Fed Square Pty Ltd v Federation IP Pty Ltd - [2015] ATMO 42

TRADE MARKS ACT 1995

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

Re:Opposition by FED SQUARE PTY LTD to registration of trade mark applications 1530330 FEDERATION CENTRES (AND DEVICE) and 1530335 FEDERATION CENTRES (35, 36, 37, 39, 40, 41, 42, 43, 44 and 45) - in the name of FEDERATION IP PTY LTD.

Delegate:	Heath Wilson
Representation:	Opponent: Ben Fitzpatrick of Counsel instructed by DLA Piper. Applicant: Susan Gatford of Counsel instructed by Clayton Utz.
Decision:	2015 ATMO 42 Applications for an extension of time under regulation 5.15 of the Trade Marks Regulations 1995 – extension of time refused – Regulation 21.19 applied.

Background

This matter concerns an application for extension of time in two trade mark opposition matters to provide evidence in support under regulation 5.15 of the Trade Marks Regulations 1995 (‘the Regulations’). As it will become relevant to the overall determination I will set out the procedural history to this matter below.
On 7 December 2012, CRL IP Holdings Pty Ltd applied to register the following two trade marks (‘the Trade Marks’):

TM No.	Trade Mark	Classes of Services
1530330	Various services in classes 35, 36, 37, 39, 40, 41, 42, 43, 44, and 45
1530335	FEDERATION CENTRES	Various services in classes 35, 36, 37, 39, 40, 41, 42, 43, 44, and 45

Examination of the Trade Marks followed and they were both advertised as accepted in the Australian Official Journal of Trade Marks on 29 August 2013.
Two months later, on 29 October 2013, notices of intention to oppose the Trade Marks were filed by Fed Square Pty Ltd (‘the Opponent’). A statement of grounds and particulars followed from the Opponent, particularising grounds of opposition under sections 42(b), 43, 44, 58, 59, 60 and 62A of the Trade Marks Act 1995 (‘the Act’).
Notices of Intention to Defend were filed by CRL IP Holdings Pty Ltd on 11 February 2014. The evidence stages commenced with evidence in support of the opposition being due on 13 May 2014.
On 12 May 2014, the Opponent applied for extensions of time of one month in which to file the evidence for each opposition. The reasons given for the extensions of time were brief and can be summarised as follows: the voluminous nature of the material that had been gathered to date, the difficulties in locating evidence with some of it as old as fifteen years, and the fact that a draft affidavit had then been prepared and forwarded to the Opponent for review. At that stage, the final affidavit was anticipated to be filed with IP Australia within the next 10 working days.
On 15 May 2014, a Delegate of IP Australia wrote to the Opponent indicating an intention to refuse the applications for extensions of time setting out the relevant parts of the Regulations. The Delegate wrote:
It is essential that the party seeking the extension presents sufficient information to justify the extension. Although you have explained what has been done recently in the way of preparation of evidence and what had delayed the opponent providing you with its material, there is no information about what actions and when actions were taken during the earlier part of the statutory period.
A timeline outlining the steps and actions taken in the preparation of evidence during the whole statutory timeframe would assist in demonstrating whether the extension applicant has acted promptly and diligently at all times.
The Opponent replied on 20 May 2014 stating that (in line with the timeframe anticipated by the Opponent in its prior correspondence) the evidence in support had now been electronically filed. The response also referred to the parties being engaged in negotiations since the Trade Marks were under examination, but those negotiations had failed.
According to the Opponent’s letter of 20 May, it was not until 17 April 2014 when CRL IP Holdings declined a further settlement offer that the Opponent commenced preparation of its evidence of use. As I will set out later, it was at this time that the Opponent encountered further problems with its evidence gathering.
On 23 May 2014, CRL IP Holdings Pty Ltd requested that the recorded owner’s name for the Trade Marks be changed to Federation IP Pty Ltd. CRL IP Holdings Pty Ltd or Federation IP Pty Ltd will be referred to as ‘the Applicant’ throughout the remainder of this decision.
IP Australia subsequently wrote to the parties on 6 June 2014 indicating to the Opponent the intention to refuse the extensions of time unless the Opponent requested a hearing before 17 June 2014. The delegate again referred to the appropriate Regulations and noted that the preparation of the evidence did not commence until three weeks prior to the deadline and that the Opponent appeared to have taken no action to prepare its evidence in support for two months. Neither were the aforementioned negotiations considered to be exceptional circumstances supporting the grant of the extensions sought.
On 17 June 2014, the Opponent requested a hearing. On 4 July, the Applicant also requested to be heard, paying the appropriate hearing fee. The Opponent ultimately filed two statutory declarations and two sets of written submissions. The first declaration is that of Robynne Sanders dated 11 July 2014. The first set of written submissions concerned the application under regulation 5.15 and the second set referred to an application for the Registrar to consider the same material under paragraph 21.19 of the Regulations.
The hearing on the extension of time matter was set down for 18 July 2014 in Melbourne.
The afternoon before the hearing, the Opponent filed additional evidence regarding the extension of time applications being the second statutory declaration of Robynne Sanders dated 17 July 2014. I heard the matter as a delegate of the Registrar of Trade Marks. Ben Fitzpatrick of Counsel appeared on behalf of the Opponent instructed by Robynne Sanders of DLA Piper. The Applicant was represented by Susan Gatford of Counsel instructed by Clayton Utz. Part of the hearing concerned whether Sanders 2 should be admissible due to its lateness and the fact that some reasons for the extensions of time had already been given. After hearing submissions from both Ms Gatford and Mr Fitzpatrick, I decided to allow the evidence to form part of the considerations before me.
In the matter of MG Icon LLC v Caprice Australia Pty Ltd [2014] ATMO 34 (‘MG Icon’), the delegate found it appropriate to base her decision on all the information available. That particular case was the first extension of time matter considered under the new Regulations. My decision to allow the further material is additionally based on a number of other considerations. An application for an extension of time is essentially a matter between the Registrar of Trade Marks and the person requesting the extension. While the Applicant in this case certainly has the right to be heard and make representations (as it has done), it does not have to rebut the Opponent’s case for the application to be refused and this particular matter would have proceeded to hearing regardless of the Applicant’s involvement. Sanders 2 is four pages long simply elaborating on the brief reasons previously given. Furthermore, if there are inconsistencies between the materials given in Sanders 2 and the earlier material that is a matter for the Registrar. I did not perceive any inconsistencies, nor were any brought to my attention.
At the hearing I was satisfied that the representatives for the Applicant had sufficient time to consider the material within Sanders 2 and were ready to proceed. Considering the above factors, I was not convinced that the Applicant was disadvantaged by admitting Sanders 2 into proceedings and I found it reasonable to decide the matter taking that material into account.

Written Material on the Record

Initial reasons for the extension of time application given on 12 and 20 May 2014.
Opponent’s written submissions dated 8 July 2014 on the extension of time application under regulation 5.15.
Statutory declaration of Robynne Sanders dated 11 July 2014 (‘Sanders 1’) and the opponent’s written submissions on regulation 21.19.
Applicant’s written submissions dated 15 July 2014 on the application of regulation 5.15.
Applicant’s written submissions dated 17 July 2014 on regulation 21.19.
Statutory declaration of Robynne Sanders dated 17 July 2014 (‘Sanders 2’)

The Law

The relevant parts of the Regulations were introduced by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1)[1]:
[1] The changes to the Regulations were given effect from 15 April 2013.

5.15Extension 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.

At the hearing of the matter, Mr Fitzpatrick made it clear that the Opponent would not be pursuing the argument that there were exceptional circumstances justifying the extension of time applications. As a result, regulation 5.15(2)(b) is not relevant to these proceedings and the issue to be decided was whether the Opponent had made all reasonable efforts to comply with the filing requirements and despite acting promptly and diligently at all times to ensure the filing of the evidence was unable to comply with those requirements.
For completeness, I will now set out a chronology of the relevant events. While I note that some of this information is gathered from the Opponent’s written submissions rather than from a statutory declaration, the Registrar does not require that the reasons be in a specific form in order to be considered. For completeness, there was no cause to doubt the veracity of the information provided to me.

Chronology of Events

14 January 2013 - Opponent’s legal representatives write to the Applicant. Settlement discussions take place for a period of months.
29 October 2013 – Settlement negotiations fail and Notices of Intention to Oppose are filed for the Trade Marks.
29 November 2013 - Statements of Grounds and Particulars are filed.
January 2014 – A new Chief Executive Officer commences with the Opponent.
3 February 2014 – Notices of Intention to Defend filed.
13 February 2014 – IP Australia sends notification to the Opponent advising that the deadline for filing evidence in support is 13 May 2014.
14 February 2014 – Ms Sanders and solicitor handling the matter under supervision were involved in a Federal Court trial in Sydney.
17-21 February 2014 – Ms Sanders is on annual leave and a draft checklist of information for the Opponent is prepared.
26 February 2014 – A checklist and advice referring to the deadline was sent to the Opponent.
18 March 2014 – CEO of the Opponent requests a meeting with Ms Sanders.
20 March 2014 – Ms Sanders meets with the CEO and outlines the history of the matter. The CEO decides to again pursue commercial settlement. If not possible, he would instruct the preparation of the evidence in support. It was estimated that the total expected period to complete the evidence would be two weeks. The Opponent’s instructions were that evidence was not to be prepared until after contact with the Applicant had been made.
3 April 2014 – Ms Sanders attempted to contact the Applicant’s legal representatives by telephone, without success.
10 April 2014 – Contact made and instructions sought from the Applicant.
17 April 2014 – The Opponent received correspondence from the Applicant responding to the settlement offer. Preparation of the Opponent’s evidence commenced. The Opponent’s representative diarised to contact the Opponent on 30 April 2014 (but no indication that contact was made with the Opponent on that date).
6 May 2014 – Email received from the Opponent to Ms Sanders with electronic links to third party material and advice that other documents would be provided in hard copy.
7 May 2014 – Legal representatives received the hard copy of the documents being around 200 pages with a CD.
9 May 2014 – Email from Opponent’s representatives requesting further information from the Opponent.
12 May 2014 – The further information is provided to the Opponent’s representatives (475 documents). Declarations were amended as it was decided that the Manager (Marketing and Program) was the appropriate person to make a declaration. Applications for an extension of time for one month to file evidence in support were filed with the office. The statutory declaration had been drafted and forwarded to the Opponent for review.
13 May 2014 – Evidence in Support due to be filed.
15 May 2014 – Senior Examiner at IP Australia writes to the parties indicating the view that it is not appropriate to grant the extensions of time. The Opponent is given 14 days to provide further reasons.
20 May 2014 – All Evidence in Support is filed electronically with IP Australia using Objective Connect[2]. The Opponent provides further reasons to support the applications for the extensions of time.
6 June 2014 - IP Australia writes to the parties indicating an intention to refuse the extensions of time if a hearing is not requested.
[2] Objective Connect is IP Australia’s cloud based computer application enabling users to share evidence in an opposition proceeding.

Regarding the first part of Regulation 5.15(2)(a)(i) there is little to instruct me (as the opposition is in its early stages) as to whether the Opponent has made all reasonable efforts to comply with all relevant filing requirements. Putting aside the filing of the evidence in support, I am satisfied that the Opponent has made all reasonable efforts to comply with other filing requirements including the timely filing of the notices of intention to oppose and the statements of grounds and particulars.
Under regulation 5.15(2)(a)(ii), the determinative issue is whether the Opponent was unable to file its evidence in support despite acting promptly and diligently at all times. If the Opponent cannot establish that element of 5.15(2), a finding that it has otherwise complied with 5.15(2)(a)(i) will not be sufficient for the grant of the extension.

‘Acting promptly and diligently at all times’

The current practice of the Trade Marks Office in determining whether a party has acted promptly and diligently at all times is to critically analyse a chronology of events in the relevant period. There is an inherent risk that this approach may paint an artificial picture somewhat at odds with the business realities for parties and legal representatives in trade mark oppositions. Most chronologies are likely to reveal gaps where no (or very little) action has been taken to gather or prepare evidence. However, the presence of these gaps is not necessarily determinative. In the decision of Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd,[3] the delegate of the Commissioner of Patents commented with regard to the identical wording in patent extension of time provisions:
An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently. The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, how it was done, by whom it was done, as appropriate to the case) covering the period in question.
[3] Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd [2013] APO 57 at [76].
A bald interpretation of the wording ‘at all times’ in the Regulations may create unrealistic expectations. However, the above comments[4] show the intent of the provisions is to create a more rigorous requirement, not an unattainable one. The answer to the determination lies in a consideration of all the facts and circumstances of a particular case. Acting to ensure the prompt filing of evidence means that the relevant actions should have some connection to the filing of the evidence, but do not necessarily have to be the physical act of gathering and compiling that evidence. It may for example, include discussions between a party and its representative relating to the requirements for the evidence. However, lengthy delays that are unexplained (or are supported by actions which are not designed to ensure the prompt filing of evidence) will not assist.
[4] Also see the Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1).
Taking into account the actions of the Opponent set out above, in the first month of the three month period allowed for gathering and preparing evidence, a checklist had been prepared for the Opponent. In fact, it was not until 20 March 2014, that the Opponent’s legal representative had a first meeting with the Opponent. There is no evidence of any activity from 26 February (when the checklist was sent) to 20 March 2014 (when the meeting occurred).
A further proposition from the Opponent is that it took time for the new CEO of the Opponent to familiarize himself with the Opponent’s business due to its complex and multi-faceted nature. This proposition may be accepted, however, I also note that the CEO commenced with the Opponent in January of that year and the meeting with the representative took place on 20 March. The Opponent’s submissions omit an explanation of why it took almost a month from sending the checklist for a first meeting to occur.
The delay in discussing the matter with the Opponent is not assisted by the fact that the Opponent’s CEO was not, at that point, aware of the history of the oppositions. As a result, legal advice is again given to the Opponent regarding deadlines and the background of the oppositions. The instructions from the CEO are to the effect to once again seek commercial settlement with the Applicant but it is worth mentioning that the Opponent had concerns about complying with the deadlines for filing its evidence in support.
Nevertheless, a decision was made to further delay any gathering of evidence while pursuing the settlement option. It has been said that negotiating with the other party will not by itself be a reason to justify the grant of an extension of time under the new provisions[5]. The Opponent has cited the patent decisions of Shelford Services Pty Limited v Baylor Research Institute[6] and Innovia Security Pty Ltd v De La Rue International Limited[7] in support of the proposition that delaying the cost of preparing evidence to seek resolution by other means may be reasonable. No doubt in certain circumstances it may be preferable to seek a commercial settlement rather than undertake lengthy evidence preparation. However, in both of the above cases, the comments in relation to cost mitigation are on the basis that the party was still awaiting the filing of either evidence in support, or evidence in reply. Those facts are not analogous to the facts before me. In contrast, the Opponent was in the middle of the period for preparing its own evidence in support and settlement negotiations had previously been attempted with the Applicant and failed.
[5] See Item 11 of the Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1)
[6] Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20 at [18].
[7] Innovia Security Pty Ltd v De La Rue International Limited [2014] APO 46 at [17].

The CEO of the Opponent was given an estimate that the material on the checklist could be obtained from its employees within a period of a couple of days. Ms Sanders also estimated that 3 to 5 days would be required to prepare and finalise the declaration forming the evidence in support – making a total of two weeks to prepare all of the evidence and file it.
In relation to the latter estimate, Sanders 2 provides personal information about Ms Sanders and her experience as a solicitor and Trade Marks attorney, including her experience in trade mark oppositions and infringement actions before the Federal Court. As a result of that experience Ms Sanders is aware of the time necessary to prepare statutory declarations and affirms her initial estimation of three to five days to finalise the Opponent’s evidence.
However, by the time all of the evidence was actually received by Ms Sanders on 12 May 2014 there remained a day in which to finalise the declaration and the remainder of the evidence. The time estimated to the Opponent turned out to be insufficient given the form (hard copies and electronic links), the size (over 200 pages of material) and the fact that some of the requested material was initially missing.
Once the evidence was filed on 19 May 2014, the exhibits to the Opponent’s declarations amounted to approximately 1300 pages. Scanning all the exhibits separately and combining them in an electronic document created further delays for the Opponent. However, the difficulties encountered with regard to the evidence would not be unusual for opposition proceedings and are likely to have been foreseeable with background knowledge of the Opponent’s business history. A party will not always provide evidence requested by its attorneys in the most accessible or appropriate form and some allowance should be made for such eventualities. Had the preparation for the evidence in support commenced at least a week earlier they would simply not be obstacles to filing the evidence in support by the due date. In other words, the problems with the evidence could have been remedied had the Opponent acted promptly and diligently at all times. Furthermore, the other difficulties encountered with scanning and filing the evidence onto Objective Connect took place after the deadline for filing the evidence had already passed.
This is not a matter where the Opponent or its representative was unaware or unclear as to the deadlines for filing the evidence in support. On the contrary, the Opponent’s representative declares that the relevant deadlines were recorded in its office database. There was a substantial delay at the beginning of the period and a conscious decision was made in the second month by the Opponent to delay all activities relating to the preparation of evidence while negotiations were again attempted. The flurry of activity required in early May was simply insufficient to overcome the lateness of the material and any deficiencies that arose. If I were to simply consider whether the Opponent acted promptly and diligently at all times in the final week and a half of the three month period, I would be satisfied that the requirement was made out. Furthermore, I have no doubt that the Opponent’s legal representative has expended significant office resources in preparing the evidence. The explanation provided by Ms Sanders makes that clear. Despite that, the requirements of the new extension of time regulations are explicit. I must decide whether the failure to file the evidence in the period occurred despite the Opponent acting promptly and diligently. On the facts before me, I cannot be satisfied that it was. Accordingly, I refuse the applications to grant the extension of time under 5.15 of the Regulations.
As foreshadowed, the Opponent also applied prior to the hearing for the admission of the same evidence to be considered under the provisions of reg 21.19.
Regulation 21.19 provides:

21.19Registrar may use information available
(1)If:
(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c)the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:
(d)provide the information to the party; and
(e)give the party a reasonable opportunity to make representations about the information.

(2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

Regulation 21.19 has been present as it appears in the Regulations since the commencement of the Trade Marks Regulations 1995 (Cth). The application of 21.19 is discretionary, allowing the Registrar of Trade Marks on her own initiative to take into account information available to her, but it does not require the Registrar to do so. A party cannot compel the Registrar in this regard. In addition, it is not sufficient to highlight that the material is relevant to proceedings - the Registrar still has to decide whether or not to take the information into account in making the substantive decision.
Historically, regulation 21.19 has been utilized by delegates of the Registrar to take into account information provided at examination that was not served for opposition purposes,[8] or for material arising from notices to produce[9] and other information the delegate became aware of that was pertinent to the proceedings[10]. In essence, the applicability of regulation 21.19 is not limited in the type of material it may allow into proceedings. Neither is the regulation limited to a particular point at which it may be considered, although it has ordinarily been applied by the delegate at around the time the substantive opposition matter is heard and after the other party has had an opportunity to respond.
[8] Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80.
[9] Lodestar Anstalt v Austin, Nichols & Co Inc [2009] ATMO 38; (2009) 82 IPR 308.
[10] Davide Campari-Milano SpA v Perfection Fresh Australia Pty Ltd [2008] ATMO 53.
At the hearing, Ms Gatford aptly described regulation 21.19 in the following terms:
The Regulation is, in effect, a guarantee of procedural fairness. It aims to ensure that relevant information which is known to the Registrar but not to one of the parties is not relied on in making a decision unless and until that party has been given a reasonable opportunity to make representations about the information.
Under the current legislation, where there are no further evidence provisions, there is reduced evidence in reply stage and there are more rigorous requirements for extensions of time, it was anticipated that regulation 21.19 may play a different role in trade mark oppositions than it had in the past. I refer to the particular wording in the Explanatory Statement to the ‘Raising the Bar’ amendments[11] which states (my emphasis):
Current regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. Following the restructuring of the Trade Marks Regulations by item 11, the Registrar will still have the discretion to consider whether the information is relevant and whether it should be taken into account. However, it is not intended that the provisions of current regulation 21.19 be used as a substitute for the repealed further evidence provisions.
[11] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) page 29.
I also note that the Trade Marks Office Manual of Practice and Procedure (‘the Manual’) may, on first inspection, appear to contradict the final sentence above:
PLEASE NOTE: Further evidence is only applicable to opposition proceedings commenced before 15 April 2013 by filing a notice of opposition. For oppositions commenced on or after 15 April 2013, the provisions of reg 21.19 – ‘Registrar may use information available’ may apply in some circumstances.[12]
[12] Part 51.1.4 of the Manual.
The clear intention is that Regulation 21.19 should not been interpreted as a substitute for the repealed further evidence provisions. The fact that prior to the ‘Raising the Bar’ amendments Regulation 21.19 existed concurrently with the further evidence provisions affirms that the original intent of the regulation was to stand apart from the regular evidence stages of the opposition. Parties should not assume an entitlement to the application of Regulation 21.19 and the presence of an evidence stage appropriate for that material will not assist the party applying.
In the current matter, I am not considering evidence that may have been relevant under the repealed further evidence provisions. Instead I am being asked to exercise the discretion and allow precisely the same evidence under reg 21.19 that has failed the requirements under the extension of time provisions for evidence in support.
The Opponent argued that there was an absence of case law on how to deal with situations such as the one before me where the repealed further evidence provisions do not apply. The decisions from the Trade Marks Office previously applying regulation 21.19 occurred within a system that allowed other opportunities to provide material.[13]
[13] E.g. the MG Icon decision (while not concerned with the application of reg 21.19), was an instance where, despite the refusal of an application for an extension of time, the further evidence provisions were still available.

The effect of not applying regulation 21.19:

Mr Fitzpatrick made submissions regarding the fact that not allowing the material into proceedings in the current matter would result in a truncated opposition and would not address the main bases for the opposition to registration of the Trade Marks. It is possible that the oppositions may succeed under section 44 based on the trade marks cited in the statements of grounds and particulars. However, it is extremely unlikely that the other grounds of opposition, being those corresponding to sections 42(b), 43, 58, 59, 60 and 62A of the Act could be established on the basis of the statements of grounds and particulars and written submissions alone.
As a result, the likely eventuality of not allowing the material to be considered in the proceedings is that the opposition proceeds under the section 44 ground of opposition, and in the event the Opponent is unsuccessful, it must appeal to the Federal Court to have the matter decided on whatever grounds and evidence it then formally relies on. Alternatively, the opposition may be withdrawn and the Opponent is still forced to prosecute the matter through the courts. Of course this is a risk that all parties take if they fail to submit their evidence by the due date. On these facts not allowing the material to be considered seems to be at odds with the broader purpose of the relevant ‘Raising the Bar’ amendments, which were to “reduce delays in the resolution of patent and trade marks applications” and to “streamline the opposition process”[14].
[14] See the Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1).
In her closing submissions Ms Gatford requested that if it is decided that 21.19 is not applicable, a formal notation should be made on both of the files to the effect that the two declarations and associated exhibits which would have comprised the Opponent’s evidence in support are not to be considered by a delegate allocated to determine the oppositions.
That request is most likely made in light of the fact that in the event the Applicant files evidence in answer, the Opponent still has the benefit of the two month period for the filing of its evidence in reply. If the Opponent attempts to file its erstwhile evidence in support as evidence in reply, I note that the Manual provides “by definition such evidence must be limited to issues raised in the evidence in answer.” However, it is equally true that the Registrar is not bound by the rules of evidence. Regulation 21.15(4) provides:
The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.
Upon objection by the Applicant, I am of the view that such evidence would likely not be taken into account in light of a possible scenario where a prior hearing had refused to extend the time for filing the same material under regulation 5.15 and also refused to take it into account under Regulation 21.19.
The factors below are relevant to a consideration of the public interest in allowing the Opponent’s evidence into proceedings under Regulation 21.19. In allowing an extension of time under the previous extension of time provisions Hearing Officer Murray in Seven Network (Operations) Limited v Giorgio Armani S.P.A., Milan, Swiss Branch Mendrisio[15] commented:
It is clearly desirable that unnecessarily protracted opposition proceedings be curtailed by these recent changes to our legislation. However, 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, has not been diminished by these changes. It cannot but remain a potent factor to be weighed into the balance whenever a delegate exercises discretion under the legislation that has the potential to exclude evidence critical to an opposition outcome.
[15] Seven Network (Operations) Limited v Giorgio Armani S.P.A., Milan, Swiss Branch Mendrisio [2013] ATMO 70 at [16].
The final sentence above is a reference to comments made by Hearing Officer Homann in the 1992 decision of Studio SrL v Buying Systems (Aust) Pty Ltd[16]:
The effect of refusing an application for special leave may therefore be to force an unsuccessful party to the opposition before the Registrar into an appeal to the court where the evidence, if admissible, would not be excluded. Obviously it would be preferable for the matter to be finally decided by the Registrar if the admission of further evidence would allow this to be done.
[16] Studio SrL v Buying Systems (Aust) Pty Ltd [1992] AIPC 90-858.
In order to determine whether or not to take information into account under Reg 21.19 it is necessary for an administrative decision maker to consider the nature and significance of the evidence put forward. If that material is of high probative value, that will be a crucial factor in the determination of whether it should be admitted.
The Opponent’s evidence is immediately available (having been filed seven days after the due date) and constitutes the primary basis for the oppositions to the Trade Marks. It consists of the statutory declaration of William Andrew Blakeney made 19 May 2014 with exhibits WAB-1 to WAB-9 and the statutory declaration of Jane Sydenham-Clarke made 19 May 2013 with attached exhibits JSC-1 to JSC-17. A brief analysis of the evidence reveals that the contents of those declarations contain details of the Opponent’s use of, and the reputation of, its trade marks in Australia. As such, I find that the material is of high probative value and is likely to significantly affect the outcome of the substantive opposition in contrast to an opposition run without it.
The options for parties in oppositions such as the one before me are limited. However, the intent of the ‘Raising the Bar’ amendments cannot be to entirely shut out oppositions where there is a serious issue to be heard, the evidence is of high probative value, submitted shortly after the due date and is immediately available to the Registrar and the other side.
Although each case is decided on its own circumstances, in this matter the public interest in hearing the opposition on its merits and the intent of the legislative changes in resolving oppositions efficiently outweighs the inconvenience to the party and the danger of circumventing the conventional evidence process. On the latter issue, I make the following comments.

A cautionary note in the application of 21.19:

Parties should not attempt to circumvent the extension of time provisions under the misguided assumption that Regulation 21.19 will apply in every case. Furthermore, while it is available to parties, it is clear that Regulation 21.19 should not be perceived or used as a substitute for the now repealed provisions allowing for the filing of further evidence (or, indeed any available evidence stage). Ms Gatford referred to the decision of Tourism Queensland v Dectar Pty Ltd[17] which highlights that reg 21.19 is discretionary and which indicates the risks that a party may bear in relying on it in lieu of the evidence process:
In relation to application number 744853, a letter was sent by the applicant's attorney to the TMO dated 16 December 1999. The letter requested that the evidence of use filed in support of application number 744853 be applied to the current application. It appears from the file that it was. However, no copies of that other file appear on the current file, nor did the applicant serve this material once the opposition had commenced. Accordingly, the material is not before me as decision maker. Regulation 21.19 of the Trade Marks Regulations1995 allows me to take into account information that is not known to a party to the proceedings, but it does not require me to do so. In particular, I do not believe it is incumbent upon me as a decision-maker to make out the case for an applicant. There is a clear procedure laid down in Part 5 of the Regulations for the service of evidence and conduct of hearings generally. The applicant had every opportunity to serve and file evidence, but chose not to do so. In fact, the applicant filed a notice pursuant to Regulation 5.11(1) to the effect that it did not intend to rely on evidence in answer, on 7 February 2001. It did so at its own peril. [Emphasis added]
[17] Tourism Queensland v Dectar Pty Ltd [2001] ATMO 66
The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account. In the current matter and for the reasons set out earlier I am satisfied that they have been in this case.
I am further satisfied under Regulation 21.19 that the Applicant has been provided with the material consisting of the two declarations and associated exhibits via Objective Connect. The reasonable opportunity to provide representations about that evidence will be afforded to the Applicant via the provision of the Applicant’s evidence in answer. The material itself complies with regulation 21.17 in that it is provided in the form of a declaration and should be accorded appropriate weight in the ultimate consideration of the matter, but I find that as it has been provided outside the evidence stages and it is not ‘evidence in support’ for costs purposes.
I apply the provisions of Regulation 21.19 and allow the Opponent’s material to be considered in the determination of the substantive opposition.

Decision

The extension of time under regulation 5.15 has been refused. Under regulation 21.19 I allow the material comprising the Opponent’s intended evidence in support to be considered by the Registrar in making her decision on the substantive opposition. For the avoidance of doubt that material is detailed in paragraph 51 of this decision.

Accordingly, the Applicant’s evidence in answer is due three months from the date of this decision.

Costs

In the majority of hearings, costs ordinarily follow the event. However, the request for the hearing was on the basis of the extension of time under regulation 5.15. In that respect, the Opponent has been unsuccessful. It was seven days before the hearing that the Opponent elected to argue for the application of regulation 21.19.
Considering the above circumstances, and noting that an award of costs is discretionary (see section 221(1) of the Act), I award costs against the Opponent in relation to the fee for requesting a hearing, preparation of the case for hearing and attendance at the hearing by counsel in accordance with Schedule 8 of the Regulations.

Heath Wilson
Hearing Officer
Trade Marks Hearings & Opposition
15 May 2015