Dematech Laboratories Pty Ltd v Johnson & Johnson

This decision concerns an objection by Dermatech Laboratories Pty Limited to three applications for extensions of time made by Johnson & Johnson to serve evidence in answer in opposition proceedings concerning the trade mark application DERMABOND. The applicant, Johnson & Johnson, had repeatedly sought extensions for serving its evidence, leading to a cumulative delay from November 1999 to February 2000. Dermatech Laboratories objected to these extensions, arguing that the reasons provided by Johnson & Johnson lacked sufficient detail and transparency regarding the progress of evidence collation and the expected timetable for its service.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether to grant the three applications for extensions of time to serve evidence in answer, pursuant to Regulation 5.15 of the Trade Marks Regulations 1995. This required the delegate to be reasonably satisfied that the extensions were appropriate, considering the applicant's explanation for the delay, the progress made, and the potential impact on both parties. The delegate also had to consider the principles outlined in cases such as *Ferocem Pty Limited v Commissioner of Patents* and *Lyons (trading as Mitty's Authorised Newsagency) v Registrar of Trade Marks*, which address the discretionary nature of granting extensions and the need to balance the interests of the parties and the public.

The delegate reasoned that while the opponent had raised valid concerns about the lack of detail in some of the applicant's earlier requests, the applicant's explanations, particularly regarding the geographical distance between parties and the voluntary nature of third-party evidence providers, were persuasive. The delegate noted that the applicant's intention to align evidence for both the current opposition and potential Federal Court proceedings was a relevant and laudable consideration, drawing on the principles from *Ferocem*. Furthermore, the delegate found that the applicant had ultimately discharged its onus to provide a "full explanation" with "progress to date," an "expected timetable for completion," and "compelling reasons," especially after the service of a key affidavit. The delegate also addressed the opponent's concern about confidentiality of third parties, concluding that while names must eventually be disclosed, initial requests for time based on such parties do not necessitate immediate full disclosure.

Ultimately, the delegate allowed the three extensions of time, permitting Johnson & Johnson to serve its evidence in answer up to 2 February 2000. The delegate found that on balance, the criteria for granting extensions favoured the applicant, particularly as the evidence was substantially available and refusing the extension would not serve the public interest or the applicant's interests. While acknowledging the opponent's claim of financial disadvantage, the delegate indicated that any further requests for extensions beyond this period would require more compelling justification. The delegate directed that each party bear their own costs.