APN Newspapers Pty Ltd v AECgroup Limited

This matter concerned an application by APN Newspapers Pty Ltd for an extension of time to file a notice of opposition to a trade mark application by AECgroup Limited. APN alleged that AEC had wrongfully appropriated the words "IN THE CITY," which APN claimed to have developed a reputation for through its publication "CityLife." APN sought to oppose AEC's trade mark registration, but the statutory period for filing a notice of opposition had expired. The application for an extension of time was heard by Alison Windsor, delegate of the Registrar, on 2 July 2007. AEC did not appear at the hearing or file submissions.

The primary legal issue before the delegate was whether APN had established sufficient grounds for an extension of time to file its notice of opposition, given that the application was made after the expiry of the statutory period. Specifically, the delegate had to determine if APN's circumstances met the requirements of regulations 5.2(3), 5.3, and 5.4(4) of the relevant trade marks regulations, which outline the allowable grounds for such extensions, including errors or omissions by a trade marks officer, the applicant, or their agent, or circumstances beyond the applicant's control.

The delegate reasoned that APN had not provided sufficient evidence to satisfy the requirements of the regulations. While APN's lawyers, Clayton Utz, attributed the delay to internal oversights and a failure to conduct timely searches of the trade marks register following receipt of AEC's response, the delegate found that these deficiencies did not constitute the type of error that would have thwarted an already existing intention to oppose. The delegate noted that there was no evidence that APN or its agents were aware of the true status of AEC's application until after the opposition period had closed, meaning there was no intention to oppose within the statutory timeframe. Consequently, the delegate concluded that APN had not established any allowable ground under the regulations or provided sufficient reason for the delay.

The delegate refused APN's application for an extension of time. The delegate acknowledged APN's belief in a genuine dispute but noted that AEC had paid its sealing fee and was entitled to expect registration due to the lack of opposition within the allowed period. AEC's trade mark application was therefore permitted to proceed to registration, subject to any appeal.