in Canberra on Wednesday 20 May 2016. The opponent was represented by Chris Neville of Condon Charles Lawyers. The applicant was not present at the hearing, nor did it provide written submissions although it was afforded an opportunity by the Registrar to represent its interests.
I must now decide whether to grant the current extension of time application, however, I note that the opponent did not file its evidence in support until 6 April 2016 which is after the one month extension of time requested. Therefore, even if I were to be persuaded to grant the extension of time, the consequence would be that the opponent’s evidence in support will still have been filed outside of the allowed time.
I also note that in its submissions for the hearing the opponent indicates that it would like time to put on additional evidence from witnesses and that it does not appear to have finalized this evidence, nor has a another extension of time request been forthcoming. Indeed, it appears that part of the opponent’s submissions go towards forming an argument for the Registrar to accept ‘further evidence’ from the opponent. I note that there are no longer any provisions dealing with ‘Further Evidence’ in the Act and that the opponent’s representative may have been making submissions under a misunderstanding that this extension of time hearing would be an opportunity to make requests for additional extensions of time and requests under r 21.19. This is not the case.
As I explained to the opponent’s representative at the hearing, I would deal with the opponent’s one month extension of time request until the 29 March 2016. Any additional requests the opponent may have would need to be formally requested, assessed and dealt with in light of my decision on this matter.
Legislative background and procedural framework
Provisions for the service and filing of evidence in answer of an opposition are governed by the Regulations. Regulation 5.14 provides:
Evidence in support
(3) An opponent must file any evidence in support of the opposition within 3 months from the day the opponent is given a copy of the notice of intention to defend.
Regulation 5:15 provides:
5.15 Extension of time for filing
(1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 5.14.
(2) The Registrar may extend the period only if the Registrar is satisfied that:
(a) the party:
(i) has made all reasonable efforts to comply with all relevant filing requirements of this Part; and
(ii) despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or
(b) there are exceptional circumstances that justify the extension.
(3) The Registrar:
(a) must decide the length of the extended period having regard to what is reasonable in the circumstances; and
(b) may do so on terms that the Registrar considers appropriate.
(4) In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;
(b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;
(c) an order of a court or a direction by the Registrar that the opposition be stayed.
As stated previously, the RTB came into effect on 15 April 2013. I state this as there appears to be some confusion on the opponent’s part about requests for extensions of time. The RTB repealed existing extension of time provisions and replaced them with, among other provisions, regulation 5.15 as reproduced above. The Explanatory Statement to the RTB (‘the Explanatory Statement’) states:
A second purpose of the Regulation is to amend the Patents Regulations and the Trade Marks Regulations 1995 (the Trade Marks Regulations) to reduce delays in the resolution of patent and trade marks applications.
…
Schedule 3 to the Regulation amends both the Patent Regulations and Trade Mark Regulations to streamline the opposition process by reducing time frames and introducing a more rigorous test for granting extensions of time to file evidence.[2]
[2] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), p 1.
The Explanatory Statement goes on to state the intention of the Regulation. This being: all substantive proceedings before the Registrar shall be conducted in a similar manner[3] (substantive proceedings being those that focus on registrability and use issues[4]). In respect of provisions relating to opposition to registration it says:
New regulation 5.15 [relating to extensions of time for filing evidence] narrows the circumstances in which the Registrar will grant an extension of time to provide evidence. Extension of the evidentiary periods is at the discretion of the Registrar and only where the Registrar is satisfied that the party entitled to file evidence in that period has acted promptly and diligently at all times since the opposition proceedings began, but despite that, or because of some other exceptional circumstances, cannot file the evidence in that period. Once the conditions are met the Registrar has the discretion to consider whether or not it is appropriate that an extension of time be granted.[5]
[3] Explanatory Statement, p 32.
[4] Explanatory Statement, p 24.
[5] Explanatory Statement, p 29.
Discussion and Reasons
Clearly an intention of the RTB is to reduce delays in opposition proceedings by narrowing the circumstances in which an extension of time will be available. There are published decisions of the Registrar in respect of extensions of time to file evidence under the new provisions including Caprice Australia Pty Ltd v MG Icon LLC [2014] ATMO 34 (‘MG Icon’). The Commissioner of Patents has also published a number of decisions including Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd (‘TRED’)[6].
[6] [2013] APO 57 (11 November 2013), at [34]-[35].
In relation to the extension of time provisions the Hearing Officer in MG Icon affirmed the statements made by the delegate in TRED stating:
In relation to equivalent extension of time provisions in the Patents regulations the delegate observed in TRED that:
[I] need to ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.
I accept that the same principles apply to the matter before me: questions 1 and 2 relating to the provisions of paragraph (a) of subregulation 9.18(2), and question 3 relating to the provisions of paragraph (b).
While the Hearing Officer in MG Icon was making a decision on the basis of regulation 9.18, it is clear that these principles are also to apply to the application of regulation 5.15. This being the case, I may extend the period if I am satisfied that the opponent has made all reasonable efforts to comply with the relevant filing requirements and that despite having acted promptly and diligently at all times to ensure the filing of the evidence within the period, has been unable to do so. I may also grant the extension request if I am satisfied that there are exceptional circumstances which warrant it. The opponent bears the onus to satisfy the Registrar that the criteria in Regulation 5.15(2)(a) or (b) have been met. This is an onerous test: Fonterra Co-Operative Group Ltd v Meiji Dairies Corporation [2014] APO 11 at [10].
Subregulation 5.15(2)(a)
The main thrust of the opponent’s submissions was that it has made all reasonable efforts to comply with the relevant filing requirements and that despite having acting promptly and diligently at all times to ensure the filing of the evidence within the period, it has been unable to do so.
In coming to a decision on this matter I will consider the first two questions from TRED in light of the opponent’s submissions. The opponent has not provided a time line of events and I am left with much the same information as offered by Mr Brady at the time of making the extension of time request.
Counsel for the opponent proposes the extension of time should be granted on the basis that the opponent is serious about pursuing its opposition proceeding and that this is demonstrated through:
Mr Brady deposing the length of time that the opponent has been trading under the name DDT LINERS;
Engaging lawyers to assist with the opposition application and supplying them with documents and information (including other witnesses’ details);
Mr Brady deposing that he has “moved as quickly as he could” to get all the relevant materials together in support of the opponent’s opposition proceeding; and
Instructing its solicitors to take statements from other witnesses in support of its opposition proceeding.
It is on the basis of all the above information that the opponent has claimed to have acted promptly and diligently at all times in gathering its evidence but has been unable to do so within the required timeframe. However, I am not persuaded by this reasoning.
There has been no time line provided in this case. Without it there is no way for me to know more precisely what took place during the entire three months the opponent had to collect its evidence in support. I have before me some broad and unclarified statements of Mr Brady having to deal with additional proceedings and legal disputes that the opponent and its related entities are involved in. Mr Brady states that those matters have also required a significant amount of the opponent’s time in providing information and instructions but there are no specific dates given so these events may very well have occurred before the evidence in support period even began.
There is no indication of unusual events or new litigation commencing during the three month period for gathering evidence in support but these broad and unsubstantiated statements that there are related legal proceedings and disputes occurring which have required Mr Brady’s time, along with his statements of spending considerable time preparing a property for sale with no indication of whether the sale was urgent or unexpected.
Further, while I can appreciate Mr Brady’s statements regarding the opponent being a small business with limited staff and other ongoing litigation, there is little indication that Mr Brady paid diligent attention to the preparation of his evidence in this matter. The lack of information as to the specifics that occurred during all of the evidence in support stage and the lack of Mr Brady’s focus could not be described as acting promptly and diligently at all times. The word ‘diligent’ is defined in the Macquarie Dictionary as:
Adjective 1. Constant and persistent in an effort to accomplish something. 2. Pursued with persevering attention; painstaking.
The Oxford Online Dictionary defines reasonable as:
Adjective i. having sound judgement; fair and sensible: ii. Based on good sense: iii. Able to reason logically: iv. As much as is appropriate or fair; moderate: v. fairly good; average.
The events described by Mr Brady, although perhaps contributing to delays in finalizing the evidence, cannot be used to excuse it. These were not new and unforeseen events and there are no details provided which indicate otherwise. Whilst Mr Brady was understandably busy during this period of time, he was also closely involved with and aware of the legal disputes faced by the opponent particularly because he commenced these opposition proceedings.
The asserted busy circumstances surrounding Mr Brady provide a vague and unsubstantiated account of the efforts Mr Brady went to during the three month period he was apparently gathering the opponent’s evidence. Those events and circumstances do not establish prompt and diligent action at all times because the reasons I have before me do not adequately show that all ‘reasonable efforts’ were made by Mr Brady in the circumstances to ensure the filing of evidence within the period.
Indeed, despite warnings that the opponent needed to get its evidence in by the 29 March 2016, the opponent was still unable to file its evidence by that date.
Since I am not satisfied that the opponent has acted promptly and diligently at all times, on the basis of its submissions, subregulation 5.15(2)(a) may not be applied to extend the period for filing evidence in support.
Subregulation 5.15(2)(b)
There have been limited submissions made that the extension may be granted on the basis of exceptional circumstances. Certainly, I say now that none of the preceding submissions made by the opponent would amount to exceptional circumstances for the following reasons:
Ongoing involvement in litigation, like other business disruptions, can be managed and should have been accommodated: see Sportingbet Australia v Tabcorp International Pty Ltd [2014] APO 21 at [68],
Searching through physical historical data and obtaining information/documentation from third parties is not unusual in the gathering together of evidence and should be allotted time and resources with sufficient consideration. This is not something outside of the normal evidentiary process: see TRED.
As indicated earlier, Mr Brady has mentioned that he was preparing a property for sale which took up considerable time but finer details of what was occurring and why have not been provided in the opponent’s submissions. It is unclear if the sale was a sudden and unexpected event and how the preparation of the property may have affected Mr Brady’s gathering of evidence during the three month evidence in support stage. Indeed, the opponent’s evidence was filed outside of the one month extension of time requested and no additional reasons or explanations for the delay have been forthcoming.
Without the opponent clarifying any of the circumstances surrounding the legal disputes and property sale, I am unable to be satisfied that exceptional circumstances exist which would justify the granting of the extension of time request. Since I am not satisfied on the basis of the opponent’s submissions, subregulation 5.15(2)(b) may not be applied to extend the period for filing evidence in answer.
Other Arguments
It was also argued by the opponent’s representative that the evidence it wishes to put into proceedings will provide objective and dispassionate evidence of the matters set out in the opponent’s statement of grounds and particulars. In particular it is contended that the further statements will provide evidence of:
The length and standing of the opponent’s reputation trading as DDT Liners within the mining industry in Australia and that this is relevant to the opponent’s arguments under ss 41 and 60; and
The potential for a substantial number of people to be deceived or confused about whether they are dealing with the applicant or with the opponent which is relevant to the opponent’s arguments under ss 41 and 60.
I am hard pressed to see how the second point would be relevant to an argument under s 41 of the Act, but I approach these statements under the assumption that the opponent’s representative is stating that the evidence would support the opponent’s opposition. However, this is not a valid reason for discounting the fact that the opponent has filed its evidence out of time.
Decision
The opponent has neither demonstrated that it acted promptly and diligently at all times or that there were any exceptional circumstances which prevented the filing of the evidence. Instead, it appears that the opponent has taken the view that the extension of time should be granted on the basis of explanations more fitting for pre-RTB extension of time requests. This is simply not acceptable post RTB.
Accordingly, I refuse to grant the extension of time. As a consequence, the period for filing evidence in answer ended on 29 February 2016 and any evidence filed after that date does not constitute evidence in support. Therefore, the opponent has not filed any evidence in support in these opposition proceedings.
Bianca Irgang
Hearing Officer
Trade Marks Hearings
30 June 2016
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