Applications by Bravado International Group Limited for extensions of time under - [2025] ATMO 101

TRADE MARKS ACT 1995

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

Re:Applications by Bravado International Group Limited for extensions of time under
s 224 of the Trade Marks Act 1995 (Cth) in respect of trade mark application numbers 2101710 BRAVADO and 2101711 BRAVADO (fig) both in classes 9, 16, 25, 35 & 41 in the name of Bravado International Group Limited

Delegate:

Tracey Berger

Representation:

Applicant: Moran Law

Decision:

2025 ATMO 101

Trade Marks Act 1995 (Cth) – requests for an extension of time under s 224(3) – special circumstances considered – extension of time requests refused

Background

On 7 July 2020, Bravado International Group Limited (‘Applicant’) filed applications under the Trade Marks Act 1995 (Cth)[1] for registration of the trade marks shown below covering a broad range of goods and services in classes 9, 16, 25, 35 and 41:[2]
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
[2] Full details are set out in Annexure A of this decision

Trade Mark Number

(‘Applications’)

Trade Mark

2101710

BRAVADO

2101711

The Applications were examined under s 33 of the Trade Marks Act 1995 (Cth) and on 29 September 2020, an adverse examination report issued on each application. In each case, the Examiner objected to the classification of ‘tattoos’ claimed in class 16 and cited five prior trade marks considered to be substantially identical or deceptively similar to the Trade Marks and covering similar goods and/or closely related services to those claimed by the Applicant in classes 25, 35 and 41. The initial deadline for the Applicant to place the Applications in order for acceptance was 29 December 2021.
On 29 December 2021, the Applicant requested an extension of time (‘EOT’) of three months on each application before filing a request on 28 March 2022 for deferment of examination. Deferment was requested on the basis that the Applicant was gathering evidence of honest concurrent use, prior use or other circumstances justifying acceptance of the Applications under ss 44(3) or 44(4). As a result, the acceptance deadlines were deferred and when deferment was terminated, the Applications had different deadlines for acceptance.
On 21 September 2022, the Applicant requested an EOT of one month on application 2101711 and filed a further deferment request for each application on the basis that cited registration 1508897 had expired but could still be renewed under s 79. Deferment was granted and in early March 2023, a second adverse examination report issued maintaining the previous objections except cited registration 1508897 which had been removed from the Register of Trade Marks and advising that the acceptance deadline for each application was 7 April 2023.[3]
[3] From this point, the Applications proceeded in parallel and hence any reference to an action on one application is a reference to the same action on the other application.
The Applicant then proceeded to request a three month EOT for each application under s 224 to 7 July 2023 on the basis that the Applicant was investigating whether consent could be obtained from the owners of the cited marks and evidence of use of the Applicant’s marks was being gathered. This EOT was granted along with subsequent EOTs for a further 5 months to 7 December 2023 with essentially the same reasons given.
On 6 December 2023, the Applicant requested a further 2 month EOT claiming that agreement for consent had been reached with one of the owners of the cited marks. The EOT was granted and a new deadline set of 7 February 2024.
On 7 December 2023, third examination reports issued confirming that the citation of registration 2032142 was withdrawn as a result of the owner restricting the goods and services of that registration. The examiner maintained the citations of registration 556710 in the name of Hey Clothing Pty Ltd (‘Hey Clothing’), and registrations 1519275 and 1520591 both in the name of Bravado Holding AG, as well as the outstanding classification objection. These outstanding citations would appear to affect only the class 25 Goods and class 35 Services of the Applications.
The Applicant obtained further extensions of time totalling 10 months on the basis that it had reached an agreement with Bravado Holding AG (‘Bravado Holding’) which would result in that party providing consent to the Applications. These extensions took the acceptance deadline for the Applications to 7 January 2025.
On 7 January 2025, the Applicant sought another 3 month EOT advising that the worldwide agreements and ‘negotiations/discussions are taking longer than expected’. The deadline for each application was extended to 7 April 2025 but the Applicant was warned that further extensions were unlikely to be granted without evidence of progress being made to place the Applications in order for acceptance.
On 6 April 2025, the Applicant sought further 3 month EOTs to July 2025 (‘April EOT’) on the basis of the ongoing negotiations with Bravado Holding. The only substantive information provided was: ‘As previously mentioned, the Applicant has an agreement with Bravado Holding AG who are the owners of two of the three cited marks. There has been an ongoing issue relating to the challenges faced in China when it comes to assigning similar marks. We are making progress on this matter and are hoping to resolve soon’.
On 9 April 2025, this office informed the Applicant that it intended to refuse the April EOT on the basis that the Applicant had not supplied sufficient information to support the extension requests. In response, the Applicant requested a hearing by written submissions.
This matter has been allocated to me to determine as a delegate of the Registrar of Trade Marks. On 27 May 2025, the Applicant filed its written submissions prepared by Scott Moran and Jessie Malcolm of Moran Law in support of the April EOT. I make my decision based on these submissions and the aforementioned materials.

Relevant Provisions

Section 224 provides:
(1)The Registrar must extend the time for doing a relevant act that is required by this Act to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a)    the Registrar or a Deputy Registrar; or
(b)    an employee; or
(c)    a person providing, or proposing to provide, services for the benefit of the Trade Marks Office.
(2) If, because of:
(a)    an error or omission by the person concerned or by his or her agent; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required by this Act to be done within a certain time is not, or cannot be, done within that time, the Registrar may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.
(3) If:
(a) a relevant act that a person is required by this Act to do within a certain time is not, or cannot be, done within that time; and
(b) on application made by that person in accordance with the regulations, the Registrar is of the opinion that special circumstances exist that justify an extension of that time;
the Registrar may extend the time for doing the act.
(3A) If the Registrar has revoked the registration of a trade mark, he or she may extend the time for doing a relevant act that is required by this Act to be done within a certain time in connection with the application for registration of the trade mark.
(4) The time allowed for doing a relevant act may be extended, whether before or after that time has expired.
(5) If an application is made under subsection (2) or (3) for an extension of time for more than 3 months, the Registrar must publish the application in accordance with the regulations.
Note: For month see section 6.
(6) A person may, as prescribed, oppose the granting of the application.
(7) An application may be made to the Administrative Review Tribunal for the review of a decision of the Registrar not to extend the time for the doing of a relevant act.
(8) In this section:
relevant act means:
(a) any act (other than a prescribed act) done in relation to a trade mark; or
(b)    the filing of any document (other than a prescribed document); or
(c)    any proceedings (other than court proceedings).
The April EOT is sought based on ‘special circumstances’ under s 224(3). According to this section, I have discretion to extend the prescribed period for placing the Applications in order for acceptance if I am satisfied that ‘special circumstances’ exist justifying the extension. In making this decision, I must consider several factors, particularly the inconvenience to the Applicant if the extension is refused and the public interest in maintaining an efficient registration system.[4] The party seeking the extension must provide adequate information to support the extension and the application of any discretionary considerations.[5]

Discussion

[4] Richard Hall, Re [1997] ATMO 69 (Hearing Officer Murray).

[5] Davison M and Horak I, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 7^th ed, 2022), [15.1995].

Special circumstances

The term ‘special circumstances’ is not defined in the Act but is to be given a liberal interpretation.[6]
[6] Wrangler Apparel Corp v Australia Professional Rodeo Association Inc [1996] ATMO 55 (Hearing Officer I. Forno).
The Applicant argues that it is in advanced negotiations to take an assignment of a number of Bravado Holding’s registrations around the world and to obtain consent in other cases. A draft agreement had been prepared and draft letters of consent pertaining to the Australian citations had been sent for execution. However, in April 2025, the Applicant became aware that there are issues with the planned arrangement between Bravado Holding and the Applicant in China. As a result, the draft agreement could not be signed and the Applicant is now renegotiating the terms of the global agreement ‘and considering alternative options. The Applicant expects a conclusion within the next three months. The Applicant attaches a copy of a draft Trademark Assignment Agreement for Bravado Holding’s Chinese trade marks (‘China Agreement’) and articles about the relevant Chinese law in support of its contentions.
With respect to cited registration 556710, the Applicant notes that the owner of this registration ‘cancelled its ABN status effective from 12 May 2023 and preliminary searches suggest the mark is no longer in use. The applicant therefore considers the prior citation is surmountable via non-use action and/or consent’.
The Applications have now been pending for over five years. The Applications initially faced citations of 5 prior marks in the name of three different owners. Considering the Applications cover five classes of goods and services, this is not a significant number of objections. Moreover, the Applicant has not provided detailed information on the steps taken since examination of the Applications in September 2020 to place the Applications in order for acceptance. Additionally, I have some reservations about the accuracy of certain statements made in the declarations filed to support the various extension requests with regard to whether or not an agreement with Bravado Holding was ever reached.
The deferment request of March 2022 indicated that the Applicant was gathering evidence of use to address the objections under s 44(3) or (4). By March 2023, cited registration 1508897 had been removed from the Register and there were only 4 cited marks, one in the name of Hey Clothing and three in the name of Bravado Holding. In support of its extension applications in April 2023, the Applicant advised that it was ‘investigating opportunities for Consent whilst also gathering evidence of use’. It relied on the same reasons for further extensions of time until December 2023. No evidence of use has ever been filed despite the Applicant’s advice that it was engaged in gathering such evidence for at least 18 months.
The Applicant now notes that it appears the citation of registration 556710 can be addressed by filing a non-use application or seeking consent from Hey Clothing. According to the Applicant’s submissions, Hey Clothing has not been registered for GST since March 2023. It appears that the Applicant has only now become aware of this despite spending months ‘investigating opportunities for consent’. In my view, it seems highly probable that the citation of Hey Clothing’s registration 556710 could have been addressed two years ago by filing a non-use application which would presumably would not be opposed. In this regard, I have searched the available database records of the Australian Securities and Investments Commission which indicate that Hey Clothing has been deregistered since 3 May 2023.
It does appear that the Applicant has been engaged in negotiations with Bravado Holding but the Applicant has not disclosed when these negotiations commenced or the frequency of the communications. In December 2023, the Applicant’s extension applications stated that ‘The Applicant has an agreement with Bravado Holding AG who are the owners of two of the three cited marks. They are currently in the process of finalizing limitations’. The specification of Bravado Holding’s cited registration 2032142 was amended and that objection withdrawn in December 2023 suggesting that the parties were (or had been) negotiating and an agreement reached. However, no further progress was made towards resolving the objections based on Bravado Holding’s marks.
Since December 2023, the Applicant’s Attorney has declared in its extension applications that the Applicant has an agreement with Bravado Holding. On 2 October 2024, for the first time, the Applicant’s attorney declared there is a ‘final issue that has arisen during discussions (relating to challenges faced in China)’. On 26 May 2025, the Applicant appointed new Australian attorneys who have filed the written hearing submissions stating:
The applicant is in advanced negotiations with Bravado Holding AG to take assignment of a number of its BRAVADO trade marks worldwide and provide consent where needed. The parties had almost reached a resolution and the draft agreement, and draft letters of consent pertaining to the Australian citations had been sent to counsel for the owners for execution.
However, in April 2025, the applicant found out that there are issues with this agreement after receiving advice from a local Chinese agent (via a phone call).
The global agreement intended to result in Bravado Holding AG retaining “BRAVADO DESIGNS” marks, however Chinese practice does not allow multiple parties to own similar marks for the same goods or services. Specifically, article 42 of Trademark Law of China provides all similar or identical marks designating similar or identical goods must be assigned simultaneously. We attach extracts of articles around this point.
On receipt of advice that all Bravado Holding AG’s rights would have to be assigned in China, the draft agreement could not be signed. We also attach a copy of this document for reference solely in support of these submissions.
The parties are currently re-negotiating the terms of the global trade mark agreement and considering alternative options. A conclusion is expected to be reached within the next three months.
In my opinion, there are several inconsistencies or at least a lack of clarity regarding the situation with Bravado Holding, based on the statements and declarations from previous attorneys supporting various extension requests. My understanding from the declarations provided in support of the extension applications for some years was that the Applicant had an agreement with Bravado Holding but the written submissions of the current attorney suggests that there is no agreement, rather ‘[T]he parties had almost reached a resolution’. If a global agreement exists, I would expect it to be evidenced or at least informed of the execution date with some details about the terms. Furthermore, it seems unlikely that a global agreement would be negated due to an issue in a single country like China. There is no information about the situation in other countries or even how many countries are involved.
It is also unclear when the Applicant became aware of the problem in China. The Applicant’s attorney first mentioned an issue in China in October 2024, but the current attorney’s submissions state that the issue did not come to light until a phone call in April 2025. Either way, this is long after the amendment to registration 2032142 in December 2023 when the Applicant claimed it had an agreement with Bravado Holding, so I am unsure what transpired between December 2023 and either October 2024 or April 2025. It is also apparent from the articles filed with the written hearing submissions that the law in China affecting the agreement between Bravado Holding and the Applicant is not new or a change in practice. If an agreement had been reached by December 2023, as claimed by the Applicant’s attorneys at that time and in subsequent extension applications, I cannot understand why the issue in China took so long to be discovered or how it affects the situation in Australia.
If the parties are still negotiating and have not agreed on terms of co-existence, given the time already taken, I have no confidence that an agreement will be reached in the extended period if I grant the April EOT. The China Agreement has been drafted assuming Bravado Holdings will now agree to assign all of its trademarks in China. I understand that they have not yet agreed to do so and I do not have sufficient information to assess the likelihood of such agreement being forthcoming.
There is a public interest in matters being decided without unnecessary delay. Whilst complex negotiations over a prolonged period can constitute ‘special circumstances’,[7] I am not persuaded that the present situation is extraordinarily complicated nor that the Applicant has been diligently pursuing acceptance of the Applications. Even if the April EOT is granted, this will not allow sufficient time for the Applicant to address the citation of Hey Clothing’s registration 556710 (although I acknowledge that deferment could be requested after the filing of any application to remove registration 556710 for non-use).
[7] Harvey Comics Inc [2001] ATMO 77 (Hearing Officer I. Forno).
The Applicant’s arguments that the Applicant will suffer ‘unjust harm’ by the loss of priority date if I refuse to grant the April EOT and that no third party will be disadvantaged, are also not persuasive. There is no evidence before me that the Applications have not blocked any subsequent application nor deterred a third party from applying for a similar mark. Also, the priority date could have been preserved by filing divisional applications for those goods and services to which the citations apply, thereby allowing the Applications to proceed to acceptance for the other goods and services (presumably at least those in classes 9, 16 and 41) which would also have allowed the Applicant a considerably longer period to continue negotiations with Bravado Holding. The fact that the Applicant did not preserve its priority date by adopting this strategy does not mean that an extension of time should now be granted.
In all the circumstances, I am not satisfied that there are special circumstances which justify the granting of the April EOT.

Decision

Accordingly I refuse the extension of time requests which are the subject of these proceedings.

Tracey Berger

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

3 June 2025

ANNEXURE A

Number

Trade Mark

Goods & Services

2101710

BRAVADO

Class 9: Pre-recorded audio tapes, discs and cassettes, video tapes, discs and cassettes, digital audio and audio video tapes and discs, CDs, DVDs, laser discs, and phonograph records featuring music and entertainment; theatrical and musical sound and video recordings; virtual reality game software; downloadable ring tones, music, mp3 files, graphics, games, images and videos for wireless communication devices; downloadable music, mp3 files, graphics, computer games, images and videos; computer game software, tapes, cartridges and cassettes; video game software, tapes, cartridges and cassettes; cell phones and cell phone accessories; sunglasses; and mouse pads; video game cartridges

Class 16: Books and magazines in the fields of music, entertainment, art and/or culture; address books; appointment books; pens; calendars; greeting cards; post cards; pen and pencil cases; pencil sharpeners; pens; pencils; date books; bumper stickers; decals; note pads; stickers; rubber stamps; tattoos; posters; trading cards; and stationery; money clips made of precious metal

Class 25: Bandannas; bathing suits; belts; blouses; body suits; footwear; shoes; ties; coats; dresses; vests; gloves; gowns; hats; caps; hosiery; jackets; pajamas; pants; robes; scarves; shorts; shirts; visors; skirts; halloween costumes; suspenders; ear muffs; sweat shirts; sweat pants; sweat jackets; sweaters; t-shirts; tank tops; socks; tops; wrist bands; and childrens' clothing, namely, infantwear, headwear, footwear, jackets, sweaters, coats, skirts, shirts, t-shirts, tank tops, blouses, dresses, shorts, pants, bathrobes, cloth bibs, booties, coveralls, creepers, ear muffs, hosiery, tights, jumpers, leggings, hats, mittens, night gowns, overalls, pajamas, rompers, shawls, shoes, socks, swim wear, sweat pants and sweat shirts

Class 35: Advertising and promotion services and related consulting services; advertising and publicity services; promotion services, namely promoting the interests of musicians, singers, songwriters, musical performers and artists; computerized on-line ordering relating to general merchandise and general consumer goods; computerized on-line ordering services in the field of music; computerized online retail store services all relating to CDs, cassettes, DVDs, clothing; computerized on-line gift ordering services which matches the gift giver's requirements with the gift recipients wants and needs; conducting an on-line tradeshow exhibition, in the field of music, musical concerts and videos; mail order catalog services all relating to CDs, cassettes, DVDs, clothing; organization of promotions using audio-visual media; preparing audio visual presentations for use in advertising; arranging and conducting trade show exhibitions in the field of music and entertainment; arranging and conducting fairs and exhibitions for business and advertising purposes; promoting and conducting trade shows in the field of music; promoting the concerts of others; promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with concerts and musical events; promoting the goods of others by preparing and placing advertisements in an electronic magazine accessed through a global computer network; providing business information about the goods and services of others via a global computer network; and subscriptions to books, reviews, newspapers or comic books; computerized online retail store services, on-line retail store services and retail store services available though computer communications and interactive television all relating to apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, MP3 records, automatic vending machines and mechanisms for coin operated apparatus, data processing equipment and computers, recorded media, computer hardware and firmware, computer software, software downloadable from the Internet, downloadable electronic publications, compact discs, digital music, telecommunications apparatus, computer games equipment adapted for use with an external display screen or monitor, mouse mats, mobile phone accessories, contact lenses, spectacles and sunglasses, pre-recorded audio tapes, discs and cassettes, video tapes, discs and cassettes, digital audio and audio video tapes and discs, CDs, DVDs, laser discs and phonograph records featuring music and entertainment, theatrical and musical sound and video recordings, virtual reality game software, downloadable ring tones, music, mp3 files, graphics, computer games, images and videos for wireless communication devices, downloadable music, mp3 files, graphics, computer games, images and videos, computer game software, tapes, cartridges and cassettes, video games software, tapes cartridges and cassettes, cell phones and cell phone accessories, paper, cardboard, printed matter, photographs, stationery, printed publications, books and magazines in the fields of music, entertainment, art and/or culture, address books, appointment books, pens, calendars, greeting cards, post cards, pen and pencil cases, stickers, leather and imitations of leather, animal skins, hides, trunks and travelling bags, handbags, rucksacks, purses, umbrellas, parasols and walking sticks, whips, harness and saddlery, clothing, headgear, footwear, games and playthings, gymnastic and sporting articles, electronic game equipment, electronic games ( hand held with for playing), stand alone video game machines, hand held unit for playing video games, pinball-type games, arcade-type electronic video games, pinball machines, gaming equipment, namely poker chips, dolls, doll accessories and clothing, baby rattles, bath toys, beach balls, action figures and accessories therefore, electric action toys, children's multiple activity toy, Christmas tree ornaments, costume masks, kites, musical toys, pet toys, plush toys, puppets, puzzles, stuffed dolls and animals, swim floats, target games, toy action figure, toy banks and sporting goods, namely golf clubs, baseballs, baseball bats, footballs, basket balls and soccer balls

Class 41: Production of television and radio programs; distribution of television and radio programs for others; production and publishing of music; providing online entertainment, namely providing sound and video recordings in the field of music and music based entertainment; entertainment services, namely providing online non-downloadable prerecorded musical sound and video recordings via a global computer network; fan clubs; development and dissemination of educational materials of others in the field of music and entertainment; radio entertainment production and distribution; audio and sound recording and production; record production; videotape production; production of motion picture films; distribution of motion picture films; television program syndication; entertainment in the nature of ongoing television programs in the field of music and entertainment; entertainment, namely a continuing music and entertainment show distributed over television, satellite, audio, and video media; publication of books and magazines; entertainment in the nature of ongoing radio programs; entertainment in the nature of live concerts and performances by musical artists and groups; entertainment services, namely personal appearances by musical groups, musical artists and celebrities; entertainment services in the nature of performances rendered by musical artists through the medium of television, radio, and audio and video recordings; entertainment services, namely recorded performances by musical artists; educational and entertainment services, namely, production and presentation of television shows, sports events, fashion shows, game shows, music shows, award shows and comedy shows before live audiences which are all broadcast live or taped for later broadcast; entertainment services, namely, providing multi-media entertainment featuring musical performances, musical videos, related film clips and photographs via a website; entertainment services, namely, providing on-line reviews of music, musical artists and music videos; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; entertainment services namely live, televised and movie appearances by a professional entertainer; conducting entertainment exhibitions in the nature of music festivals; entertainment services, namely, conducting exhibitions in the field of music and the arts; organizing exhibitions for entertainment purposes featuring music and the arts; and publishing of web magazines; distribution of music; distribution of musical sound recordings and video recordings; preparing audio-visual displays in the field of music

2101711