Bridgestone Corporation v Zylux Distribution Pty Ltd - [2013] ATMO 19

TRADE MARKS ACT 1995

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

Re:Late application by Bridgestone Corporation for extension of time to file notice of opposition to registration of trade mark application 1499915(9) - TYREMATICS and device - filed in the name of Zylux Distribution Pty Ltd.

Delegate:	Alison Windsor
Representation:	Bridgestone Corp: Andrew Fox of Counsel and Aparna Watal of Griffith Hack Patent and Trade Mark Attorneys Zylux Distribution Pty Ltd: Mindaugas Skavronskas of Simpsons Solicitors
Decision:	2013 ATMO 19 Regulation 5.2(2)(b): Late application for extension of time to file notice of opposition – agent’s omission insufficient reason for failure to file within time – Delegate not ‘reasonably satisfied’ as required by subreg 5.4(4) - application refused.

Background

Zylux Distribution Pty Ltd (‘Zylux’) filed trade mark application number 1499915 on 3 July 2012 in respect of a range of goods in Class 9 of the Nice classification system. It was examined as required and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 4 October 2012.
The three months after advertisement within which any person may file a notice of opposition (‘the Notice’) to the registration of the trade mark under the provisions of subsection 52(1) of the Trade Marks Act 1995 (‘the Act’) and regulation 5.1 of the Trade Mark Regulations 1995 (‘the Regulations’) expired on 4 January 2013.
On 24 January 2013 Bridgestone Corporation (‘Bridgestone’) filed an application under regulation 5.2(2)(b) for a three month extension of time to file the Notice under the ground contained in regulation 5.2(2)(b) namely ‘an error or omission by the person applying for an extension of time, or by that person’s agent’.
The application was accompanied by the Statutory Declaration of Ms Apama Watal, a lawyer employed by the firm of Griffith Hack, patent and trade mark attorneys. Ms Watal provided the following details about the error or omission which was claimed to have occurred, as well as other facts which she said ‘go to the Registrar’s discretion to grant the extension under Regulation 5.4’:
·    On 3 September 2012 Bridgestone filed an application for the trade mark TYREMATICS (number 1514039) in respect of a range of goods in class 9 and services in class 42.
·    The first official report on Bridgestone’s application issued on 16 December 2012, and was received at Griffith Hack’s office on 19 December 2012. That date was Ms Watal’s last working day before the Christmas/New Year break.
·    There is a standard procedure at Griffith Hack for processing all trade mark mail which is designed to ensure that all deadlines are accurately reflected in the system for monitoring purposes and also to provide for easy electronic access for documentation.
·    Due to the end-or-year rush there was a significant backlog in processing trade mark correspondence and neither Ms Watal nor her superior, Ms Scheepers, received the examiner’s report before leaving the office for the Christmas/New Year break or in Ms Scheepers case, four weeks annual leave.
·    The report was finally fully processed into the system by 7 January 2013 and was sent to Ms Scheepers, who was still on leave. Her support staff generated a draft report for Bridgestone which was erroneously placed inside an unrelated trade mark case file.
·    On 17 January 2013 Ms Watal was asked to review certain letters and during the process discovered the misfiled draft report. She reviewed the matter and saw that the opposition period had ended. However, she was not aware that a late extension of time might be possible. She drafted advice for Bridgestone for Ms Scheepers’ approval on her return from leave.
·    Ms Scheepers returned from leave on 21 January 2013 and finally reviewed the matter on 22 January 2013. She immediately sent advice to Bridgestone including the information that the opposition deadline had expired.
·    On 23 January 2013 Bridgestone responded emphasising the crucial importance of its application and its ability to obtain trade mark protection for the trade mark.
·    Following discussions with IP Australia staff members, and after receiving urgent instructions from Bridgestone, the application for an extension of time to file the Notice was filed on 24 January 2013.
By letter dated 30 January 2013 a delegate of the Registrar advised Bridgestone that she intended to refuse the extension application. The reasons given for the intended refusal are as follows:
5.2(2)(b)
Late applications for extensions of time in which to file a notice of opposition were the subjects of the decisions in Mission Personnel[1] and British Sky Broadcasting[2], amongst others.What is clear from these cases is the necessity for there to be a causal link between the error or omission and the failure to file the Notice of Opposition within time. Within the opposition period, the potential opponent needs to have formed a clear intention to oppose. Failing that, there must be demonstration of an intention to get to an informed position, during the opposition period, from which it might make the decision whether or not to oppose. To create the causal link, the error or omission should be something which has thwarted the potential opponent’s intentions in respect of initiating the opposition. It is not possible to show intent to oppose an application within the period in which to do so, when the potential opponent did not know that the trade mark application existed.
The purpose of an examination report is not to advise a party of the existence of another trade mark for opposition purposes. It is the responsibility of a party to keep watch, or to employ someone to keep watch, on trade mark acceptances for opposition purposes.
I note that the statutory declaration of Aparna Watal states that the potential opponent is ‘highly protective of its trade marks’ and ‘seeks to prevent third parties from misusing or encroaching on its rights’. However, there is no information concerning watching trade mark acceptance for opposition purposes.
The fact that Bridgestone Corporation has not yet filed a notice of opposition further indicates that an intention to oppose is yet to be formed.
[1] Application by Mission Personnel Services Pty Ltd (1998) 42 IPR 255
[2] British Sky Broadcasting Ltd v SkyNetGlobal Ltd (2003) 57 IPR 93
The letter concluded with the advice that before the application for extension was refused, Bridgestone would be allowed 14 days in which to request and pay for a hearing in the matter. On 12 February 2013 Bridgestone filed the Notice accompanied by a request and appropriate payment for a hearing.
The hearing was set down for Canberra on 5 March 2013. Initially, IP Australia was under the apprehension that only Bridgestone would be represented at the hearing. However, on 28 February 2013 IP Australia received advice that Zylux intended to be represented at the hearing and to make submissions.
As a delegate of the Registrar, I heard the parties on the date set. Representatives for both Bridgestone and Zylux appeared at the hearing by telephone conference. Mr Andrew Fox of Counsel and Ms Aparna Watal of Griffith Hack Patent and Trade Mark Attorneys appeared on behalf of Bridgestone. Zylux was represented by Mr Mindaugas Skavronskas of Simpsons Solicitors.

Legislative framework

The relevant legislation in respect of opposition to registration of a trade mark is to be found in Part 5 of the Act and also in the Regulations which provide the mechanics of this matter.
In respect of oppositions, Section 52 of the Act relevantly provides:

Opposition

52.(1) If the Registrar has accepted an application for the registration of a trade mark, a person may oppose the registration by filing a notice of opposition.
(2) The notice of opposition must be in an approved form and must be filed within the prescribed period or within that period as extended in accordance with the regulations […].
Note: For approved form and file see section 6.

The Regulations which govern the matter are as follows:

Reg 5.1 – Time for filing notice of opposition

For the purposes of subsection 52(2) of the Act (which deals with notice of opposition), the period for filing a notice of opposition is 3 months from the day on which the acceptance of the application is advertised in the Official Journal.

Reg 5.2. Extension of time for filing -- grounds

(1) A person may apply to the Registrar for an extension of time in which to file a notice of opposition.
(2) An application for an extension of time may be made within the period for filing a notice of opposition referred to in regulation 5.1 on 1, or more than 1, of the following grounds and on no other ground:
(a) an error or omission by an employee;
(b) an error or omission by the person applying for the extension of time, or by the person’s agent;
(c) circumstances beyond the control of the person applying for the extension of time;
(d) the conduct of genuine negotiations between that person and the applicant for registration;
(e) the undertaking of genuine research to decide:
(i) whether opposition is justified; or
(ii) on the grounds of opposition.

(3) If the period for filing a notice of opposition has ended, an application for extension of time may be made at any time before the trade mark is registered on 1, or more than 1, of the grounds set out in paragraph (2) (a), (b) or (c) and on no other ground.

Reg 5.3. Extension of time for filing -- applications

An application for an extension of time in which to file a notice of opposition must:
(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts on which the grounds specified in the application are based; and
(ii) if the period for filing a notice of opposition has ended -- the reason why the application was not made before the end of that period.

Note: Regulations 21.6 and 21.7 deal with making and filing declarations.

Reg 5.4. Extension of time for filing – grant of extension

(1) Subject to subregulations (2) and (4), if the Registrar is reasonably satisfied as to the grounds set out in an application for an extension of time to file a notice of opposition, the Registrar must grant the extension of time.
(2) The Registrar must not grant the extension of time, unless the Registrar:
(a) is reasonably satisfied that the person applying for the extension of time has served a copy of the application, and the accompanying declaration, on the applicant for registration of the trade mark; and
(b) has given to both the person applying for the extension of time and the applicant for registration of the trade mark a reasonable opportunity to make representations concerning the application for extension of time.

(3) For the purposes of paragraph (2) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
(4) If an application for extension of time is made after the period for filing a notice of opposition has ended, the Registrar must not grant the extension unless the Registrar is reasonably satisfied that there is sufficient reason for the application not being made before the end of that period.
(5) An extension of time must be for such period:
(a) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (a), (b) and (c) -- as the Registrar believes is reasonable; or
(b) in the case of an extension of time that is granted on a ground set out in paragraphs 5.2 (2) (d) and (e) -- not exceeding 3 months as the Registrar believes is reasonable.

Submissions

At the hearing Mr Fox for Bridgestone submitted the following:
The IP Australia Letter stated that Bridgestone was not able to satisfy any of these principles.[3]
Bridgestone does not accept that the above is an exhaustive statement of the principles governing the grant of an extension of time under Reg 5.2(1) of the Regulations. Additional principles also play a role in the determination of such an application.
For example, in British Sky Broadcasting Ltd v Skynetglobal Limited (2003) 57 IPR 93 at 99[40], lack of intention to oppose, by itself, was stated as not being a sufficient test on which to refuse an extension of time application. Rather, “[t]he essential matter is the presence of a ‘sufficient causal connection’ between the error or circumstances relied on and the failure to lodge the notice of opposition”: at 99[40]. It was further recognised that some degree of speculation is appropriate in considering applications of this kind: “Some degree of ‘what if’ is unavoidable, as some of the case law to which I will come below recognises”: at 99[25].
The Watal Declaration establishes that, but for the error made by Bridgestone’s Attorneys (by the delay in processing and reviewing the Examiner’s Report and advising as to its implications for the Bridgestone TM Application), Bridgestone would have known of the existence of the TM Application before the expiry of the opposition period. The effect of that single error was to deprive Bridgestone of the opportunity to decide upon whether to lodge a Notice of Opposition, and to lodge such an application.
There is no doubt in the present case that if Bridgestone had been advised of the existence of the TM Application before the opposition expiry date that it would have immediately instructed its attorneys to lodge a Notice of Opposition: see [14]-[15], Watal Declaration.
It is therefore apparent, from the Watal Declaration, that the operative, single error which caused the failure to lodge a Notice of Opposition within time was the error made by Bridgestone’s Attorneys. It is an error which clearly falls within Reg 5.2(2)(b) of the Regulations. It is an error which “thwarted” the intentions of the (proposed) opponent.
Bridgestone’s bona fides in relation to the EOT Application is confirmed by its filing of a Notice of Opposition.
This is not a circumstance in which Bridgestone (or its agent) was utterly oblivious of the existence of the TM Application. To the contrary, the Watal Declaration establishes that but for the sole error made by its attorneys, Bridgestone would have been on notice of the existence of the TM Application well before the expiry of the opposition period, and would have lodged a Notice of Opposition within time. No ‘considerable degree of what if’ (British Sky at 100[5]) arises in the present case. It is a single error which caused the failure to lodge the Notice of Opposition within time.
[3] The relevant principles to which Mr Fox refers are set out in the quotation from the delegate’s letter at paragraph 5 of this decision.
Mr Stavronskas for Zylux submitted the following:
What emerges with clarity from the decisions of the Trade Marks Office in Application by Mission Personnel Services Pty Ltd (“Mission Personnel”),[4] British Sky Broadcasting Ltd v SkyNetGlobal Limited (“British Sky Broadcasting”),[5] Crown & Andrews Pty Ltd v All American Fremantle International Inc(“Crown & Andrews”)[6] and Stork Pompen BV v Weir Pumps Ltd[7] is that the Registrar must be satisfied, under the provisions of Reg. 5.4, on an application under Reg. 5.3 based on Reg. 5.2(2)(b), that:
[4] See note 1
[5] See note 2
[6] (1997) 38 IPR 595
[7] (1998) 11 IPR 542
a. there is a causal link between the error by the agent of the potential opponent and the failure to file the notice of opposition by the potential opponent; and
b. the potential opponent must have either formed an intention to file the notice of opposition or have formed an intention to get to an informed position from which it may decide to oppose prior to the expiry of the opposition period.
In other words, it is necessary to show that the person applying for the extension of time must have formed the intention to oppose the application on or before the expiry of the prescribed period and that that intention must have somehow been thwarted or frustrated by an error or omission. Thus, where the potential opponent became aware of an application it wished to oppose only after the expiry of the opposition period, it is not an error or omission: Crown & Andrews.
Similarly, the failure to file a notice of opposition in time cannot itself be the “error or omission”: GS Technology Pty Ltd v Commissioner of Patents [2004] FCA 1017.
In British Sky Broadcasting, it was held that the reference to an intention must be treated as a critical criterion that will apply in cases where:
a. the potential opponent was entirely unaware of the existence of a relevant application; and
b. this state of affairs had not itself arisen because of any previous failure to follow clearly evidenced and relevant instructions.
As the delegate in Xiying Susan Guo v David Bilanycz,[8] succinctly put it:
I do not believe it is possible to omit to do an action if you are unaware that the action needs to be done.
In Mission Personnel, it was noted that, without this specific intention to oppose the application (or an intention to get to an informed position from which to may decide whether to oppose), “any accepted trade mark could be opposed at any time up to registration on a mere vague, hypothetical intention. The importance of a party's right to oppose is enshrined in the legislation. However, that right should not be allowed take precedence, in cases such as this, over the trade mark applicant's right to registration where there has been no opposition within the prescribed period. The provisions of regulations 5.2 and 5.4 are intended to protect the rights of a party who can demonstrate a concrete intention to oppose that was somehow thwarted. For the protection of the trade mark applicant, interpretation of those provisions should not be extended to encompass insubstantial, "what if..?" scenarios.”
[8] [2010] ATMO 123

Discussion and Reasons

Before moving on to a discussion of the allowability of the application, I will deal with a matter which Zylux raised towards the end of its submissions at the hearing. That matter is the length of time which it is appropriate for the Registrar to allow Bridgestone if I decide that the extension should be granted.
Bridgestone’s application for an extension of time is for a period of three months from the end of the opposition period on 4 January 2004. Zylux submitted that Bridgestone’s application has been made for an unreasonable period of time. It said that, in the circumstances peculiar to this case, it is difficult to see how a three-month period to lodge a notice of opposition could be considered either necessary or reasonable, especially where the application had been made shortly after the expiry of the prescribed period, and on the basis of subregulation 5.2(2)(b). Zylux submitted that should I decide to allow the extension of time, I should allow it for one month only – that is, up until 4 February 2013.
In support of its arguments for the shorter period of time, Zylux referred to a decision which I had issued in 2007[9] on a very similar matter to the one I am deciding here. Zylux quoted the following paragraph from that decision:
General practice within the profession is that the notice is filed concurrently with the application for an extension of time to do so. It is not strictly necessary for this to occur, but a potential opponent who does not file their notice at the same time is putting themselves at risk of missing the deadline for filing whilst waiting to find out if their request for an extension has been allowed. Because of the requirement that time be allowed for the other party to comment on[10], and potentially object to, any request for an extension of time, requests for extensions of time are seldom approved immediately. Indeed, if it is necessary to consider comments and responses from both sides, it may be a number of weeks before the matter is finalized and a decision made on whether the request can be allowed. This often means that the time covered by the extension request has already passed before the extension is allowed, and the notice is once again late. Most practitioners avoid the risk by filing the notice concurrently.
[9] Harrah’s Licence Company LLC [2007] ATMO 16
[10] See regulation 5.4(2)(b)

Zylux appears to consider Bridgestone’s failure to file its Notice at the same time as the extension request as a major failing, and one which should be penalized. If I was to agree with its submissions and allow a one month extension only, Bridgestone would be put to the effort of applying for yet another late extension of time in order to legitimize the Notice which is already on file. This, to me, appears to be a waste of time and effort for both Bridgestone and for IP Australia as well as for Zylux itself, as it would undoubtedly feel obliged to object to the extension request.
I consider that the cited passage in fact supports Bridgestone’s request for a three month extension, since such an extension period would allow it ample time for any objections Zylux may have made, would allow for any delays in handling correspondence in IP Australia and also allow for any other unforeseen circumstances which could have interfered with its ability to file the Notice within the extended time period. Bridgestone filed its Notice on 12 February 2013 which is within the period requested. To my mind it is immaterial that the Notice was filed after receipt of the delegate’s letter – the fact of the matter is that is has been filed and within the period of the extension request. Should I decide to allow the extension of time, I will allow it for the period of time requested, that is, for three months.
Moving on to the extension request itself, in order to succeed in this matter, Bridgestone must first establish the ground contained in subregulation 5.2(2)(b) and then meet the requirements of subregulation 5.4(4) – that is, it must provide evidence which reasonably satisfies me that it had good and sufficient reasons for its application for the extension of time not being made before the end of the statutory opposition period. I should point out that subregulation 5.4(4) does not allow me, as a delegate of the Registrar, any discretion. I must not grant the extension unless I am reasonably satisfied that the reasons Bridgestone has provided are sufficient for the purpose. If I am not reasonably satisfied, the application is to be refused.
The ground for Bridgestone’s extension application is that an error or omission made by its agent, Griffith Hack Patent and Trade Mark Attorneys of Sydney, meant that it missed the deadline for filing the Notice. The set of circumstances which Bridgestone claims constitute the error or omission are set out at paragraph 4 of this decision.
Late applications for extensions of time in which to file a notice of opposition were the subjects of the decisions in Mission Personnel and British Sky Broadcasting, both of which cases were referred to in the parties’ submissions for the hearing, amongst others.What is clear from these cases is the necessity for there to be a causal link between the error or omission by the agent of the potential opponent and the failure to file the Notice within time. On the part of the potential opponent there needs to be a clear intention to oppose within the allowed time, or failing that, a clear demonstration of an intention to get to an informed position from which it might make the decision whether or not to oppose. To create the causal link, the agent’s error or omission should be something which has thwarted the potential opponent’s intentions in respect of initiating the opposition.
In this case, the evidence provided strongly suggests that Bridgestone was not aware of the existence of the Zylux trade mark application 1499915 until, at the earliest, 22 January 2013 when Ms Scheepers contacted it and advised of the examiner’s report on its own application. Despite Bridgestone’s claim that its trade mark is of ‘crucial importance’ to it, there has been nothing provided which attests to any effort on its part to support or protect its trade mark. There is no indication that Bridgestone or its representatives had undertaken any search of the Register of Trade Marks prior to filing its own application for trade mark registration, nor that either it or its representatives had considered it appropriate to keep a watch for similar trade marks appearing on the Register or in the Australian Official Journal of Trade Marks. The only reference to Bridgestone having any intention to protect its own trade mark is to be found at paragraphs 14 and 15 of Ms Watal’s declaration, which was reiterated in Mr Fox’s submission where he said:
There is no doubt in the present case that if Bridgestone had been advised of the existence of the TM application before the opposition expiry date that it would have immediately instructed its attorneys to lodge a Notice of Opposition.
In Mission Personnel the delegate commented as follows as she made her decision to refuse the application for extension:
Mission Australia may well have had good reason to oppose Mission Personnel’s trade mark application within the time allowed, given its general intention to protect its own trade marks. However, the issue to be decided is whether, during the critical period for filing notice of opposition, Mission Australia’s general intentions, reflected in the filing of its new trade mark application, had escalated into a specific intention to oppose Mission Personnel’s trade mark application. This was impossible, as Mission Australia was unaware of the existence of that application, during the relevant period. Thus, the necessary causal link, established in the case law, is missing from the equation. Ms Hinton had argued that her client’s extenuating circumstances should lead me to interpret the term “error or omission” other than in accordance with the guidelines set down in Crown and Andrews (supra) and others. Although I have declined to accept Ms Hinton’s proposition that her client is a truly unsophisticated party, even had I accepted her proposition, this would not have affected my ultimate finding on the application of precedent here.
An alternative interpretation of the Regulations would, I believe, have led to the unacceptable situation alluded to by Mr Samargis. That is, any accepted trade mark could be opposed at any time up to registration on a mere vague, hypothetical intention. The importance of a party’s right to oppose is enshrined in the legislation. However, that right should not be allowed to take precedence, in cases such as this, over the trade mark applicant’s right to registration where there has been no opposition within the prescribed period. The provisions of regulations 5.2 and 5.4 are intended to protect the rights of a party who can demonstrate a concrete intention to oppose that was somehow thwarted. For the protection of the trade mark applicant, interpretation of those provisions should not be extended to encompass insubstantial, “what if…?” scenarios.
Bridgestone has relied upon the British Sky Broadcasting decision as support for allowance of its extension application. Certainly, the end result of the delegate’s considerations in that was matter was allowance of the extension requested. The delegate had discussed the matter of a causal connection between the nominated ‘error or omission’ and the subsequent need for an extension of time to oppose the application. He continued:
I think the necessary causality will have been demonstrated wherever a party has shown an adequate intention to get to an informed position, from which it may decide either to oppose or not to oppose, and where that intention is itself subverted by an error, omission, or circumstance within the scope of reg 5.2(2)(a), (b) or (c).
This, however, is not a view that runs contrary to the findings in Mission Personnel. Clearly, an applicant has a right, but for opposition, to registration of an accepted trade mark application. Therefore, there is a good general reason why a chain of speculations and “what ifs” should not be substituted for a proper degree of established causality. Again it is obvious that the chain of causality is strongest where, for instance, a person has prepared a notice of opposition and written out the cheque for the fee, only to be overtaken by catastrophe at the door of the Trade Marks Office. However, even such a case is not one of absolute certainty. Some degree of “what if” is unavoidable, as some of the case law to which I will come below recognises.
In the cases relied on by the objector, a lack of intention to actually oppose has been generally concomitant with a lack of any intention to get to an informed position, one from which to decide whether to oppose or not. “Intention” figures largely in the headnotes to published decisions, and in decisions of the “we’d have opposed if only we’d known”, sort. This has interlocked with the fact that under the current regulations, for the first time, extensions on particular grounds are excluded after a particular date. Thus, it is possible to see a lack of an express and settled purpose – an intention to actually file a notice of opposition on or by a due date – as being the end of the matter. However, in light of the directives in Kimberly-Clark v Commissioner of Patents (No 3), (1988) 84 ALR 685; 13 IPR 569, to which I will come below, I do not think that the lack of intention to actually oppose is, by itself, a sufficient test on which to refuse a late application for an extension of time for filing a notice of opposition. The essential matter is the presence of a “sufficient causal connection” between the error or circumstance relied on and the failure to lodge the notice of opposition.
The delegate went on later in the decision to refer to the Crown & Andrews decision:
I note that [in Crown and Andrews] Hearing Officer Homann said, at 604:
…I must adopt the reasoning in the Weir Pumps case and that of the Federal Court in Kimberly-Clark and Danby v Commissioner,[11] all supra. The effect of those decisions is that the person applying for the extension of time must have formed the intention to oppose the application on or before the expiry of the prescribed period and that the intention must have somehow been thwarted or frustrated by an error omission.
However, this reference to an intention must, I think, be treated as a critical criterion that will apply in cases such as those where:
· The potential opponent was entirely unaware of the existence of the relevant application and
· This state of affairs had not itself arisen because of any previous failure to follow clearly evidenced and relevant instructions.
[11] Danby Pty Ltd v Commissioner of Patents (1988) 12 IPR 151
I find a strong degree of similarity between the case at hand and the aforesaid ‘critical criterion’. There has been no indication, as I mentioned before, that Bridgestone has taken any of the generally accepted actions to investigate or protect the new trade mark of the application filed on 13 September 2012, such as pre-searching the Trade Marks Register, or instigating a watch service in respect of the crucial word TYREMATICS.
It appears that Bridgestone was completely unaware of the existence of the Zylux application during the entire statutory opposition period. It also appears that ignorance of the existence of the application was not caused by any failure in instructions by Bridgestone to its representatives. As there appears to have been no intention on Bridgestone’s part to get to an informed position about opposing or not opposing during the relevant period, the subsequent delays in Griffith Hack’s office do not appear to me to be a relevant ‘error or omission’ which would support the grant of the extension.

Decision

I am not reasonably satisfied that Bridgestone has provided sufficient reason for its application not having been made within the relevant opposition period. Thus, given the mandatory nature of subregulation 5.4(4), I refuse Bridgestone’s application for an extension of time to file the Notice.

Costs

Zylux requested its costs and is so entitled. I award costs against Bridgestone according to the Official scale.

Alison Windsor
Hearing Officer
Trade Marks Hearings
19 March 2013