Deckers Outdoor Corporation Inc v Luda Production Pty Ltd [Sec=Unclassified]
[2009] ATMO 75
•29 September 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application for extension of time to serve evidence in opposition by Deckers Outdoor Corporation Inc. to registration of trade mark applications 1013798(25), 1013806(25), 1013807(25) - UGG AUSTRALIA PTY LTD & DEVICE, MADE BY UGG AUSTRALIA, MADE BY UGG AUSTRALIA & DEVICE - filed in the name of Luda Production Pty Ltd.
Delegate:
Claudia Murray
Representation:
Opponent: Chris Round, Middletons Lawyers, Melbourne.
Applicant: Celia Davies, Freehills Patent & Trade Mark Attorneys, Melbourne.
Decision:
2009 ATMO 75
Section 52 oppositions: Applications under regulation 5.15 for extension of time to serve evidence in answer – applications allowed – costs awarded against opponent.
Background
1. This is a decision with reasons in the matter of an application for extension of time to serve evidence in answer in three related opposition to registration proceedings. Luda Production Pty Ltd, of Brunswick, Victoria (‘the applicant’) filed trade mark applications numbered 1013798, 1013806 and 1013807 on 2 August 2004. Trade mark number 1013806 is for the words MADE BY UGG AUSTRALIA. The device trade marks are:
1013798 1013807 2. All three applications were filed in class 25 of the Nice Classification of Goods and Services, for the following goods: ‘Footware (sic) being sheepskin boots and headgear’.
3. Grounds for rejection were raised against the applications during examination, based upon the trade marks’ lack of capacity to distinguish the applicant’s goods, and also the existence of a prior registration owned by Deckers Outdoor Corporation Inc. Evidence of use was provided in response, and the applications were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 6 September 2007.
4. Deckers Outdoor Corporation Inc of California, USA (‘the opponent’) filed notices of opposition on 7 January 2008, after obtaining extensions of time of a month in each case to do so. By 7 August 2008 it had served and filed all of its evidence in support of the oppositions, having extended the statutory three months provided for this by a further four months.
5. The applicant was then required to serve and file its evidence in answer. After the statutory three months elapsed, it sought and was granted six months total extension for each of its applications, in two three month blocks. The second of these requests for extension was justified on the basis of the applicant having recently changed its legal representation.
6. On 7 May 2009 the applicant, through its new attorneys, made a third request for a further three months within which to finalise its evidence in answer for its three applications. If granted, the extensions would take the total time allowed to twelve months in each case, being comprised of the statutory three month period, plus nine months of extensions. That is to say, the extension went beyond the Registrar’s benchmark (of nine months from the date an applicant receives an opponent’s evidence) for extensions of time to serve evidence in answer where the parties are not negotiating. The relevant benchmarks for all extensions of time are set out in Part 4 (‘Maximum time likely to be allowed to prepare evidence’) of IP Australia’s approved form for application for extension of time under regulation 5.15 of the Trade Marks Regulations 1995.[1] Part 4 specifies that:
Extensions that will take the time beyond the benchmark for the respective evidence stage may be granted on a case by case basis but only if there are compelling reasons to do so…A request for an extension beyond the benchmark must be supported by a full and frank disclosure of all the relevant facts. It is highly unlikely that any more than one such extension will be granted. (Emphasis in original.)
[1] Available on the IP Australia website, at:
7. The applicant’s statutory declaration in support of its extension requests, which was made by Ms Celia Davies, provided the following explanation:
The Applicant requested that my firm take over responsibility for these matters in February 2009. Considerable time has been spent trying to obtain full copies of the Applicant's files from its previous service provider. Having now received these files and considered what information is required for the Applicant to build its case, we require these extensions to afford the Applicant enough time to gather additional historical information. Accordingly, we request that 3 month extensions of time be granted in each opposition for the Applicant to serve its evidence in answer.
8. The Trade Marks Office issued a warning that, if granted, the extensions would exceed the Registrar’s benchmark, and advised that the other party had been given fourteen days within which to object. The agents for the opponent then made written submissions opposing the grant of the extensions. They protested that the reasons given by Ms Davies were not compelling and did not justify the grant of more time to the applicant, given that:
· There were no settlement negotiations in progress between the parties
· The applicant’s new representatives had already had ample time to obtain the applicant’s files
· The applicant’s reasons did not provide any indication of the progress made so far in compiling the applicant’s evidence, nor did they explain how a further three months would assist that process
· The applicant had already provided, during the course of overcoming the examiner’s grounds for rejection, a significant amount of historical evidence, which the opponent had inspected following a Freedom of Information request in 2007.
9. By letter dated 4 June 2009, an officer from IP Australia indicated that she believed the objection had merit. The applicant was given fourteen days within which to respond to the objection in writing, or to request a hearing upon the matter.
10. The applicant elected to be heard, and the matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 6 August 2009. Ms Celia Davies, of Freehills Patent & Trade Mark Attorneys, Melbourne, represented the applicant. Mr Chris Round of Middletons Lawyers, Melbourne, represented the opponent. Both parties appeared via video link.
The legislation
11. The relevant provisions of regulation 5.15 state:
(1) A party to the opposition proceedings may apply to the Registrar:
(a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12…
(2) The Registrar may grant an application on reasonable terms specified by the Registrar.
(3) The Registrar must not grant an application unless the Registrar:
(a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
(b) has given the parties a reasonable opportunity to make representations concerning the application; and
(c) is reasonably satisfied that:
(i) in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence…
is appropriate.
(4) For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
Evidence and submissions
12. Ms Davies began her submissions by observing that the applicant had, that morning, served and filed its evidence in answer for all three oppositions. Accordingly, should I decide to allow the extension requests at issue, until 7 August 2009, the applicant would need no further time within which to comply with the opposition timetable. It was merely a coincidence, Ms Davies explained, that the evidence should be finally ready on the morning of the hearing, as that date was set by the Office, and was therefore essentially out of the applicant’s control. It was not a coincidence, however, that the evidence was now in, at the end of the disputed extension period, because her firm had always been confident that it needed only that further extension in order to finalise the applicant’s evidence.
13. Ms Davies went on to fully elaborate upon the circumstances surrounding the filing of the applicant’s trade mark. She explained in some detail the history of the applicant’s loss of trust and confidence in its previous long-standing legal agents, following the abrupt departure from the firm of the applicant’s key contact. She also explained that the applicant’s difficult decision to appoint Freehills as its new legal advisor had been taken ‘just days before the first extension period expired’. Then, having filed their first extension request on behalf of their new client, Freehills had to wait a further six weeks before the file transfer from the applicant’s prior legal agents was completed.
14. Finally, Ms Davies described the obstacles facing the applicant in its struggle to compile its evidence:
It became apparent during our meeting with the Applicant on 24 March 2009 that much historical information needed to be gathered to be included in the Applicant's evidence in answer. Although evidence of use was lodged to gain acceptance of these applications, that evidence did not meet the increased burden of proof required for opposition proceedings.
The Applicant is a family business. It is run by mum, dad and daughter. There are no other staff employed by the Applicant who can manage these oppositions and look through historical records to locate information we asked for. The Applicant does not have sophisticated filing or computer systems and had retained most of its records only for the required 7 years. Therefore, the search for the historical information has involved a laborious manual search of remaining records which are not kept in any methodical order. The process has taken time and a great deal of effort.
15. The opponent’s submissions objecting to the extension of time agreed with the applicant that, according to both patents and trade mark precedent case law, the factors available to me in determining whether an extension of time is ‘appropriate’, in terms of regulation 5.15(3), can be summarised as:
(a) the length of time already allowed;
(b) the reasons put forward to justify the extension;
(c) the seriousness of the opposition;
(d) the inconvenience likely to be suffered by the 2 parties; and
(e) the public interest in the matter.
16. Mr Round focused upon the lengthy delay by the applicant in submitting its evidence in answer which, he said, constituted ‘a grave lack of diligence’ on its part. Further, in criticising the initial case made by the applicant in support of its extension application, he cited the requirements set out in Part 51.3.2 of the Trade Marks Office Manual of Practice and Procedure, and referred to Dermatech Laboratories Pty Ltd v Johnson & Johnson[2], where Hearing Officer Don Nancarrow discussed the two applicable principles of a ‘rising onus on the applicant for the extension with the passage of time’ and the need for ‘greater detail of the circumstances as the time extended accrues.’ Mr Round submitted that the reasons previously provided by the applicant did not ‘constitute persuasive evidence that it is making real efforts to bring the service of the evidence to a conclusion’.
[2] (2000) 49 IPR 419, at 423.
17. It became clear from Mr Round’s discussion of the final three factors he had listed as relevant to my decision that, despite appearances to the contrary, the opponent was merely seeking to speed up the opposition process, not to exclude the applicant from serving and filing any evidence whatsoever. He said that there was ‘no question’ about the seriousness of the dispute between the parties, but that:
The Applicant could file all of the evidence that it filed in support of the trade marks at the examination stage and the hearing could proceed. There would be no inconvenience to the applicant if this were to occur…
The Opponent submits that in the circumstances, the public interest rests in favour of the Opponent as the Applicant has not acted promptly and diligently in the proceedings and should be denied a Third Extension of Time to file its evidence in answer. The Applicant should be required to file and serve the evidence it has managed to prepare to date and the determination of the Opposition should not be further delayed.
Discussion
18. The opponent’s suggestions about how the applicant’s evidence might be handled carry a fatal flaw. That is, to be able to be relied upon, evidence in answer must have been properly served within either the period provided for under regulation 5.10, or that period as extended under regulation 5.15, quoted above. So, whatever its evidence, the applicant would still have needed an extension of some kind, to allow its service on the opponent. In the event, the applicant’s evidence has now been finalised, served on the opponent and filed with this Office. Resumption of the opposition timetable is merely waiting upon my decision here that it is appropriate to grant the necessary extensions of time which will allow the evidence in.
19. Mr Round argued that ‘a line in the sand should be drawn somewhere’. He drew my attention to the recognition by IP Australia that the grant of extensions for the filing of evidence is a ‘major cause of protracted opposition proceedings’, as evidenced by the publication of its recent consultation paper Resolving Trade Mark Opposition Proceedings Faster: Toward a Stronger and More Efficient IP Rights System. In that paper, IP Australia has called for comment upon its proposal for the repeal of the existing opposition extension of time provisions, in favour of the Registrar’s direction to allow extensions where the party ‘has acted promptly and diligently at all times since the opposition proceedings began but, despite that, cannot serve the evidence…or because of some other compelling circumstance.’[3]
[3] IP Australia, Resolving Trade Mark Opposition Proceedings Faster (June 2009), at page 13.
20. It is certainly true that this Office is very conscious of the need to discourage some opposition parties, who appear to be deliberately using the extension of time provisions as a strategic tool to delay the determination of their opposition. However, it is also mindful of the important principle that a serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision.[4] To prevent that from occurring, without due consideration of the possible ramifications, could be to carelessly subject both trade mark applicant and opponent to the real possibilities of incurring considerable extra expense and experiencing further (and much longer) delays while they wrangle their unresolved dispute into the courts.
[4] Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858.
Decision
21. The applicant’s hearing submissions in support of its applications for extension of time, together with the fact that it has now (whether fortuitously or by design) served its evidence within the disputed extension period, have together satisfied me that it is appropriate to grant the extensions at issue without further delay. This I now do. The opposition timetable for trade marks 1013798, 1013806 and 1013807 may therefore proceed in accordance with regulation 5.12, with the opponent’s evidence in reply due on or before 6 November 2009.
Costs
22. Both sides sought their costs in this matter. It is usual for costs to follow the event, and I believe that is an appropriate outcome here. I award costs, according to the official scale, against the unsuccessful opponent, Deckers Outdoor Corporation Inc.
Claudia Murray
Hearing Officer
Trade Marks Hearings
29 September 2009
Key Legal Topics
Areas of Law
Intellectual Property
Civil Procedure
Legal Concepts
Injunction
Damages
Breach
Remedies