Brand New Clinic Pty Ltd v Luxe Clinic Pty Ltd
[2025] ATMO 52
•6 March 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Brand New Clinic Pty Ltd for an extension of time to file a statement of grounds and particulars for an opposition to the registration of trade mark application number 2319891 (class 44) – LUXE CLINIC (figurative) - in the name of Luxe Clinic Pty Ltd
Delegate: | Timothy Brown |
Representation: | Opponent: Baxter Patent Attorneys Pty Ltd Applicant: Jay R Estavillo of Franke Hyland Pty Ltd |
Decision: | 2025 ATMO 52 Trade Marks Regulations 1995 (Cth) – application for an extension of time to file a statement of grounds and particulars under regulation 5.9 – error or omission and circumstances beyond control considered – extension of time refused. |
Background
This decision concerns an application made by Brand New Clinic Pty Ltd (‘Opponent’) under regulation 5.9 of the Trade Mark Regulations 1995 (Cth)[1] for an extension of time (‘EOT’) to file a Statement of Grounds and Particulars (‘SGP’) in the opposition to the registration of the following trade mark:
Trade Mark Number: 2319891
Trade Mark:
Filing Date: 6 December 2022
Owner: Luxe Clinic Pty Ltd (‘Applicant’)
Services:Class 44: Medical services being plastic surgery, cosmetic surgery, reconstructive surgery
Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied. Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.
[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’).
The Opponent filed a Notice of Intention to Oppose (‘NIO’) on 2 May 2024. In accordance with reg 5.7(1), the Opponent was notified by IP Australia on 6 May 2024 that it had until 2 June 2024 to file its SGP.
On 5 June 2024, Yizhuang Chen filed an EOT requesting an extension to 2 July 2024 to file its SGP. On 12 June 2024, IP Australia responded, informing Mr Chen of a number of issues with the EOT that needed to be addressed, namely that the EOT must be made by the Opponent, accompanied by a supporting declaration and that the SGP also needed to be filed before the EOT could be considered.
On 25 June 2024, the Opponent filed the SGP and requested the name of the party requesting the EOT be amended to the Opponent. The Opponent did not file a declaration in support of the EOT, and on 3 July 2024, IP Australia once again requested the Opponent file the declaration. On 26 July 2024, the Opponent filed a declaration of Yuzhuang Chen, Managing Director of the Opponent, made on 26 July 2024 (‘Chen’).
On 6 August 2024, a delegate of the Registrar of Trade Marks wrote to the Opponent indicating an intention to refuse the EOT (‘Notice of Intention to Refuse the EOT’) and allowed the Opponent until 20 August 2024 to either respond in writing or request a hearing.
The Opponent requested to be heard by way of written submissions, and the Applicant requested an oral hearing. The matter was heard before me, a delegate of the Registrar of Trade Marks, by video conference on 5 December 2024. The Opponent filed a second declaration made by Yizhuang Chen dated 26 November 2024 (‘Chen 2’) with Exhibits-01 to 04. The Applicant was represented by Jay R Estavillo of Franke Hyland. In making this decision I take into account all of the above detailed material.
Extension of Time Provisions
Regulation 5.9 provides:
(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(1) provides the Registrar with discretion to grant an extension of time only if satisfied that the grounds set out in the request justify the extension. These grounds pertain to either of those outlined in reg 5.9(4). Furthermore, if the EOT request is made after the deadline for filing the statement of grounds and particulars, the Registrar must be satisfied that there is sufficient reason for the delay in making the request.[2]
[2] Reg 5.10(2).
Discussion
The EOT nominates both an error or omission, and circumstances beyond the control of the person as grounds for the EOT. In Chen and Chen 2, the Opponent outlined the following reasons for the delay in filing its SGP:
There was an unforeseen delay in receiving ‘critical communications’ which resulted in the Opponent being unable to act promptly and respond within the original timeframe.
Preparing an opposition requires thorough legal research and consultation. The complexity of issues involved in the opposition, such as assessing potential conflicts between trade marks, required additional time;
Coordination with legal counsel took longer than anticipated;
The Opponent encountered technical difficulties with IP Australia’s online system; and
Holiday and office closures have limited the Opponent’s capacity to gather and submit the necessary documents in a timely manner.
Error or Omission
The term ‘error or omission’ features in a number of provisions, including the provision for an extension of time under s 224 and equivalent provisions in the Patents Act 1990 (Cth). In Kimberly-Clark Ltd v Commissioner of Patents[3], Jenkinson J considered the meaning of ‘error or omission’ in the context of an extension of time under s 160(2)(a) of the Patents Act 1952 (Cth):
the word "error" is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips…
By no means every judgment by "the person concerned" or by "his agent or attorney" which can be shown to have been mistaken will answer the description "error or omission" in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error.[4]
[3] [1988] FCA 697 (Jenkinson J).
[4] Ibid [9]-[10].
The failure to file an SGP in and of itself cannot be the error or omission.[5] There must a causal connection between the error or omission and the failure to file the statement of grounds and particulars by the deadline. This requires the relevant error or omission to be antecedent to the failure to meet the deadline.[6] The burden of establishing a case justifying an extension of time falls to the Opponent.[7]
[5] Ibid [11].
[6] Golden Buffalo Group Pty Ltd v Posh Lifestyle Pte Pty Ltd [2022] ATMO 104, [15] (Hearing Officer Barbey).
[7] Vangedal Nielsen v Smith (Commissioner of Patents) (1980 33 ALR 144, 149 (Bowne CJ).
In relation to the unforeseen delays in receiving communications, Chen 2 explains that the employee of the Opponent who was responsible for managing the opposition resigned at the end of May 2024.[8] Mr Chen took over responsibility for the matter, but ‘did not fully understand the important deadlines mentioned in the communications from IP Australia’[9].
[8] Chen 2 [12].
[9] Ibid [13].
The Applicant submits that the statements in Chen 2 are too vague and do not provide a full or frank disclosure of the Opponent’s conduct and mental processes in the period leading up to the deadline to file the SGP. Further, the Applicant submits that the Opponent has not explained why it did not access the receipt of the NIO issued by IP Australia on 6 May 2024.
It is not apparent at what point Mr Chen appreciated the importance of the deadline, or even when Mr Chen became aware of the deadline. The Opponent was informed of the deadline for the SGP on 6 May 2024. In the Notice of Intention to Refuse the EOT, the delegate prompted the Opponent to explain why the receipt of the NIO was not accessed by the Opponent until 4 June 2024. I note that no explanation for this has been provided by the Opponent. Without this information, it is difficult to identify any error or omission caused by the resignation that may have caused the Opponent to miss the deadline.
Regarding the ‘complexity of legal preparation’[10], Chen states that the opposition required thorough legal research and consultation, and that the complexity of issues involved necessitated ‘additional time to ensure a detailed and accurate submission’[11]. However, a statement of grounds and particulars does not require a detailed submission. A statement of grounds and particulars is a relatively straightforward document that only requires the Opponent to particularise the grounds with an outline of the material facts on which each ground is based. The legal complexity of the opposition is also not an error or omission that might justify an extension of time to file a statement of grounds and particulars.
[10] Chen [2].
[11] Ibid.
According to Chen 2, Mr Chen ‘mistakenly believed that the Declaration accompanying the request for [the[ EOT [was] the Statement of Grounds and Particulars, which [was] filed on 25 June 2024’[12] and, consequently, did not take any action until 6 August 2024 when the Opponent received the Notice of Intention to Refuse the EOT. However, this does not address why the Opponent failed to meet the original deadline, 2 June 2024. The requests from IP Australia for a declaration supporting the EOT were prompted by the EOT request, which was filed on 5 June 2024, after the deadline for filing the SGP. Mr Chen’s confusion may have contributed to the time taken to file the SGP following the EOT request, but it has no causal relationship with the failure to meet the deadline for filing the SGP.
[12] Chen 2 [16].
Both Chen and Chen 2 refer to ‘coordination with legal counsel’ and the time taken to work with legal representation to prepare for the opposition.[13] Chen provides no further information about what the coordination with legal counsel involved or how this may have contributed to missing the deadline for filing the SGP. However, Chen 2 adds that it was the Notice of Intention to Refuse the EOT dated 6 August 2024 that prompted the Opponent to seek professional advice in relation to oppositions under the Act.[14] The Notice of Intention to Refuse the EOT was received by the Opponent more than a month after the deadline for filing the SGP. The Opponent’s coordination with its current representatives could not have been a reason for failing to meet the deadline.
[13] Chen [3]; Chen 2[17]-[20].
[14] Chen 2 [18].
I note that Chen 2 states that the Opponent filed the SGP on 2 June 2024, but the SGP was not accepted by IP Australia.[15] This assertion is unsubstantiated, and I have been unable to identify the filing of any document by the Opponent with IP Australia on 2 June 2024. Based on the information before me, the Opponent appears to have taken no action regarding the SGP until after the deadline had passed.
[15] Chen 2 [4].
For these reasons, I am not satisfied that there is an error or omission justifying an extension of time to file the SGP. Accordingly, the ground under reg 5.9(4)(a) has not been established.
Circumstances beyond the control of the person
The expression ‘circumstances beyond the control of the person’ was considered in Atomic Skifabrik Alois Rohrmoser v Registrar of Trade Marks[16], a decision which concerned an extension of time to file a notice of opposition to the registration of a trade mark. Justice Jenkinson observed:
In the context in which it is found, the expression “circumstances beyond the control of the person concerned" does in my opinion designate - and designates only - occurrences which neither the person concerned nor any person acting on his behalf to do the act or take the step could prevent. The operations of nature and the activities of strangers may result in such occurrences. So, too, may the acts and omissions of certain independent contractors engaged by the person concerned or by his agent, as for example the carrier of mail or the office cleaner, either of whom causes the loss or destruction of a document to be filed. But the acts or omissions of the agent who on behalf of the person concerned is to do the act or take the step are not occurrences of the description specified in paragraph 131(1)(a), in my opinion. Nor, in my opinion, are the acts or omissions of that agent's servants. The section is, I think, correctly described as a force majeure provision.[17]
[16] [1987] FCA 25 (Jenkinson J).
[17] Ibid [18].
The circumstances referred to by Jenkinson J are not exhaustive.[18] In Honest Reveira v Registrar of Trade Marks[19], a decision which concerned an application for judicial review of a decision to grant an extension of time to file a notice of intention to oppose an application for removal under reg 9.11, Moshinsky J observed:
although Jenkinson J adopted the description “force majeure provision”, I do not consider this to be more than a general description of the nature and effect of the provision; it is not, of course, a substitute for the words actually used.[20]
[18] Honest Reveira v Registrar of Trade Marks [2018] FCA 1122, [56] (Moshinsky J).
[19] Ibid.
[20] Ibid [56].
According to Chen, the delay in receiving critical communications was beyond the control of the Opponent. As outlined above, this delay was caused by the resignation of an employee. The Opponent has not disclosed the circumstances surrounding the resignation. Generally, workplace resignations require notice and would not be so immediate as to create a circumstance beyond the control of the Opponent. In any event, despite the resignation, the Opponent at all times had access to the relevant documentation and should have been aware of the deadline for filing the SGP.
Chen describes the effects of ‘recent holiday and office closures’ that limited the Opponent’s ‘ability to gather and submit the necessary documents in a timely manner’. Generally, holidays and events of a similar nature are well known and not unexpected. Further, the Opponent did not expand on nature of the office closures or whether there was a reason beyond the holidays for closures. Accordingly, I do not consider the holidays and purported office closures to be circumstances beyond the control of the Opponent.
Finally, according to Chen, technical difficulties with IP Australia’s online system caused delays in the submission process. Chen declares that these technical difficulties have been ‘documented’, but no further information has been provided regarding the nature of the difficulties. In the absence of any further information, I cannot be satisfied that these technical difficulties involved an error or omission, or circumstance beyond the control of the Opponent that would justify an extension of time.
The Opponent has not satisfied me that circumstances beyond its control exist that justify the EOT. Accordingly, the ground for the extension of the period for filing the SGP under reg 5.9(4)(b) has not been established.
Decision
The Opponent has not established a ground justifying an extension of time for filing the SGP. Accordingly, I refuse to grant the EOT for the Opponent to file its SGP.
Costs
The Applicant has sought an award of costs. However, this matter concerned a dispute between the Opponent and the Registrar over the extension of time request. The Applicant was afforded the opportunity to be heard but has no standing to request costs. Accordingly, I decline to make an award of costs.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
6 March 2025
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