Emile Coue Pty Ltd v Victoria Principal Productions Inc

This matter concerned an objection by Victoria Principal Productions Inc (VPP) to an application by Emile Coue Pty Ltd (Coue) for an extension of time to serve evidence in support of its opposition to VPP's application to remove trade marks 605332 and 605333 (PRINCIPAL'S SECRET) from the Register. Coue had initially filed a notice of opposition to the removal application, with evidence due on 25 August 1999. Coue subsequently sought and was granted a three-month extension, and then a further three-month extension until 25 February 2000. VPP objected to this second extension, arguing that Coue had not made out a proper case and that granting the extension would be inappropriate considering the interests of the parties and the public.

The delegate of the Registrar of Trade Marks was required to determine whether to grant Coue's second application for an extension of time to serve evidence in support of its opposition. This involved assessing whether Coue had provided sufficient reasons for the delay, whether it had acted diligently, and considering the relative inconvenience to both parties and the public interest. The delegate also had to consider the legal principles governing extensions of time, including those outlined in cases such as *Lyons v Registrar of Trade Marks*, which require consideration of whether a proper case has been made out, sufficient reasons provided, the public interest, and the relative inconvenience to the parties.

The delegate reasoned that while Coue's reasons for the extension were brief, they were acceptable for a second request, particularly as a statutory declaration was not required at that stage. The delegate found that Coue's claim of gathering evidence while moving premises, though not efficient, was a circumstance that could be allowed for, and that VPP's assertion of lack of diligence was not entirely accurate, as there was no obligation for Coue to provide evidence to a commercial rival prior to formal proceedings. The delegate concluded that the balance of inconvenience favoured Coue, as denial of the extension would result in the loss of its trade marks and any chance of settlement, which outweighed the inconvenience to VPP of further delay. The public interest was also served by allowing all relevant information to be presented.

Consequently, the delegate allowed Coue's application for a three-month extension of time, setting the new deadline for service of evidence as 25 February 2000. As Coue was successful in its application, the delegate ordered that VPP bear the costs of the proceedings.