Chernae Noonan v Benefit Cosmetics LLC - [2013] ATMO 66

TRADE MARKS ACT 1995

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

Re:Late application by Chernae Noonan for extension of time to file notice of opposition to registration of trade mark applications - 1423081 & 1423082(44) - BENEFIT BROWBAR - filed in the name of Benefit Cosmetics LLC.

Delegate:

Jock McDonagh

Representation:

Ms Noonan: Dana Prasek of Thompsons Lawyers
Benefit Cosmetics LLC: Francesca Colubriale of Spruson and Ferguson Lawyers

Decision:

2013 ATMO 66

Regulation 5.2 of the Trade Marks Regulations 1995 – application for an extension of time to file a notice of opposition – application allowed

Background

Trade mark applications 1423081 and 1423082 in the name of Benefit Cosmetics LLC (‘the applicant’) were accepted for possible registration under the provisions of paragraph 44(3)(b) of the Trade Marks Act 1995 (‘the Act’), and advertised as such in the Australian Official Journal of Trade Marks on 22 November 2012. The relevant details of the applications are shown below:

Trade Marks

BENEFIT BROWBAR (1423081)

(1423082)

Services

Class 44: Hygienic and beauty services; beauty salon services

Priority date

2 May 2011

The statutory period for filing notices of opposition in relation to the applications, as provided by regulation 5.1 of the Trade Marks Regulations 1995 (‘the Regulations’), is three months from advertisement and it therefore ended on 22 February 2013.
On 1 March 2013 Chernae Rachelle Noonan, filed a notice of opposition to the registration of the Trade Marks together with an application for an extension of time of one month in which file a notice of opposition. The extension application was made on the ground of “an error or omission by the person applying for the extension of time, or by that person’s agent” (Reg 5.2(2)(b))and was accompanied by a supporting declaration of Ms Noonan made 1 March 2013.
On 4 March 2013, the Trade Marks Office issued Certificates of Registration in respect of the applicant’s two trade marks.
On 19 March 2013, the Trade Marks Office issued a Proposal to Revoke Registration of the two trade marks and the applicant subsequently returned the Certificates of Registration.
On 4 April 2013 a Registrar’s delegate issued an intention to refuse the extension of time request.
On 12 April 2013. Ms Noonan’s attorneys served upon the Applicant’s attorneys a Notice of Opposition to the applications 1423081 and 1423082.
On 17 April 2013. Ms Noonan’s attorneys served upon the Applicant’s attorneys a supplementary declaration made by Ms Noonan on that date.
On 3 June 2013 I heard the matter in Canberra, although the attorneys for the parties attended by telephone. Ms Noonan was represented by Dana Prasek of Thomsons Lawyers. The applicant was represented by Francesca Colubriale of Spruson and Ferguson Lawyers.

Evidence and submissions

The succession of events surrounding Ms Noonan’s application for an extension of time are set out briefly below:

The final day for filing the notice of opposition was 22 February 2013; however, Ms Noonan was not aware of the registration of the Applicant’s trade marks until…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2013] ATMO 66
Decision Date: 26 August 2013

CaseChat Overview and Summary

Chernae Noonan sought an extension of time to file a notice of opposition to two trade mark applications, numbers 1423081 and 1423082, filed by Benefit Cosmetics LLC. The applications, for the mark BENEFIT BROWBAR in Class 44, were advertised on 22 November 2012, with the statutory opposition period ending on 22 February 2013. Ms Noonan filed her notice of opposition and an application for an extension of time on 1 March 2013, relying on the ground of an error or omission by herself or her agent. The matter was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether Ms Noonan had established sufficient reason for not filing her notice of opposition within the prescribed three-month period, specifically whether an error or omission by Ms Noonan or her agent constituted sufficient grounds for granting an extension. The relevant regulations stipulated that for an application filed outside the statutory period, the grounds for extension could include an error or omission by the applicant or their agent, or circumstances beyond the applicant's control. The delegate also had to consider whether Ms Noonan had formed an intention to oppose the applications before or during the opposition period.

The delegate found that Ms Noonan had formed an intention to oppose the applications upon becoming aware of them approximately a year before 4 June 2012. While Ms Noonan's personal oversight in not monitoring the progress of the applications and her failure to instruct an agent to do so were not considered sufficient grounds in themselves, the delegate focused on the omission of Ms Noonan's agent, Varsity IP. Evidence indicated that IP Australia had sent a letter on 15 November 2012 to Ms Noonan's address for service at Varsity IP, advising of the acceptance of the trade mark applications. Ms Noonan declared she did not receive this letter until after the opposition period had ended. The delegate accepted that Varsity IP omitted to forward this crucial letter to Ms Noonan, and this omission was considered a sufficient reason for the delay, satisfying the requirements of regulation 5.4(4).

Consequently, the delegate allowed Ms Noonan's application for an extension of time to file her notice of opposition. The delegate also directed Ms Noonan to file and serve evidence in support of her opposition within two months of the decision, noting that while the old provisions applied to the evidence in support stage, the new provisions would govern subsequent stages of the opposition proceeding.

Orders