Facebook Inc v Romanoff Roman Borysovych

[2022] ATMO 53

TRADE MARKS ACT 1995

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

ReOpposition by Facebook Inc to an application by Romanoff Roman Borysovych for extension of time to file evidence in answer in an opposition proceeding (being opposition of extension of protection of International Registration 1472929 (45) (Australian trade mark application 2017338) – KarmaBook – held by Romanoff Roman Borysovych)

Delegate:                 Robert Wilson

Representation:       Extension Applicant: Andrew Sykes of Counsel, instructed by Stephens Lawyers and Consultants

Extension Opponent: Roseanne Mannion of Spruson & Ferguson

Decision:                   2022 ATMO 53

Trade Marks Act 1995 (Cth): Opposition to application under reg 17A.34K to extend the time for filing evidence in answer – health and other issues of attorney found to be exceptional circumstance which justify extension – extension request granted

Background

1. Trade mark number 2017338 is the Australian designation of a request made under the Madrid Protocol by Romanoff Roman Borysovych (‘the Holder’) to extend protection of the trade mark subject of International Registration 1472929 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). Extension of protection was opposed by Facebook Inc (‘the Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth). Pursuant to reg 17A.34K, the Holder requested that the Registrar of Trade Marks extend the period for filing its evidence in answer. The Opponent opposed the extension. This decision concerns the extension request. Details of the IRDA are as follows:

IRDA number:	2017338
International Registration:	1472929
Filing Date:	10 April 2019
Convention Priority Date:[1]	4 March 2019 (Ukraine m 2019 04999)
Services:	Class 45: Online social networking services (‘the Holder’s Services’)
Trade Mark:	KarmaBook	(‘the Holder’s Trade Mark’)

[1] Trade Marks Regulations 1995 regs 17A.2 to 17A.4.

1. Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

   Notice of Opposition, Notice of Intention to Defend, and Evidence in Support filed

2. Following advertisement in the Australian Official Journal of Trade Marks of the IRDA’s acceptance on 14 October 2019 the Opponent filed a Notice of Opposition (‘the Notice’) consisting of a Notice of Intention to Oppose on 16 December 2019 and a Statement of Grounds and Particulars (‘the SGP’) on 16 January 202. After being granted an extension of time to do so, the Holder filed a Notice of Intention to Defend on 13 May 2020. The Opponent filed its evidence in support within the usual time allowed on 31 August 2020. The All Evidence In Support Filed notice sent to the Holder indicated that the due date for filing its evidence in answer was 2 December 2020 (being three months from the date of the notice).

3. Perusal of the file in this matter shows that following the filing of the Opponent’s evidence in support, there was an unfortunate series of delays by the Holder in filing documents, and by the Registrar in taking action in respect of correspondence filed by the Holder. This, coupled with the automatic issuing of inappropriate standard notices by IP Australia’s systems, has resulted in a less than ideal proceedings to date. A summary of the file is provided below.

   First and Second Applications for Extensions of Time to File Evidence in Answer

4. On 2 December 2020, the Holder requested an extension of time of two months to file its evidence in answer (‘the first extension request’). Regulation 17A.34K gives the Registrar a discretionary power to grant such extensions. Regulation 17A.34K reads:

   (1)   A party may request the Registrar to extend a period for filing evidence mentioned in regulation 17A.34J.

   (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 the relevant filing requirements of this Subdivision; 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 Subdivision;

   (b)   an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Subdivision;

   (c)   an order of a court or a direction by the Registrar that the opposition be stayed.

5. As can be seen by the wording of reg 17A.34K, there are a number of circumstances in which the Registrar may extent the period for granting certain evidence. The first extension request did not refer to any specific provision of reg 17A.34K; however; the request indicated, amongst other things, that:

   We advise that in the previous week the parties have exchanged communications aimed at a potential resolution of the opposition proceeding, as well as international proceedings concerning the mark.

   [The Holder] has previously engaged trade mark attorneys in other jurisdictions, including the USA, India, European Union and Ukraine to defend the mark against opposition proceedings by the Opponent.

   In the light of the continuing restrictions on the operations of business in those countries due to COVID-19, and also the continuing restrictions applicable in the State of Victoria, [the Holder] has been unable to confer with his attorneys and advisers and progress the discussions with the Opponent.

6. As a result of the general disruptions caused by the COVID-19 pandemic, along with the large number of requests for extensions of time received by the Registrar in relation to a large number of matters before the Registrar, the first extension request was not dealt with by the Registrar for approximately three months after the request was made. In the meantime, on 11 March 2021, a standard Evidence In Answer Overdue Notice was automatically issued by IP Australia’s file management system. That standard notice indicated that as no evidence in answer had been filed the evidence periods were over and the parties had until 11 April 2021 to request a hearing. This was the first inappropriate standard notice.

7. The first extension request was to extend the period for filing the evidence in answer to 2 February 2021—a two-month extension. On 12 March 2021, a delegate of the Registrar indicated her intention to refuse the extension of time and allowed the Holder fourteen days to respond. The Holder responded on 23 March 2021 with further information and submissions to support the request and, in addition, requested a further three-month extension of time to 2 May 2021 (‘the second extension request’)—a total extension of five months. This response from the Holder was not dealt with by the Registrar until 28 June 2021. In the meantime, there were a significant number of documents filed in the matter, including a request on 19 April 2021 by the Holder to be heard on the opposition. I note the hearing request was received eight days after the due date for requesting a hearing. This hearing request was not dealt with by IP Australia before a standard Hearing Not Requested notice was issued by IP Australia’s systems on 21 April 2021. This was the second inappropriate standard notice.

   Holder instructed new legal representative

8. For reasons which will become apparent below, on 11 June 2021 the Holder engaged a new representative, Stephens Lawyers & Consultants (‘Stephens’), to act for them. IP Australia was notified of the change of representative, by Stephens, on 18 June 2021. The change was recorded by IP Australia shortly afterwards.

   Intention to grant first and second extension requests (five months to 2 May 2021)

9. On 28 June 2021, the delegate informed the Holder and the Opponent of her intention to grant both the first and second extension requests. If granted, the extensions would make 2 May 2021 the due date for the Holder to file his evidence in answer. In her correspondence, the delegate indicated that she was satisfied that there were exceptional circumstances which warranted the extension; in particular, that the Holder’s representative at the relevant time ‘was suffering from a [medical condition] which prevented him from gathering and filing evidence in answer on behalf of the holder’. The Opponent was given fourteen days to object to the granting of the extension.

10. By correspondence filed on 12 July 2021, the Opponent objected to the extension request. This correspondence was not dealt with by the Registrar until 23 September 2021. In the meantime, the Holder applied for a further five months extension of time taking the due date for filing its evidence in answer to 2 October 2021 (‘the third extension request’). By correspondence dated 23 September 2021, the delegate forwarded the Opponent’s objections to the first two extension requests to the Holder for comment, and informed the Opponent of the third extension request. The correspondence to both parties indicated, amongst other things:

    A further application for an extension of time to 2 October 2021 has been filed … This extension of time will be considered once the extension of time to 2 May 2021 has been decided.

11. In the meantime, Stephens, on behalf of the Holder, filed two documents which potentially constituted its evidence in answer. These documents were filed on two different days, being, 6 August, and 9 August 2021. I note that neither was filed prior to 2 May 2021 but both were filed within the subsequent five-month period covered by the third extension request.

    Extensions to 2 May granted, intention to grant third extension, hearing requested

12. The Holder responded to the Opponent’s objections to the first and second extension requests on 7 October 2021. After considering the Holder’s response, the delegate granted the first two extension requests (to 2 May 2021) and indicated, by correspondence dated 10 November 2021, her intention to grant the third extension request (to 2 October 2021). The Opponent was given fourteen days to: comment on the intention to grant the third extension; or, alternatively, to request to be heard on the granting of the extension. The Opponent requested to be heard.

13. It has fallen to me, as a delegate of the Registrar of Trade Marks, to decide whether the third extension request should be granted. To be clear, I am not to decide whether the first two extensions are to be granted—that has been done. Nor am I to consider whether those extensions ought to have been granted. For the sake of simplicity, in the remainder of this decision a reference to ‘the extension request’ is a reference to the third extension request (to 2 October 2021).

14. I heard the matter on 1 February 2022. Andrew Sykes of Counsel, instructed by Stephens Lawyers and Consultants, appeared on behalf of the Holder. Roseanne Mannion of Spruson and Ferguson appeared on behalf of the Opponent. Both representatives’ oral submissions were supplemented by written submissions which were filed prior to the hearing.

    Privacy of former solicitor

15. The Holder was represented by a solicitor (‘the Former Solicitor’) from the date of filing the IRDA until Stephens was engaged. The extension request is based on: exceptional circumstances which relate to a medical condition suffered by the Former Solicitor; the exacerbation of that medical condition as a result of the Former Solicitor being a victim of a violent crime; and, by the COVID-19 pandemic (together ‘the Former Solicitor’s Circumstances’). It is noted that as well as being the (alleged)[2] victim of a violent crime, criminal proceedings were commenced by Victoria Police against a person for committing that (alleged) crime. Out of respect for the privacy of the Former Solicitor, he will not be named in this decision, nor will details of the Former Solicitor’s Circumstances be provided in this decision. I note that the Opponent was aware of the details of the circumstances when opposing the extension request, and I am aware of those details in making my decision.

    [2] The outcome of the criminal proceedings is not before me. References in this decision to the violent crime suffered by the Holder are not an acceptance that a violent crime did in fact occur, but to the Former Solicitor’s belief that it did.

    Material considered in making this decision.

16. In making my decision I have considered the following material:

    ·Correspondence (not specifically referred to below) from and to the Registrar which appeared on IP Australia’s filed and which related to the extension request (these are referred to in the background provided above).

    ·Declarations and correspondence filed by the Holder in relation to the extension request:

    o‘Statement By Applicant’s Solicitor’ made 23 March 2021 by the Former Solicitor with annexures (‘the Former Solicitor’s Statement’);

    oConfidential Statutory Declaration made 15 July 2021 by the Holder (‘Romanoff 1’);

    oConfidential Declaration made 4 October 2021 by the Former Solicitor with exhibits (‘the Former Solicitor’s declaration’);

    oConfidential Response by Stevens Lawyers and Consultants dated 7 October 2021. This document is a response to the correspondence issued by IP Australia on 23 September 2021 (referred to above).

    oConfidential Statutory Declaration made 24 January 2022 by Katarina Klaric, the Principal and Director of Stevens Lawyers and Consultants;

    oConfidential Statutory Declaration made 25 January 2022 by the Holder (‘Romanoff 2’); and

    oConfidential Statutory Declaration made 25 January 2022 by Steven Stern, Barrister-at-Law and member of the Victorian Bar (‘the Stern declaration’).

    ·Declarations filed by the Holder as EIA:

    oConfidential Statutory Declaration made 6 August 2021 by the Holder, with Exhibits RR1 to RR26; and

    oConfidential Statutory Declaration made 9 August 2021 by Kathryn Burridge, Professor of Linguistics at the School of Languages, Literatures, Cultures and Linguistics, Monash University, with Exhibits KB1 to KB3.

    ·The Holder’s written and oral submissions.

    ·The Opponent’s written and oral submissions.

17. Notably, there are no documents before me that evidence the violent crime suffered by the Former Solicitor or the associated criminal proceedings. This is explained in the Former Solicitor’s declaration made 4 October 2021 by a statement that although he was in possession of such documents, publication of those documents was prohibited by certain indicated legislation.

    Consideration of the extension request

18. As indicated above, reg 17A.34K gives the Registrar a discretionary power to extend a period for filing evidence in answer. The Holder relied upon the existence of ‘exceptional circumstances that justify the extension’. Regulation 17A.34K(2)(b) allows the Registrar to extend the period on this basis. The exceptional circumstances relied upon by the Holder were the Former Solicitor’s Circumstances. It was submitted that those circumstances resulted in a failure of the Former Solicitor to properly carry out his role as the Holder’s representative; in particular, those circumstances prevented the Former Solicitor from filing the Holder’s evidence in answer in the time allowed.

19. In submissions, the Holder referred to the ‘Key Period’; this is the period from October 2020 to removal of the Former Solicitor as solicitor on the record on 11 June 2021—I will adopt this reference here.

20. The Holder submitted that because of the Former Solicitor’s Circumstances, and despite his best efforts to do so, the Former Solicitor was unable to cope ‘to a sufficient extent to act as a competent solicitor in this opposition proceeding’. It was also submitted:

    During the Key Period the Former Solicitor was the sole solicitor responsible [for] preparing evidence for [the Holder’s] review and execution and [for] filing such evidence in accordance with deadlines. [The Holder] relied on him to manage such deadlines.

    The Former Solicitor did not disclose [the medical condition] to [the Holder] until March 2021. Even after this time, [the Former Solicitor] believed he was still able to act competently. However, he concedes that was sadly not the case. He concedes his work was not satisfactory and ceased acting at the end of the Key Period … Until this time it is clear from the evidence that [the Holder] fairly believed his matter was being managed by a solicitor acting with competence and was unaware of the Former Solicitor’s medical condition and other factors affecting his competency. The Opponent’s suggestions to the contrary are mere false speculation.

21. The questions which must be considered here are: firstly, whether the Former Solicitor’s Circumstances actually existed as asserted; secondly, whether those are ‘exceptional circumstances’ as contemplated by reg 17A.34K(2)(b); and thirdly, whether those exceptional circumstances justify the extension.

    The Former Solicitor’s Circumstances

22. The first consideration is whether the Former Solicitor’s Circumstances actually existed as described by the Former Solicitor. I note there is no assertion by the Opponent that the Former Solicitor’s Circumstances were other than as described; nevertheless, this is not sufficient, of itself, for me to be satisfied that they did.

23. The Former Solicitor first indicated that he was suffering from the medical condition in his statement made 23 March 2021—that statement had a number of annexures. The first annexure was a ‘Medicare attendance history’ and was stated to show the attendance history at the Former Solicitor’s general practitioner, and at a medical specialist. The history covers the period from 4 August 2020 to 16 March 2021. Some 26 items are listed which appear to cover medical visits to the aforementioned. The second annexure is a referral from the Former Solicitor’s general practitioner to the medical specialist which appeared in the ‘Medical attendance history’ and a treatment plan for the medical condition. The referral was dated 19 January 2021 and includes an indication that the Former Solicitor was ‘well known’ to the specialist. The treatment plan had the same date. The third annexure was a copy of a prescription for medicine used to treat the Former Solicitor’s medical condition. The statement contains no mention of the violent crime said to involve the Former Solicitor.

24. In his confidential declaration made on 4 October 2021, the Former Solicitor indicated that his 23 March 2021 statement contained ‘a number of errors and matters that require correction and/or clarification’. The Former Solicitor declared that the errors and omissions were made because of the combination of his medical condition, his being a victim of a violent crime, and ‘Victorian Police commencing a criminal prosecution for assault on me against the offending party’.

25. In respect of the effect of the COVID-19 pandemic, the Former Solicitor declared that his health condition was ‘compounded by COVID-19 and the Victorian Government’s COVID-19 lockdowns during which time I could not operate my legal practice from my office and had to work from home without support’. This is a bald statement without supporting documentation; nevertheless, the challenges which have arisen throughout society as a result of COVID-19 are widely recognised and on this basis I accept this statement.

26. The Former Solicitor’s 4 October 2021 declaration was commendably frank and believable. On the basis of that declaration and the other material discussed above, I am satisfied that the Former Solicitor’s Circumstances were as described by him in his declaration. It is necessary to now consider whether the Former Solicitor’s Circumstances are ‘exceptional circumstances’.

    Are the Former Solicitor’s Circumstances ‘Exceptional Circumstances’?

1. The next question to be answered is whether the Former Solicitor’s Circumstances are ‘exceptional circumstances’ as contemplated by reg 17A.34K(2)(b). Regulation 17A.34K(4) contains a non-exclusive list of ‘exceptional circumstances’. Sub‑regulation (4)(a) indicates that ‘exceptional circumstances’ includes ‘a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Subdivision’. The Holder drew my attention to the case of Honest Reveira v Registrar of Trade Marks (‘Honest Reveira’).[3] That case concerned a request for an extension of time to file a notice of opposition pursuant to reg 9.11. Regulation 9.11(4)(b) provides that ‘circumstances beyond the control of the person’ is grounds for applying for such an extension of time. In Honest Reveira Moshinsky J found that:

   As a matter of principle, I consider that health issues affecting a person are capable of constituting circumstances beyond the person’s control for the purposes of reg 9.11(4) … Of course, whether or not health issues amount to circumstances beyond a person’s control is a question of fact to be determined in all the circumstances.[4]

   [3] [2018] FCA 1122 (Moshinsky J).

   [4] Ibid [57].

2. The Former Solicitor was a sole practitioner. Apposite therefore, is Moshisky J’s finding that:

   Further, as a matter of principle, in the case of a small company, I consider that it may be possible to establish circumstances beyond the control of the company by reference to the situation of a single individual. Much will depend on the facts and circumstances of the particular case.[5]

   [5] Ibid [58].

3. The Opponent’s written submissions contained some four pages of submissions under the heading ‘Exceptional Circumstances’. Those submissions did not specifically address whether the Former Solicitor’s Circumstances could constitute exceptional circumstances. There were submissions as to whether other circumstances, such as ‘changing of counsel and bringing the new counsel up to speed’, constituted exceptional circumstances but these are not the exceptional circumstances relied on by the Holder. Rather, the vast majority of the Opponent’s submissions under this heading related to whether the Former Solicitor’s Circumstances were the cause of the failure to file the evidence in answer in time—this causality will be considered below. Also included under the heading were submissions as to whether the extension was justified given other surrounding circumstances. Those submissions of the Opponent will be considered in relation to whether the extension is justified.

4. As a starting point, for the Former Solicitor’s Circumstances to be ‘exceptional circumstances which justify the extension’ there must be a causal link between those circumstances and the failure to file the evidence in answer in time (by 2 May 2021). On this point, in his 13 March 2021 ‘Statement by Applicant’s Solicitor’ made in support of the extension request, the Former Solicitor stated:

   The writer has been acting as [the Holder’s] legal representative in this proceeding since April 2020. …

   [The Holder] relies on me to attend to compliance with deadlines in this proceeding. I am a sole practitioner and I do not employ anyone else in my office.

   Owing to my condition and treatment received in January and February 2021, I was unable to comply with the filing of the evidence in reply (sic) …

5. In a similar vein, in his 4 October 2021 declaration, the Former Solicitor declared:

   The deterioration of my [medical condition] during October 2020 and the following months into 2021, compounded by COVID-19 also affected [my] ability to promptly assess the voluminous amount of evidence in opposition filed by the Opponent (3,200 pages) and its relevance to the opposition grounds and to undertake the work required to file evidence in answer within the timeframes specified by the regulations. [The Holder] relied upon me to attend to all compliance with all deadlines in this proceeding.

6. If the above statements are accepted on face value, there is an apparent causal link between the Former Solicitor’s Circumstances and the failure to file the evidence in answer in time. However, the main thrust of the Opponent’s submissions disputes this causal link. The first aspect of the Opponent’s submissions is that the Holder was aware of the health issues faced by the Former Solicitor and should have taken action at the time he became aware—the Opponent submitted:

   [While the Holder] and its new counsel assert that none of the delay has been [the Holder’s] fault, [the Holder] was—by his own admission—informed of [the Former Solicitor’s] health issues and of the second extension request at least as early as March 2021 … Yet [the Holder] waited until June 2021 to retain new counsel …

   Perhaps most significantly, however, [the Holder] has also engaged Dr Steven Stern, a barrister specialising in Intellectual Property Law at the Victorian Bar. According to Dr Stern’s professional profile at he is also a Registered Trade Mark Attorney and also lists his prior affiliation with [the Holder’s] current counsel, Stephens Lawyers and & Consultants, whom he characterises on his website CV as ‘a specialist boutique practice recognised as a leader in Intellectual Property’. …

   Dr Stern has been engaged/retained by [the Holder] since at least as early as April 2020 which is well before [the Holder’s] initial deadline to file its EIA. …

   Accordingly, the Opponent submits that there is no justifiable reason that a third extension be granted beyond the already extended 2 May 2021 deadline, particularly since (1) [the Holder’s] previous counsel disclosed his health conditions before this deadline … (2) [the Holder’s] team had access to the Opponent’s Evidence for over 8 months at that point, (3) [the Holder] had more than one legal adviser in Australia, with one being a barrister specialising in the field of Intellectual Property law who is moreover a Registered Trade Marks Attorney that has been advising [the Holder] since the reinstatement of the opposition proceedings, (4) once the issues with the Applicant’s previous counsel were alleged to be discovered, [the Holder] and his legal adviser/co-counsel, Dr Stern, delay in (a) engaging new co-counsel … and/or (b) at least filing another extension request by 2 May 2021, and (5) the retroactive third Extension of Time Request from 2 May 2021 was not filed until 16 July 2021, more than a month after [the Holder] engaged its new legal co-counsel on 11 June 2021.

7. The Opponent based its assertion that the Holder was aware of the Former Solicitor’s health issues from ‘at least as early as March 2021’ on the following statement made in Romanoff 1:

   On 23 March 2021, [the Former Solicitor], informed me and I believe that he had filed with IP Australia, a further extension of time to file evidence in answer for a period of 3 months, because of his [medical condition] and he also informed me that he had filed some evidence in answer on the 23 March 2021. [The Former Solicitor] did not inform me that further evidence in answer had to be filed by 2 May 2021.

   The statement in Romanoff 1 as to the date the Holder was informed of the Former Solicitor’s medical condition is corroborated by the statement in the Former Solicitor’s declaration that he did not disclose his condition to the Holder ‘until late March 2021’. The Former Solicitor’s reason for not disclosing his condition earlier was stated to be because he believed with treatment he ‘would be able to undertake the work required to prepare and file the evidence in answer’. That the Holder was aware of the Former Solicitor’s health issues by late March 2021 is accepted—specifically, 23 March 2021 is accepted as the date the Holder became aware.

8. The first thrust of the Opponent’s submissions is that having become aware of the health issues on 23 March 2021, the Holder should have sought ‘to retain new counsel’ at that time and having engaged new representation have filed its evidence in answer by 2 May 2021. It was also declared in Romanoff 1 that:

   A zoom meeting was requested with [the Former Solicitor] on the 29 April 2021. At the zoom meeting … [the Former Solicitor] discussed the current status of my matter and evidence required but did not inform me that evidence in answer had to be filed by 2 May 2021.

   Between on or about 30 April 2021 and 27 May 2021, I had no further communications from [the Former Solicitor] in relation to the progress of the matter. As we had not heard from [the Former Solicitor] despite leaving a number of text messages for him, we requested a zoom meeting with him.

   On or about 28 May 2021, I and my business partner … had a zoom meeting with [the Former Solicitor] and Dr Stern, barrister, during which I raised concerns about [the Former Solicitor] not responding to my communications with him in a timely manner and not undertaking the work required to progress the matter. At that meeting [the Former Solicitor] informed me and Dr Stern that … I should seek to engage new lawyers who have expertise in trade mark law to take over the Opposition proceedings on my behalf. …

   I engaged Stephens Lawyers to act on my behalf on 11 June 2021.

9. That the Holder did not engage Stephens until 11 Jun 2021 is adequately explained by the above. The Holder was justified in relying on an attorney that they had engaged to act for them in a timely and competent manner. On the basis of the representations made to the Holder by the Former Solicitor on 29 April it was reasonable for the Holder to assume that the Former Solicitor had matters in hand. Having been made aware that it needed to engage new representation, the Holder engaged Stephens within about two weeks—not an unreasonable length of time.

10. The second thrust of the Opponent’s submissions is that the filing of the evidence in support ought to have been handled by Dr Stern, who is described by the Opponent as ‘co-counsel’. These particular submissions are answered by the Stern declaration in which Dr Stern declared:

    I am a Barrister-at-Law, not a barrister and solicitor. As a barrister, I am a member of the Victorian Bar. …

    I conduct a ‘law practice’ for the purposes of the Legal Profession Uniform Law of Victoria and New South Wales.

    As a barrister, I must comply with the Legal Profession Uniform Conduct (Barristers) Rules 2015 (‘The Rules’).

    I accept briefs from solicitors and I do not accept instructions directly from persons that are not solicitors … I enter into costs agreements with solicitors in respect of work that I am briefed to undertake. I have no contractual arrangement with the solicitor’s clients.

    I do not take instructions directly from clients bypassing my instructing solicitors.

    Stephens Lawyers & Consultants has provided me with a copy of the Outline of Opponent’s Submissions filed in this matter, wherein the Opponent alleges that I was engaged by [the Holder] as ‘co-counsel’ with [the Former Solicitor]. I deny the allegation that I was engaged by [the Holder] as co-counsel. I also deny all the other allegations made by the Opponent against me. …

    When I receive a brief or instructions for a solicitor, I am not and cannot be ‘co-counsel’ with that solicitor. This is not permitted under the Rules. …

    I only learnt that [the Former Solicitor] had an ongoing medical condition that impacted upon his carriage of this matter after I was provided with a copy of [the Former Solicitor’s declaration]. [The Former Solicitor’s] medical condition … was not given to me as the reason why the matter was being transferred to another firm of solicitors.

    It is not the role of a barrister to monitor timelines for the filing of evidence. As a barrister I cannot be the address for service of documents and I cannot file evidence. The Rules specifically prohibit this.

11. It is clear that Dr Stern was prohibited from acting as ‘co-counsel’. Dr Stern was not ‘engage/retained’ by the Holder as suggested by the Opponent but rather was instructed by the Former Solicitor. The Holder was unable to rely on Dr Stern to file evidence on his behalf. The filing of evidence—the evidence in answer, in particular—was the responsibility of the Former Solicitor; this responsibility arising out of his having been engaged by the Holder to handle his matter.

12. It is reasonable (and usual) for a party to opposition proceedings to engage a solicitor, law firm, attorney firm, etc to handle their matter and to rely on that entity to handle their matter in a competent and timely manner. Where there are circumstances beyond the control of such an entity which prevents it from complying with a filing requirement under the relevant sub-division these are potentially ‘exceptional circumstances’ for the purposes of reg 17A.34K(2)(b). In the present matter, it was the Former Solicitor who was engaged by the Holder to handle their matter. The Former Solicitor was prevented from filing the evidence in answer in time by the Former Solicitor’s Circumstances. Further, I am satisfied that the Former Solicitor’s Circumstances are ‘exceptional circumstances’ for the purposes of reg 17A.34K(2)(b). The matter does not end there, however. It is necessary to decide whether those exceptional circumstances justify the extension.

    Do the exceptional circumstances justify the extension?

    40.     It is desirable that the Registrar has all available relevant material before her when making a decision. If an extension of time to file evidence allows relevant material to be before the Registrar which otherwise might not be before her, it is appropriate that there is a presumption that the exceptional circumstances justify the extension. However, there are factors such as the public interest in the expeditious finalisation of matters and the potential disadvantage to the other side which have the potential to override the presumption that the extension is justified. The Holder has filed documents which it classifies as its evidence in answer. That evidence was filed during the extension period under consideration here. No further application for an extension of time to file evidence in answer is expected.

13. The Opponent made a number of submissions which go to the question of whether the exceptional circumstances justify the extension. It was submitted:

    [The Holder] has already been granted extraordinary lenience. Specifically, the Office has (1) revived its lapsed application after granting an extension of time to file the Notice of Intention to Defend, (2) already extended [the Holder’s time to] file its EIA twice, with one of the extension being filed out of time, and (3) disregarded the filing of a document which has been characterised, referred to, intended to be, and filed as the Applicant’s EIA. Despite this and having engaged legal counsel, including a competent Australian intellectual property barrister and Registered Trade Marks Attorney, throughout these proceedings, [the Holder] is still asking for a third Extension of Time Request, file two and a half months out of time.

14. A number of the Opponent’s submissions refer to applications for extensions of time in this matter as being ‘filed out of time’ and ‘filed late’. In this regard the Opponent referred me to the case of O’Mahoney v Intencity Pty Ltd.[6] That case concerned an application for an extension of time to serve evidence in support. The application was made under reg 5.15 as it was at the time. That case is of little assistance to the Opponent. The delegate in that matter appears to have formed the view that the extension application was ‘late’ although, in my view, there does not appear to be a sound basis for that finding.

    [6] [1997] ATMO 67 (Forno).

15. There are a number of provisions in the current regulations which concern applications for extensions of time. For example, reg 17A.34C allows a potential opponent to request an extension of time for filing a notice of intention to oppose or a statement of grounds and particulars, including, ‘within the period for filing the document in question’. Regulation 17A.34D concerns consideration of the grant of such an extension, and states that:

    [I]f the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request.

16. Similarly, reg 17A.34HA allows a holder to apply for an extension of time for filing a notice of intention to defend. For such an application, ‘The application must be made before the end of the period of 2 months beginning on the day after the end of the period mentioned in sub-regulation 17A.34H(1)’. In considering the application reg 17A.34HB states:

    [I]f the application is made after the period mentioned in sub-regulation 17A.34H(1) has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the application.

17. In respect of applications for the extensions of time just discussed, there is a clear concept of what a ‘late’ application is. However, in the case of an extension request under reg 17A.34K there is no specified period in which the request should be made. Neither is there an associated regulation—such as reg 17A.34D or reg 17A.34HB—which concerns consideration of the request and factors surrounding when the request was filed. Neither does reg 17A.34K refer to this factor. It is my view, therefore, that in respect of applications for extensions under reg 17A.34K there is no such thing as a ‘late’ extension request or a request which is filed ‘out of time’. While an application for an extension of time to file evidence might be made within the period allowed for doing so, or after the period for filing evidence, the fact that it was filed after the period for filing evidence does not mean that it was filed ‘late’ or ‘out of time’. Nevertheless, when a request for an extension of time to file evidence is made is a factor in determining whether the extension is justified.

18. The extension request under consideration here was filed on 16 July 2021. This is some two and a half months after the end of the period for filing the evidence in answer (as extended by the second extension request). In the normal course of events this would be a significant delay; however, the extension request was filed by Stephens who, because of the exceptional circumstances discussed above, were appointed by the Holder on 11 June 2021. This means that the extension request was filed some six and a half weeks after Stephens were appointed. The Opponent submitted that ‘There is no explanation in Romanoff as to why [the Holder’s] new legal co-counsel did not file an extension of time request until 16 July 2021’. In the circumstances surrounding this case, for Stephens to become familiar with the case, assess some 3,200 pages of evidence in support, determine whether it was necessary to file evidence in answer, and, having decided that it was, obtained instructions to do so, then filed a request for an extension of time to file that evidence, all within six and half weeks since it was appointed by the Holder is far from an unreasonable period of time. I note that the Holder’s evidence in answer was eventually filed by 9 August 2021—within two months of Stephens being appointed. A representative would normally have three months to do this. This relatively short delay by Stephens is not a factor which supports a conclusion that the exceptional circumstances do not justify the extension.

19. Given the circumstances of this case, I am satisfied that granting the extension is justified. No further delay to this matter is expected as a result of granting the request, and the Registrar will have the benefit of the Holder’s evidence in answer should she eventually have to decide the opposition to extension of protection.

    Decision

    48.     I am satisfied that there are exceptional circumstances that justify the requested extension of time for the Holder to file his evidence in answer. Accordingly, I grant the extension request. The parties will be notified in due course of the period for the Opponent to file its evidence in reply.

    Costs

    49.     The Holder has sought an award of costs in his favour. I see no reason to depart from the general rule that costs follow the event. As the Holder has been successful in obtaining the extension requested, I award costs against the Opponent under s 221 as per Schedule 8 of the Trade Marks Regulations 1995.

    Robert Wilson
    Hearing Officer
    Trade Mark and Designs Hearings
    5 April 2022