Anthony Cook v Coast RV Pty Ltd
[2024] ATMO 143
•8 August 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Anthony Cook for an extension of time to file evidence in support of an opposition by Coast International Pty Ltd to an application under section 92 of the Trade Marks Act 1995 (Cth) by Coast RV Pty Ltd to remove of trade mark number 1175738 (classes 6, 7, 12, and 28) – COAST (figurative) - in the name of Coast International Pty Ltd
Delegate: | Timothy Brown |
Representation: | Opponent: Rodney Dalziel Applicant: None |
Decision: | 2024 ATMO 143 Trade Marks Regulations 1995 (Cth) – application for extension of time to file evidence under reg 9.18 – grounds for extension of time under regs 9.18(2)(a) and (b) considered – no grounds established – application for extension of time refused. |
Background
This decision concerns a request under regulation 9.18(1) of the Trade Mark Regulations 1995 (Cth)[1] made by Anthony Cook for an extension of time to file evidence in support of an opposition to an application seeking removal of trade mark registration number 1175738 from the Register of Trade Marks.
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
On 11 January 2023, Coast RV Pty Ltd (‘Removal Applicant’) filed an application under section 92(4) seeking removal of trade mark registration 1175738 for non-use (‘Removal Application’). A Notice of Intention to Oppose the Removal Application was filed by Coast International Pty Ltd (‘Removal Opponent’) on 9 March 2023, followed by a Statement of Grounds and Particulars on 9 April 2023. The Removal Applicant subsequently filed a Notice of Intention to Defend the opposition on 27 July 2023.
In accordance with regulation 9.16(3), the Removal Opponent was provided with a copy of the Notice of Intention to Defend on 2 August 2023, and informed that the Removal Opponent had three months from the date of that notification to file evidence in support of the opposition to the Removal Application. On 16 October 2023, Anthony Cook filed an application under regulation 9.18(1) for an extension of time of 3 months to file EIS. The basis for the extension of time is reproduced below:
The Coast International team of people is small, and resourcing the defense of this trademark has impacted the business detrimentally. We only have one resource in the business with the necessary skills to work on the defense of the trademark. Due to unfortunate circumstances the person doing the work in our business has lost both their parents during this period in which we were to file evidence, and was unable to work through this period. We are not asking for more than the original time frame for the extension in these trying times, of three months. We believe this is only reasonable.
On 20 December 2023, a delegate of the Registrar of Trade Marks (‘Registrar’) informed the Opponent that the Registrar intended to refuse the extension of time because the extension of time application was not filed by the Removal Opponent and the exceptional circumstances for granting the extension of time had not been made out. The delegate allowed the Removal Opponent until 10 January 2024 to file further reasons to justify an extension of time or request a hearing and agree to the amendment of the extension applicant from Anthony Cook to the Removal Opponent.
No response from the Removal Opponent was received. On 22 January 2024, the delegate reiterated its intention to refuse the extension of time application and afforded the Removal Opponent until 31 January 2024 to request a hearing on the matter.
On 2 February 2024, the Removal Opponent filed its evidence in support of the opposition to the Removal Application. However, at this stage the Removal Opponent had yet to request a hearing. On 8 February 2024, the Removal Applicant wrote to IP Australia requesting that the extension of time matter be finalised and no further time be provided to the Removal Opponent to request a hearing. On 12 February 2024, the Removal Opponent requested to be heard.
I heard the matter, as a delegate of the Registrar, on 10 May 2024. Mr Rodney Dalziel appeared for the Removal Opponent. The Removal Applicant relies on its written submissions in its letter dated 8 February 2024.
Evidence and Submissions
The Removal Opponent has not filed any evidence in support of the extension of time application or made written submissions. Instead, the Removal Opponent relies on statements made in the extension of time application and its oral submissions.
The Removal Opponent attributes the delay in filing its evidence to the unexpected passing of Mr Dalziel’s parents. These circumstances were expanded on in oral submissions with Mr Dalziel explaining the following timeline of events:
| Date | Event |
| 21 April 2023 | Mr Dalziel’s father admitted to ICU. |
| 30 May 2023 | Mr Dalziel’s father passed away. Mr Dalziel’s mother admitted to hospital. |
| 22 June 2023 | Mr Dalziel’s mother passed away. |
Following the deaths of his parents, Mr Dalziel explained that he was occupied with the ongoing matters of their estates. Mr Dalziel explained that the Removal Opponent is a business comprised of 2 people and that he was primarily responsible for the administrative duties of the business. This was also emphasised in the extension of time application, which described the Removal Opponent as a small team of people with only one resource with the skills necessary to manage the opposition to the Removal Application.
Relevant Provisions
Regulation 9.18 provides:
(1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 9.16.
(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.
Regulation 9.18(2) provides that an extension of time for filing evidence can only be granted if I am satisfied that the party has made all reasonable efforts to comply with the relevant filing requirements and the failure to file the evidence in time occurred despite the party acting promptly and diligently at all times to ensure the evidence was filed in time, or alternatively, if I am satisfied that there were exceptional circumstances that justify the extension of time. The Removal Opponent bears the onus to satisfy the Registrar that the criteria in regulation 9.18(2)(a) or (b) have been met.
From the outset I note that the Removal Opponent has not rectified the formalities issue concerning the name of the applicant for the extension of time request. The Removal Opponent was informed that the application for the extension of time was made in the name of Anthony Cook rather than the Removal Opponent on 20 December 2023 and asked to amend the name of the extension of time applicant to the Removal Opponent. Regulation 9.18(1) provides that ‘a party may request the Registrar to extend a period for filing evidence mentioned in regulation 9.16’. Mr Cook is not a party to these proceedings.
The Opponent has not made any submissions regarding regulation 9.18(2)(a). However, for the sake of completeness, I have covered both the grounds in my discussion below.
Reasonable efforts, prompt and diligent at all times
Regulation 9.18(2)(a) requires that the party ‘has made all reasonable efforts to comply with all relevant filing requirements of this part’ and has acted ‘promptly and diligently at all times to ensure the filing of the evidence within the period’.
In TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy[2] (‘TRED’), a decision made under equivalent extension of time provisions of the Patent Regulations 1991 (Cth), the delegate explained:
While the two legs are similar, the "reasonable" leg relates to "all relevant filing requirements", whereas the "promptly and diligently" leg relates to the period for filing "the appropriate evidence". Reasonableness appears to relate to conduct over the whole of the opposition, and not just the current evidence stage. I would expect that often where a person has acted reasonably, they will also have acted promptly and diligently (an exception might be where a person was diligently preparing evidence that was unnecessary for the opposition). The question posed by the regulation is whether the person seeking the extension satisfies each leg of the test. Where they fail to satisfy one of the legs, then an extension will not be available (in the absence of exceptional circumstances).[3]
[2] [2013] APO 57 (Delegate Baker Dr).
[3] Ibid [28].
Accordingly, regulation 9.18(2)(a) requires consideration of the party’s conduct over the totality of the opposition proceedings. However, if a party has been prompt and diligent in relation to its preparation and filing of evidence, then it will likely also have made all reasonable efforts to comply with the filing requirements. I note that regulation 9.18(2)(a) does not require perfection.
It is not necessary for the party seeking the extension of time to detail every step taken during the opposition process. The level of detail necessary will also depend on the case and the circumstances surrounding the delay. However, the party does need to explain why they were unable to have the evidence prepared during the relevant period. Context, such as the party’s strategy for the preparation of evidence, a description of what was done and when it was done, or a discussion of any unexpected challenges that arose can help demonstrate that a party has but for the failure to file evidence within the relevant period, acted reasonably, promptly and diligently. No such evidence or submissions have been provided by the Removal Opponent. Accordingly, I am not satisfied that the Removal Opponent has acted promptly and diligently at all times. The ground under regulation 9.18(2)(a) for the extension of the period for filing evidence has not been established.
Exceptional Circumstances
Regulation 9.18(4) includes a non-exhaustive list of circumstances that may warrant extending time on the basis of exceptional circumstances. The list includes circumstances beyond the control of the party, an error or omission by the Registrar, or a court order or direction by the Registrar.[4]
[4] Regulations reg 9.18(4).
In TRED, the delegate described ‘exceptional circumstances’ as:
matters outside the normal evidentiary process, and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence.[5]
[5] Ibid [64].
I accept that the circumstances described in the extension of time application and by Mr Danziel concerning the deaths of Mr Danziel’s parents were beyond the control of the Removal Opponent. However, the onus is on the Removal Opponent to establish not only that the exceptional circumstances existed, but a causal connection between the exceptional circumstances and the failure to comply with the evidence requirements. In this case, the circumstances relied on by the Removal Opponent occurred prior to the filing of the Notice of Intention to Defend and the notice of the period for filing evidence in support. I understand from Mr Dalziel’s oral submissions that he was in a state of grief and concerned with matters of estate following the unfortunate events. However, no evidence has been provided regarding the impact on the preparation of evidence during the period for filing evidence, nor has the Removal Opponent provided a timeline or any other documented explanation regarding how the exceptional circumstances prevented it from complying with the filing requirements during the period for filing evidence.
In addition, no explanation has been provided as to why other staff of the Removal Opponent were not able to file the evidence in support. To this point, the evidence in support ultimately filed by the Removal Opponent was a declaration made by Anthony Cook, the Director of the Removal Opponent, on 2 February 2024. The reason why Mr Cook, who was also the individual who made the extension of time request, was not able to file the evidence on time was not explained in either the extension of time request nor in Mr Dalziel’s oral submissions. I understand that the Removal Opponent has limited staffing resources, being comprised of two staff members, and that Mr Danziel was primarily responsible for the business’ administrative matters, but I do not consider these limited resources to be circumstances beyond the control of the Removal Opponent.
For these reasons I am not satisfied that there are exceptional circumstances that justify extending the period for filing evidence in support.
Decision
I refuse to grant the extensions of time. Accordingly, the period for filing evidence in support ended on 2 November 2023 and the material filed after that date by the Removal Opponent does not constitute evidence in support. Since the extension of time concerned evidence in support of an opposition to an application made under section 92(4), trade mark registration number 1175738 will be removed from the Register.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
8 August 2024
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