Davley Building Pty Ltd T/a GrannyflatsWA.com v Granny Flats Australia Pty Ltd - [2015] ATMO 105

TRADE MARKS ACT 1995

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

Re:Oppositions by Davley Building Pty Ltd t/a GrannyflatsWA.com to registration of trade mark applications 1551414 and 1551417 in the name of Granny Flats Australia Pty Ltd
And
Applications by Granny Flats Australia Pty Ltd for extensions of time to file evidence in answer

Delegate:	Deirdre O’Brien
Representation:	Opponent: David Stewart of Wrays Applicant: Yves Hazan of Hazan Hollander
Decision:	2015 ATMO 105 Reg. 5.15: Applications for extensions of time to file evidence in answer to oppositions to registration – extensions allowed.

Background

Registration of applications 1551414 and 1551417 in the name of Granny Flats Australia Pty Ltd (“the Applicant”) has been opposed by Davley Building Pty Ltd t/a GrannyflatsWA.com (“the Opponent”).
The present matter concerns formal objections by the Opponent incidental to these oppositions, in particular objections to requests by the Applicant for extensions of time (“EOT”s) of two months, from 7 September 2014 to 7 November 2014, to file evidence in answer (“EIA”) to the oppositions (“the disputed extensions”). In this regard the Registrar’s delegate, after seeking further information from the Applicant regarding the circumstances prompting the requests, had initially proposed to grant them and advised the parties accordingly on 13 October 2014. However, on 20 October 2014 the Opponent advised of its objection and exercised its right to be heard on the issue.
The matter was heard by Michael Kirov, a delegate of the Registrar of Trade Marks, on 11 December 2014 in Canberra. The Applicant was represented by telephone by Yves Hazan of Hazan Hollander. The Opponent was represented (in person) by David Stewart of Wrays. Both parties’ attorneys also filed written submissions.
I am also a delegate of the Registrar of Trade Marks and I am to decide the matter as Mr Kirov is currently unavailable.

The Law and Precedent

The matter is to be determined under reg. 5.15 of the Trade Marks Regulations 1995 (“the TM Regulations”) as amended on 15 April 2013 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1) (“the RTB Amendments”), the relevant transitional provision being contained in Item 5 of reg. 22.9.
Although applications 1551414 and 1551417 were filed on 12 April 2013, three days before the RTB Amendments came into force, Item 5 indicates that the amendments made to reg. 5.15 “apply in relation to an opposition proceeding commenced before 15 April 2013 in which an extension of time is requested for a period that commences on or after 15 April 2013.” In the present matter the opposition proceedings commenced on 26 September 2013 and, as mentioned, the disputed extensions are for the period from 7 September 2014 to 7 November 2014.
Reg. 5.14 details the initial time limits applicable to the filing of evidence in oppositions and reg. 5.15 then addresses the question of extensions as follows:

Extension of time for filing

(1) A party may request the Registrar to extend a period for filing evidence mentioned in regulation 5.14.
(2) The Registrar may extend the period only if the Registrar is satisfied that:
(a) the party:
(i) has made all reasonable efforts to comply with all relevant filing requirements of this Part; and
(ii) despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or

(b) there are exceptional circumstances that justify the extension.

(3) The Registrar:
(a) must decide the length of the extended period having regard to what is reasonable in the circumstances; and
(b) may do so on terms that the Registrar considers appropriate.

(4) In this regulation:
"exceptional circumstances" includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;
(b) an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;
(c) an order of a court or a direction by the Registrar that the opposition be stayed.

The intentions behind the relevant RTB Amendments are stated in the Explanatory Statement accompanying the new legislation (“the ES”). The Registrar’s delegate in MG Icon LLC v Caprice Australia Pty Ltd [1] noted at [13]:
The [ES] … states:
A second purpose of the [RTB Amendments] is to amend the Patents Regulations and the [TM Regulations] to reduce delays in the resolution of patent and trade marks applications.
…
Schedule 3 to the [RTB Amendments] amends both the Patent[s] Regulations and [TM] Regulations to streamline the opposition process by reducing time frames and introducing a more rigorous test for granting extensions of time to file evidence.[2]
[1] [2014] ATMO 34.
[2] Explanatory Statement, pp 1-2.
As to reg 5.15 of the TM Regulations in particular, the ES says: [3]
New regulation 5.15 narrows the circumstances in which the Registrar will grant an extension of time to provide evidence. Extension of the evidentiary periods is at the discretion of the Registrar and only where the Registrar is satisfied that the party entitled to file evidence in that period has acted promptly and diligently at all times since the opposition proceedings began, but despite that, or because of some other exceptional circumstances, cannot file the evidence in that period. Once the conditions are met the Registrar has the discretion to consider whether or not it is appropriate that an extension of time be granted.
The policy and intended operation of this regulation 5.15 is the same as for the corresponding regulation 5.9 at item 2 for the Patent[s] Regulations above, which sets out the new test for extending evidential periods for patents oppositions.
[3] Explanatory Statement, pp 19-20.
As to the corresponding reg 5.9 of the Patents Regulations, the ES has this to say with respect to onus and the discretion of the Commissioner of Patents (and, by extension, the discretion of the Registrar of Trade Marks):[4]
A major cause of protracted opposition proceedings is extensions to the various time periods for filing evidence. The law has developed in such a way as to significantly narrow the Commissioner’s [or Registrar’s] discretion to disallow extensions. As a result, oppositions are normally subject to multiple [EOTs] and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster.
New subregulation 5.9(2) [corresponding to reg. 5.15(2) of the TM Regulations] addresses this issue by introducing a new test for determining whether an [EOT] for filing evidence is justified. The Commissioner [or Registrar] will not be able to extend time periods unless at least one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner [or Registrar] of this. Once the conditions in subregulation 5.9(2) [TM reg. 5.15(2)] are met, the Commissioner [or Registrar] still has the discretion to consider whether the or not it is appropriate that an [EOT] be granted. In applying the test, the Commissioner [or Registrar] will not be required to give a direction to extend a period solely because of delays caused by an agent or legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings.
Where a party cannot satisfy the Commissioner [or Registrar] that an extension is justified under the test, the Commissioner [or Registrar] will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time.
[4] Explanatory Statement, p 10.
Finally, the ES says in relation to the “exceptional circumstances” contemplated by the RTB amendments:[5]
New subregulation 5.9(5) [TM reg. 5.15(4)] provides an inclusive list of circumstances that may be considered by the Commissioner [or Registrar] as exceptional circumstances for the purposes of subregulation 5.9(2)(b) [TM reg. 5.15(2)(b)].
A change in circumstances may not in itself be exceptional. For example, if a preferred expert becomes suddenly unavailable but other experts could be called on to complete the evidence in time, then the sudden loss of the preferred expert is not an exceptional circumstance.
[5] Explanatory Statement, p 10.
I note the following formulation by the Commissioner’s delegate in Julie Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd (“TRED”)[6] at [34]-[35] as to how reg. 5.9 of the Patents Regulations (corresponding to reg. 5.15 of the TM Regulations) ought to be approached:
[34] It follows that I need to ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
[35] I can extend the time for filing evidence only if I am satisfied that the answers to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.
[6] [2013] APO 57.
Mr Stewart and Mr Hazan both accepted this formulation and I confirm I too adopt it.
That said, the fact that the present matter involves the first (and only) request by the Applicant for an EOT, and is in relation to EIA rather than evidence in support (“EIS”) or evidence in reply (“EIR”), is significant because it means that questions 1 and 2 above effectively merge.
Decisions by delegates of the Commissioner of Patents have emphasized the significance of the words “comply with all relevant filing requirements” used in reg. 5.9(2)(a)(i) of the Patents Regulations (corresponding to reg. 5.15(2)(a)(i) of the TM Regulations) as “import[ing] a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings”. As the Deputy Commissioner in Merial Limited v Novartis AG (“Merial”)[7] (which also concerned an EOT for EIA) put it:[8]
[16] It is clear that the requirement in reg. 5.9(2)(a)(i) [TM Regulation 5.15(2)(a)(i)] is intended to import a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings rather than its compliance with the particular evidentiary period in question – here the period for filing [EIA] – which is addressed by the more specific requirement of paragraph 5.9(2)(a)(ii) [TM Regulation 5.15(2)(a)(ii)].
[7] [2013] APO 65.
[8] See also Shelford Services Pty Ltd v Baylor Research Institute [2014] APO 20 at [28].
The Deputy Commissioner continued:
[17] With some exceptions, for example the period for requesting dismissal of an opposition, the requirement to file [EIA] within the prescribed period will normally be the first requirement … with which the patent applicant needs to comply. That is the situation in this case and consequently it is not necessary to consider separately whether [the patent applicant] made reasonable efforts to comply with the time limit. If it has acted promptly and diligently in relation to the preparation and filing of the [EIA] it will necessarily have also made all reasonable efforts to comply.
While procedure in trade mark oppositions is somewhat different from that in patent oppositions, the Deputy Commissioner’s comments are nevertheless equally applicable to the present matter. This is because the sole “filing requirement” (prior to filing its EIA) with which the Applicant had to comply was to file formal Notices of Intention to Defend the oppositions within one month of receiving the Opponent’s Statements of Grounds and Particulars. This it did on 12 November 2013 by filing a joint notice, some two weeks before the deadline. Accordingly as far as reg. 5.15(2)(a)(i) of the TM Regulations is concerned, I need in principle only consider the reasonableness of the Applicant’s (obviously unsuccessful) actions directed at filing its EIA before the expiry of the initial three month statutory period. However, as indicated by the Deputy Commissioner in the above quotes from Merial at [16] and [17], this question effectively merges into the “more specific requirement” imposed by reg. 5.15(2)(a)(ii), namely whether the failure to file the evidence in time was “despite acting promptly and diligently at all times.” If the Applicant has so acted “at all times” then, as it was put in Merial, “it will necessarily have also made all reasonable efforts to comply” with all relevant filing requirements as required by reg. 5.15(2)(a)(i).
What time period, then, do the words “at all times” used in reg. 5.15(2)(a)(ii) of the TM Regulations refer to as far as the present matter is concerned? In Merial the Deputy Commissioner considered that as used in the corresponding reg. 5.9(2)(a)(ii) of the Patents Regulations the words refer specifically to an extension applicant’s actions during the particular evidentiary period it is seeking to extend. In Merial the patent applicant had already successfully obtained a three month EOT for its EIA and was now seeking a further EOT of two months. Thus, both its actions during the extended three month period already granted and its actions during the initial statutory three month period for filing EIA, six months in total, were indicated by the words “at all times”. As the Deputy Commissioner put it at [18]:
…in my view when considering whether a party has acted promptly and diligently at all times I need to consider all the actions of the party in relation to compliance with the evidentiary period and not just its failure to comply within the period of the extension already granted.
In the present matter then, it is necessary to set out the history of the matter in order to provide the context in which the promptness and diligence of the Applicant’s actions might be assessed. In this regard I note Mr Hazan’s submissions that:
The Opponent’s Submissions list a number of [the Patent Office decisions] in which extension applications have been determined – however, the best precedent that the Hearing Officer can, and should, use to determine the Applicant’s extension application is the decision made by the Registrar in these proceedings to grant the Opponent an [EOT]. The interpretation given to the [TM Regulations] in making that decision should be applied in deciding the Applicant’s extension application.

and that:

Consistency, justice and fairness dictate that the Regulations be applied consistently to both the Applicant and the Opponent.

I note this submission appears to be in line with the view of McHugh and Gummow JJ in Re Minister for Immigration and Multicultural Affairs; Ex parte Lam[9] that a public decision maker should have regard to any regular practice adopted in the making of a particular decision when a failure to do so may result in some unfairness in the procedure now adopted.
[9] [2003] HCA 6 at [48] and [105] respectively.

History of the Matter

Acceptance of applications 1551414 and 1551417 for registration was advertised on 1 August 2013. The Opponent filed Notices of Intention to Oppose on 26 September 2013, followed by a (joint) Statement of Grounds and Particulars on 28 October 2013 specifying grounds under ss 42(b), 58 and 60 of the Trade Marks Act 1995 (“the Act”) based on claimed prior use of, and reputation in, allegedly similar marks. As mentioned, the Applicant filed a (joint) Notice of Intention to Defend both oppositions some two weeks later, on 12 November 2013.
The Opponent’s EIS was initially due on 19 February 2014, but on that day the Opponent requested extensions of three months. It was not in dispute that this initial extension request, (as with a subsequent request by the Opponent for EOTs for its EIS and as with the disputed extensions presently under consideration), fell to be determined under reg. 5.15 of the TM Regulations as amended by the RTB Amendments. In view of Mr Hazan’s appeal that reg. 5.15 be applied consistently to each of the parties, I set out details of the Opponent’s EOT requests below.
The Opponent’s initial extension request in relation to its EIS notes that although it had become aware of applications 1551414 and 1551417 on or about 5 August 2013, the Opponent had firstly attempted to negotiate an amicable settlement with the Applicant and it was only “As at 12 December 2013 [that] it became clear to the Opponent that it would have to proceed with the Oppositions in order to obtain a favourable outcome.” The EOT requests continue:
The Opponent has since that time been acting diligently with respect to the collation of evidence. The Opponent’s efforts have unfortunately been hampered by various circumstances (both personal and business related) that have arisen during the evidential period.
From a personal perspective, the Opponent’s sole director:
(a)was given sixty days’ notice until 12 January 2014 to move out of their existing rental property, during which time the Opponent’s director was required to find a new rental property;
(b)had to sign off on pre-start for their new home they are in the process of building and liaise with owners of neighbouring properties as part of this process;
(c)travelled to South Australia over the Christmas period to visit his elderly father-in-law; and
(d)was tied up with school aged children on holiday from December to late January 2014.
The only other person employed by the Opponent that could assist with the preparation of evidence is married to the Opponent’s sole director and so the same personal circumstances outlined above apply to her.
From a business perspective, the Opponent:
(a)had a monumental increase in council approvals to attend to during the month of December 2013; and
(b)has had a number of new staff train in all departments from November 2013 to January 2014.
As explained above, the Opponent is a husband and wife team so these circumstances have a major impact on the ability of the Opponent to prepare evidence.
Nevertheless, the Opponent and its lawyers have during this time made significant advances on the preparation of evidence in support of the Oppositions.
The Opponent’s lawyers have been, periodically since preparing the statements of grounds and particulars on or about 28 October 2013, conducting internet searches to collate evidence to include in the Opponent’s evidence in support.
The Opponent has contacted the Opponent’s advertising agency requesting various information and evidence to include in the Opponent’s evidence in support.
On 19 February 2014 the Opponent’s lawyers sent the Opponent a draft statutory declaration, which presents evidence to be filed in support of the Oppositions. The Opponent requires further time in order to bolster the evidence currently in the draft statutory declaration (including the evidence to be obtained from the Opponent’s advertising agency) and to finalise the statutory declaration for filing.
The Opponent respectfully requests an extension of time of three (3) months from 19 February 2014 to 19 May 2014 in which to do so.
A serious opposition is foreshadowed. The public interest in the efficient operation of the opposition system must necessarily be balanced with the public interest in having reasonable opportunity to place all relevant information before the Registrar, particularly in this case on the likelihood of confusion. It is in the public interest for the Opponent to be allowed further time to complete its evidence in support so that all available evidence and information is before the Registrar. Such evidence is required for the Opponent to prove its grounds of opposition raised in the statements of grounds and particulars filed for the Oppositions.
This is the first extension of time the Opponent has requested and it is anticipated all evidence will be completed and filed within the extended period.
There is nothing to indicate the Applicant will be unduly prejudiced by the extension.

On 18 March 2014 a delegate of the Registrar wrote to the Opponent’s attorneys, stating:
I have considered the application however, I am not satisfied that an extension of three months is justified.
Reg. 5.15(2)(a) requires a party to have made “all reasonable efforts” to comply with relevant filing requirements and to have acted “promptly and diligently” at all times. Consequently, a party making a request to the Registrar for an extension of time should be able to demonstrate a consistent pattern of reasonable effort, promptness and diligence in relation to all their endeavours so far to file their evidence within the statutory timeframe.
I note that on 19 February 2014 the Opponent’s lawyers sent the Opponent a draft statutory declaration and that the Opponent requires further time in order to bolster the evidence and to finalise the declaration for filing. However there is no explanation why three months would be needed to do this. A timeline outlining what is proposed in the extension period would be of assistance in determining if three months extension of time is justified.
In the circumstances, I do not find that an extension of 3 months is justified. I intend therefore to extend the time to file evidence in support for a period of two months to 19 April 2014.
I am also allowing the trade mark applicant 14 days from the date of this letter to make representations to the extension application.
If you do not request a hearing or provide more information and the applicant does not object, the extension to 19 April 2014 will be granted. If this is the case, then you should ensure that the complete evidence in support is filed by this date.
The Opponent’s attorneys did not respond, nor did the Applicant object. Consequently the Opponent was duly granted EOTs of two months, until 19 April 2014 (effectively until 22 April 2014, being the first working day after the Easter weekend).
On 22 April 2014 the Opponent uploaded its EIS, consisting of two declarations, to IP Australia’s “Objective Connect” database. One was a single page declaration by an independent marketing consultant with an annexed 20 page report headed “Granny Flats WA | Website Activity Analysis”. The other was a 26 page declaration by the Opponent company’s sole director with 93 annexures comprising some 383 pages.
Following telephone advice to the Opponent’s attorneys to the same effect on 23 April 2014, a delegate of the Registrar emailed the Opponent’s attorneys on 24 April 2014 regarding the longer declaration, stating (with original emphasis):
Please be advised that IP Australia is unable to open any of the six .7z files which were uploaded as part of Annexure MN-16 and IT Officers at IP Australia have found those archive files to be corrupt…
As the opponent’s time for filing evidence in support expired on 19 April 2014, the opponent will need to request an extension of time if it wishes to re-file the six .7z files. The opponent has until midnight Friday 2 May 2014 to file the extension application/s.
Later on 24 April the Opponent’s attorneys uploaded suitable replacements for the corrupt files in question.
On 30 April 2014 the Opponent formally applied for EOTs of one month, from 19 April 2014 to 19 May 2014, for the filing of its EIS. The out of time EOT applications were accompanied by a declaration made by a lawyer with the Opponent’s attorneys, although I note that this brief declaration merely refers to the information provided by IP Australia on 23 and 24 April (as quoted above), confirms that suitable replacement files were uploaded on 24 April and concludes:
For the reasons referred to above, granting the Opponent the requested extension of time will have an important effect on the outcome of the Opponent’s case. The Opponent’s case will be unduly prejudiced if the extension is not granted.
A delegate of the Registrar allowed the out of time EOTs based on the circumstances being “exceptional” in terms of reg. 5.15(2)(b) of the TM Regulations and the parties were then sent a standard form letter (received by the Applicant’s attorneys on 12 June 2014) advising that the Applicant’s initial three month period for filing EIA was from 7 June 2014 to 7 September 2014 (effectively 8 September since 7 September was a Sunday).
On 8 September 2014 the Applicant applied initially for EOTs of three months, from 7 September 2014 to 7 December 2014, to file its EIA. On 17 September a delegate of the Registrar wrote to the attorneys advising of her intention to refuse them. The delegate’s letter concluded by saying:
It is essential that the party seeking the extension presents sufficient information to justify the extension. Although you have given a broad outline of what occurred, there was no exceptional circumstance, no real explanation of why it was not possible to complete the evidence in the three month statutory period already given and no dates provided.
No timeline has been given for the steps taken during the statutory time period. A timeline focuses attention on the actions that the applicant has taken throughout the preparation of their evidence to demonstrate they have been prompt and diligent at ALL times.
There is also no outline detailing why three months would be needed to collate additional material, complete the evidence and file it. A timeline outlining what is proposed in the extension period would be of assistance in determining if three months extension of time is justified.
Please note that each extension of time request is assessed on its own merits.
I will allow you until 2 October 2014 to file further reasons in support of the extension of time OR to request a hearing in the matter of the extension of time. A hearing request must be accompanied by the fee of $400.
If you do neither, within the time allowed, the extension of time may be refused without further notice.
On 2 October 2014 the Applicant’s attorneys responded with a five page letter amending the original EOT requests from three months to two months, namely from 7 September 2014 to 7 November 2014, (these being the “disputed extensions” subject of the present decision). The letter indicated that the EOTs were being requested pursuant to reg. 5.15(2)(a) and provided “a timeline outlining the steps taken by the Applicant to prepare its evidence” which is reproduced below:

Date	Event
29.05.14 to 3.07.14	Applicant’s solicitor with carriage of this matter overseas
12.06.14	Letter from IP Australia dated 7.6.14 received – notifying of EIS having been filed by the Opponent and date for filing EIA
16.06.14	Opponent’s evidence downloaded and printed from Objective Connect – this included a declaration with 97 annexures, which were all uploaded by the Opponent as separate files.
17.06.14	A USB memory stick containing the Opponent’s evidence was sent to the Chief Operations Manager of the Applicant, Mr Cid Daher, who provides instructions on behalf of the Applicant in this matter
17.06.14 to 3.07.14	Mr Daher reviewing the Opponent’s evidence for the purpose of answering it; and locating material the Applicant is to rely upon
3.07.14	Applicant’s solicitor with carriage of this matter returns from overseas
3.07.14 to 1.08.14	Applicant’s solicitor considering Opponent’s evidence and telephone discussions with Mr Daher about preparation of the Applicant’s evidence
1.08.14	Meeting between Mr Daher and Applicant’s solicitor at solicitor’s office – Opponent’s evidence considered further and Mr Daher provided and discussed part of material it is to rely upon (see further below)
1.08.14	Email sent to Mr Daher confirming matters discussed
1.08.14 to 7.09.14	Further location, collation and provision of material by Mr Daher

As requested in the delegate’s letter of 17 September, the Applicant’s attorneys then go on to specify in some detail the content of the proposed EIA and further specify the “Steps proposed during the extension period”. While, not necessarily all directly relevant to the criteria I must consider under reg. 5.15(2)(a), the letter concludes with submissions based on pre-RTB decisions of the Registrar which have dealt with EOTs, these submissions provided under the headings “Amount of time so far allowed”, “Reasons put forward for needing the [EOT]”, “Seriousness of the opposition”, “Public interest” and “Inconvenience suffered by the Applicant”.
On 13 October 2014 the delegate wrote to the parties confirming that, based on the information provided, she proposed to grant the EOTs of (now) two months, but allowing the Opponent 14 days to object. The letter to the Applicant concluded:
If the opponent does not object, then the extension of time to 7 November 2014 will be granted. You should ensure that the complete evidence in answer is filed by this date as any further extensions are unlikely to be allowed. In addition, the extension question may not have been decided by this date. If the opponent objects, this date may pass before the decision is made.
On 20 October 2014 the Opponent’s attorneys confirmed the Opponent did object and formally requested a hearing on the issue. As mentioned, the hearing was then convened in Canberra on 11 December 2014, preceded by an exchange of written submissions. In the meantime the Applicant filed what would be, if the extensions are allowed, its complete EIA on 6 November 2014. This consisted of a 15 page declaration by Cid Daher, the Applicant’s General Manager, with 40 annexures, coming to 455 pages in total plus some video files.
Included with Mr Hazan’s written submissions at the hearing was, inter alia, the following further information aimed at demonstrating that the Applicant had acted promptly and diligently:
The Applicant is a small family business – it is a sole director company with only 8 employees. It therefore has limited resource[s] and time to dedicate to reviewing the evidence of the Opponent, retrieving material from archive, meeting with its legal representatives and drafting, revising and finalising its evidence.
Notwithstanding, it was able to undertake all of this work and file a lengthy Declaration of 15 pages and 40 annexures by 6 November 2014 – it could not have achieved the filing of such a detailed and lengthy Declaration by this date with its limited resources had it not made all reasonable efforts to comply with all relevant filing requirements.
As set out in the timeline [included with the Applicant’s attorneys’ letter to IP Australia of 2 October 2014 and reproduced in paragraph 36 above] the Applicant took steps to ensure the evidence was filed in time – it acted promptly and diligently at all times in doing so. Indeed, even though its legal representative with carriage of this matter was overseas for a considerable period of time steps were taken each week during the relevant time period to ensure the evidence was filed. The Applicant received and commenced considering the Opponent’s evidence in support within 1 week of its filing. The evidence in support contained 97 annexures – having regard to the Applicant’s limited resources it is understandable to expect that the Applicant would require considerable time to review that material. Having reviewed the material it then had to spend further considerable time retrieving, collating and preparing its own evidence. It evidently took these steps promptly and diligently as it was able to file a lengthy Declaration of 15 pages and 40 annexures by 6 November 2014 – it could not have achieved the filing of such a detailed and lengthy Declaration by this date with its limited resources if it had not acted promptly and diligently at all times. Furthermore, from the time of receiving the Opponent’s evidence, the Applicant took steps each week to progress preparation of the evidence.

Discussion

It is convenient to begin by dealing with two preliminary issues raised by Mr Stewart. Firstly, referring to reg. 21.17 of the TM Regulations Mr Stewart objected that the Applicant’s letter of 2 October 2014 “does not constitute evidence” and that I should be careful to give it “appropriate weight” in view of the fact that the information it contained was not “provided by declaration.” However, this has not been a relevant factor in my decision. Rather, as indicated by the Commissioner’s delegate in SportingbetAustralia v Tabcorp International Pty Ltd [10] at [40]:
A party may provide the relevant information in the manner of their choice.
[10] [2014] APO 21.
In any event Mr Hazan highlighted at the hearing that his firm’s letter of 2 October 2014 was provided in response to the sole request ever received from the Registrar for further information justifying the disputed extensions, (being the delegate’s letter of 17 September 2014), and was in the form, and contained the kind of information, actually requested. Via his written and oral submissions, as mentioned, Mr Hazan further detailed the Applicant’s situation and its actions and the reasons why the EIA was not completed during the relevant period.
An observation which was perhaps at the heart of Mr Hazan’s submission at the hearing seeking “consistency, justice and fairness” in view of what the Registrar had required of the Opponent before granting it two EOTs for its EIS and the relative ease with which they were obtained. In this regard no declaratory evidence was required of the Opponent. As Mr Hazan argued in his submissions:
It is also compelling that the reasons given by the Opponent to support its own application for an [EOT] dated 19 February 2014 were accepted as sufficient for it to be granted further time to file [EIS]. Its reasons for requiring further time were primarily based on the fact that the Opponent was busy on other issues – stating that it had to find a new rental property; its director travelled to South Australia; its director was busy with schoolchildren on holiday; the Opponent had an increase in work and needed time to train staff. The Opponent and the Trade Marks Office considered these reasons sufficient to enable it to be granted an [EOT] pursuant to Rule [sic] 5.15 of the [TM Regulations]. The steps taken by the Applicant, as set out in the timeline [reproduced in paragraph 36 above], indicate that the Applicant, despite also being busy with business and personal commitments like the Opponent, had taken significantly more positive and active steps to ensure its evidence was filed within the allocated time frame.
If the reasons given by the Opponent to support its own application for an [EOT] dated 19 February 2014 were sufficient for the Registrar to grant the Opponent an [EOT] under Rule [sic] 5.15 of the [TM Regulations] then the Applicant must also have taken sufficient steps for the [disputed extensions] to be granted – doing otherwise would mean applying the Regulation differently to each party in these proceedings. By parity of reasoning, there is no basis on which the Registrar could, in these circumstances, deny the Applicant the extension.
The present matter, where both parties’ EOT requests were made after the RTB Amendments had come into force, is distinguishable in this regard from the position where an opponent was granted one or more EOTs for EIS under the more liberal practice prevailing prior to the amendments.[11] Accordingly, I should in principle assume that the (unsuccessful) efforts of the Opponent to file its EIS within its initial statutory three month period were, at the time the Opponent was granted its initial EOT, considered by the Registrar sufficient to satisfy reg. 5.15(2)(a).
[11] For example, Shelford Services Pty Ltd v Baylor Research Institute [2014] APO 20.
The second preliminary issue raised by Mr Stewart seeks to address this. He submitted that to the extent the Registrar may have considered the form and content of the information provided by the Opponent in support of its application of 19 February 2014 for EOTs for EIS more sympathetically than she should (he argued) in the case of the disputed extensions, this was in any event appropriate because, unlike the disputed extensions, the Applicant had not actually objected to the Opponent’s EOT applications. The present matter is not, however, a substantive opposition where information and evidence before a Hearing Officer that could not have been considered at the examination stage comes into play for the first time and I do not accept Mr Stewart’s submission is correct in the case of EOT oppositions. I agree, rather, with Mr Hazan’s submission in response that:
To accept that submission is to misconstrue the Regulations. It would result in two different interpretations – one loose application of the principles for extension where the extension application is not opposed, and the other more onerous application where the application is opposed. There is no support for that interpretation anywhere in the Regulations, or in the policy that introduced them.
I turn now to the principal issue to be decided in this matter, namely whether the Applicant did in fact act promptly and diligently in its efforts to file its EIA by 7 September 2014 and whether the outline of relevant actions and the dates the actions took place reveals “significant gaps or delays” that the Applicant needs to explain.
In Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd (“Mineral Technologies”)[12], as with the present matter, the applicant (“Orekinetics”) was seeking an initial EOT for EIA. Orekinetics pointed to a number of issues, including the fact that it had become disenchanted with, and eventually changed, its original patent attorneys and that it was a small company with few staff, with the relevant person concerned with IP matters (“Mr Gates”) having to cope with other pressing commitments as a result of drought affecting a farm he owned. While it proved unnecessary for the Commissioner’s delegate to decide the matter based on Patent reg. 5.9(2)(b), it is interesting to note in passing that he did not consider drought to be an “exceptional circumstance.” In this regard he acknowledged that drought was “a natural event that is outside the normal evidentiary process, and outside the control of [the EOT applicant]”, but nevertheless concluded at [46]:
A drought does not prevent the preparation of evidence, but it can influence the time available to a person to prepare evidence. It is not reasonable to totally suspend the preparation of evidence during the period of a drought. Instead, the preparation of evidence should continue to be prosecuted as promptly and diligently as possible in the circumstances.
[12] [2014] APO 63.
Relevantly as far as the present matter is concerned, however, is that he eventually granted the requested EOT under Patent reg. 5.9(2)(a), considering Orekinetics had been prompt and diligent taking into account the small size of the company. In this regard the delegate said at [26]:
[26] It is not clear what strategy Orekinetics had adopted in order to prepare its evidence in answer. They had engaged patent attorneys (initially Griffith Hack and later IP Gateway) to assist with the process. Within the company, however, responsibility lay solely with Mr Gates, and everything had to go through him. In considering the reasonableness of this approach it needs to be taken into account that Orekinetics is a very small company (with only four employees). It is not reasonable to expect a small company to put in place the procedures that would be normal in a large company. In the circumstances, I accept that it was reasonable for all decisions to involve Mr Gates.
The delegate continued at [30]-[33]:
[30] Once the facts are understood, the question is whether the evidence preparation was undertaken promptly and diligently. However, that assessment must have regard to the full range of commitments the person has, and there is no requirement for a person to do the impossible. In [TRED] at [51] I said:
“A person needs to act reasonably, and it is not reasonable that a person do the impossible. The focus has to be on what the person actually did, and whether they acted reasonably, promptly and diligently.”
[31] Where a person encounters delays, that is not fatal to an extension of time if the person did what was reasonable to overcome the delays. As the delegate said in Shelford Services Pty Ltd v Baylor Research Institute [13]:
“Any significant gaps or delays in a chronology, where relevant action would generally be expected, should be explained. The nature of the delay and what was done to attempt to mitigate the delay would be a relevant consideration for an extension of time. An explanation of the unforeseen and what was done to mitigate that would generally be considered favourably.”
[32] However, a person must explain the circumstances in which they were operating in order for the Commissioner to take them into account. In [TRED] at [51] I went on to say:
“I do not accept that I should simply accept that it was not possible to prepare the evidence any sooner, without some information that would enable me to form that opinion for myself.”
[33] Once these matters are understood, it must be remembered that “promptly and diligently” is not setting a standard of perfection. In Osmose New Zealand v Zealand Limited [14] at [22] I said:
“While it might have been possible to carry out some activities faster, the time taken is not outside the range of prompt and diligent given the work that was involved.”
[13] [2014] APO 20.
[14] [2014] APO 49.

In deciding the EOT was appropriate in the circumstances, the delegate concluded at [41]-[42]:
[41] In [TRED] and [Merial], the Commissioner had to consider whether persons had acted promptly and diligently despite evident periods of delay. In those cases the parties provided explanations that were inadequate, in effect asking the Commissioner to assume diligence without disclosing enough of the basis for that conclusion. Consequently the extensions of time were not allowed. The present case is different. Orekinetics have provided an explanation of the relevant facts. This information has enabled me to be satisfied that, in the circumstances, Orekinetics acted reasonably and failed to file its evidence in answer despite acting promptly and diligently.
[42] Mr Gates drew attention to the fact that he is a farmer, and Orekinetics is a small Australian company. The Regulations draw no distinction between different types of applicants. There is no basis for allowing an extension of time solely on the basis of these matters. However, they are part of the context, and as such have been taken into account.
In the present matter the Applicant is a reasonably small family business, which only had eight employees during the critical time period, and I accept that it had relatively limited time and resources to devote to the oppositions it was facing. Moreover, Mr Daher, whose declaration of 6 November 2014 constitutes all of the proposed EIA, is its sole Director and I accept that preparation of this evidence was not a task that might otherwise have been easy to delegate. As noted at [42] by the Commissioner’s delegate in Mineral Technologies, there is no basis in the Patents Regulations (or in the TM Regulations) for allowing an extension of time solely for these reasons. However, as he went on to say, “they are part of the context” and, as with the delegate in that case, I have taken these factors into account.
Relevant to my decision too, is the fact that both the EIS and the proposed EIA in this case are quite voluminous, running to more than 400 and 450 pages respectively in total and also including in the case of the proposed EIA several video files. Taking this into account I consider the information provided with Mr Hazan’s firm’s letter of 2 October 2014, supplemented by the further information given in his written and oral submissions for and at the hearing, is sufficient in this case to explain any significant apparent gaps in the Applicant’s actions during the relevant period.
As indicated earlier, I also consider that there is merit in Mr Hazan’s submission that, “Consistency, justice and fairness dictate that the Regulations be applied consistently to both the Applicant and the Opponent.” I have already detailed the reasons the Opponent gave for its request of 19 February 2014 for EOTs for its EIS, which involved the Opponent’s relatively small size and personal matters involving its sole Director and his family and which were subsequently accepted by the delegate as sufficient. In my view this aspect of the matter does constitute part of the context I should bear in mind and the Applicant might rightly feel aggrieved if it were not.
I am satisfied that the provisions of reg. 5.15(2)(a) have been made out and that it is appropriate to grant the disputed extensions. Pursuant to reg. 5.15(3) I now need to decide what length of the extended period is reasonable in the circumstances. Given the EIA in question, being Mr Daher’s declaration of 6 November 2014 with its accompanying 40 exhibits and video files, was provided to IP Australia that day, the proposed 7 November 2014 deadline is reasonable.

Decision

I extend the period for filing EIA to 7 November 2014 and I direct that the due date for the Opponent to file its EIR is three months from the date of this decision, namely 28 January 2016.

Costs

This matter was heard at the request of the Opponent. As it was not successful in having the extensions refused, it is the unsuccessful party and I award costs against it in the matters and amounts contained in Schedule 8 of the TM Regulations.

Deirdre O’Brien
Hearing Officer
Trade Marks Hearings
28 October 2015