Chernae Noonan v Benefit Cosmetics LLC

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.