Golden Buffalo Group Pty Ltd v Posh Lifestyle Pte Pty Ltd

[2022] ATMO 104

TRADE MARKS ACT 1995

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

Re:Request by Posh Lifestyle Pte Pty Ltd for an extension of time to file a Notice of Intention to Defend in the opposition by Golden Buffalo Group Pty Ltd to registration of trade mark application number 2127353 (class 43) – Pho Ly Quoc Su – in the name of Posh Lifestyle Pte Pty Ltd.

Delegate:	Nicholas Barbey
Representation:	Opponent: Maygust Trademark Attorneys Applicant: Aitken Partners
Decision:	2022 ATMO 104 Trade Marks Regulations 1995 (Cth) – application for an extension of time to file a notice of intention to defend under reg 5.13A – error or omission not established – circumstances beyond the control of the person not established – extension of time refused.

Background

1. This decision concerns an application made by Posh Lifestyle Pte Pty Ltd (‘Applicant’) for an Extension of Time (‘EOT’) to file a Notice of Intention to Defend (‘NID’) in the opposition to registration of the mark which is the subject of Australian trade mark application 2127353.

2. Acceptance of the application was opposed by Golden Buffalo Group Pty Ltd (‘Opponent’) and the Applicant was given a copy of the Opponent’s Statement of Grounds and Particulars (‘SGP’) on 8 June 2021. In accordance with reg 5.13(1) of the Trade Mark Regulations 1995 (Cth) (‘Regulations’), this set a one month deadline for the Applicant to file a NID – namely, 8 July 2021 (‘Deadline’).

3. The Applicant, who was self-represented at the time, applied for an EOT on 14 July 2021 to extend the period for filing the NID by one month (‘Request’). The Request attached a declaration by Hoang Lam Nguyen, director of the Applicant, made on 14 July 2021 (‘Nguyen 1’). The Applicant subsequently filed a NID on 28 July 2021 as well as a document contesting a ground of opposition nominated in the SGP (‘Query’).

4. On 22 November 2021, a delegate of the Registrar of Trade Marks (‘Registrar’) sent correspondence to the Applicant seeking further particulars in relation to the Request. The delegate explained that Nguyen 1 was blank and ‘a full and frank explanation of the circumstances leading up to the late filing of the NID’ was required in order to assess the Request. In response, the Applicant re-filed the NID it lodged on 28 July 2021 as well as a declaration by Hoang Lam Nguyen made on 2 December 2021 which essentially reproduced the content of the Query (‘Nguyen 2’).

5. On 13 December 2021, a delegate of the Registrar advised the Applicant of their intention to refuse the Request because Nguyen 2 did not shed any probative information as to why the Deadline was not complied with. The delegate provided the Applicant with an opportunity to lodge a supplementary declaration explaining why the NID was not filed by the Deadline. Otherwise, the Applicant could request to be heard. The delegate cautioned that the Request would be refused and the application would lapse if neither option was pursued.[1]

   [1] Trade Marks Act 1995 (Cth) s 54A.

6. The Applicant responded by filing a supplementary declaration by Hoang Lam Nguyen made on 30 December 2021 (‘Nguyen 3’). Mr Nguyen states that the NID was not filed by the Deadline because he was ill and required to self-isolate prior to the Deadline. According to Nguyen 3, Mr Nguyen only recovered a week after falling ill.

7. On 12 January 2022, the delegate informed the Applicant that the intention to refuse the Request was being maintained. Relevantly, Nguyen 3 failed to disclose the specific dates on which Mr Nguyen was ill and required to self-isolate. The delegate also highlighted that an NID may be obtained, completed and filed online. As such, Mr Nguyen’s illness and self-isolation did not, by itself, demonstrate circumstances that would prevent compliance with the Deadline. The correspondence invited the Applicant to file a further supplementary declaration or to request a hearing.

8. The Applicant subsequently obtained legal representation and requested to be heard by way of written submissions. A nominal hearing date was scheduled and both parties were invited to file written submissions and/or any evidence that they wished to rely on. The Applicant filed a declaration by Hoang Lam Nguyen made on 3 March 2022 (‘Nguyen 4’) together with written submissions dated 18 March 2022 (‘Submissions’). The Opponent, who was provided with a copy of the Applicant’s materials, did not file any material. The matter has now been allocated to me for determination as a delegate of the Registrar. In doing so I take account of the above detailed material. This material comprises the written record.

   Discussion

   Relevant provisions

9. Section 52A of the Trade Marks Act 1995 (Cth) (‘Act’) provides:

   52A Notice of intention to defend opposition to registration

   (1) If a notice of opposition is filed in accordance with section 52, the applicant may file a notice of intention to defend the application for registration of a trade mark.

   Note: Failure to file a notice of intention will result in the application lapsing: see section 54A.

   (2) The notice must be filed within the prescribed period, or within that period as extended by the Registrar in accordance with the regulations.

10. Regulations 5.13, 5.13A and 5.13B of the Regulations relevantly provide:

    5.13 Filing of notice of intention to defend
    (1) For subsection 52A(2) of the Act, a notice of intention to defend must be filed within one month from the day the applicant is given a copy of the statement of grounds and particulars.

    5.13A Extension of time for filing--application
    (1) A person may apply to the Registrar to extend the period for filing, under subsection 52A(1) of the Act, a notice of intention to defend.
    (2) 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 subregulation 5.13(1).
    (3) The application must:

    (a) be in the approved form; and
    (b) be accompanied by a declaration stating the facts and circumstances forming the basis for the grounds for making the application.

    …
    (4) The application may be made only on either or both of the following grounds:

    (a) an error or omission by the person, the person's agent, the Registrar or an employee;
    (b) circumstances beyond the control of the person, other than an error or omission by the person, the person's agent, the Registrar or an employee

    5.13B Extension of time for filing--grant
    (1) The Registrar may grant an application under subregulation 5.13A(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the application justify the extension.
    (2) However, if the application is made after the period mentioned in subregulation 5.13(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.
    (3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.

11. An application for an extension of time under reg 5.13A(1) of the Regulations may be made on either or both of the grounds listed in reg 5.13A(4). It is clear from the wording of reg 5.13B(1) of the Regulations that the decision to grant an application under reg 5.13A(1) is a discretionary one. As such, even if the Applicant establishes that a ground under reg 5.13A(4) exists, it does not follow that the extension of time must be granted. Rather, the Registrar must also be satisfied that the exercise of the discretion to grant the extension is justified and, given the Request was made after the Deadline, there is sufficient reason for the delay in making the application.[2]

    [2] Regulations reg 5.13B(2).

    Error or omission

12. The expression ‘error or omission’ appears throughout the Act and the Regulations as well as in other Commonwealth legislation relating to intellectual property.[3] This expression, in the context of an application for an extension of time, has been the subject of consideration in a number of authorities. In Kimberly-Clark Ltd v Commissioner of Patents (No 3) (‘Kimberly-Clark’),[4] Jenkinson J provided the following insight on this expression as it appeared in s 160(2) of the Patents Act1952 (Cth):

    the word "error" is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips. …

    By no means every judgment by "the person concerned" or by "his agent or attorney" which can be shown to have been mistaken will answer the description "error or omission" in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error.[5]

    [3] See, eg, Act ss 81, 224; Regulations regs 5.9, 9.15A; Patents Act 1990 (Cth) s 223; Designs Act 2003 (Cth) s 137.

    [4] [1988] FCA 421 (‘Kimberly-Clark’).

    [5] Ibid [9]–[10].

13. Notably, Jenkinson J observed in Kimberly-Clark that the expression ‘error or omission’ should not be construed narrowly and explained that the failure to do an act or take a step is not in itself an ‘error or omission’ within the meaning of the Regulations.[6] That is, the mere failure to file the NID by the Deadline does not demonstrate that a relevant ‘error or omission’ has occurred. Rather, to establish the ground under reg 5.13A(4)(a), the ‘error or omission’ relied upon must be antecedent to, and have a causative relationship with, the failure to file the NID by the Deadline.

    [6] Ibid [9], [11].

14. Nguyen 4 explains that Mr Nguyen and his wife developed COVID-19 symptoms on or around 7 July 2021, being the day before the Deadline. As a precaution, they decided to monitor their symptoms and self-isolate for a week. Mr Nguyen lives with his young daughter as well as his elderly parents and the circumstances were such that he and his wife self-isolated in a separate room of the home that had ‘no access to a computer’.[7] On 14 July 2021, Mr Nguyen ceased self-isolation and was able to access a computer. Conscious of the Deadline, he filed the Request that day. Mr Nguyen declares that he always intended to file the NID on the Applicant’s behalf before the Deadline and would have done so had his ‘health condition improved earlier’.[8]

    [7] Nguyen 4, [8].

    [8] Ibid [9].

15. In my view, Nguyen 4 fails to establish a relevant ‘error or omission’ on behalf of the person as contemplated by the Regulations. As mentioned at [13] of this decision, the Applicant’s failure to file the NID by the Deadline does not establish that an ‘error or omission’ has in fact occurred. This is because the relevant ‘error or omission’ must precede the failure to comply with the Deadline and not be the failure itself. Likewise, it is plain that Mr Nguyen falling ill the day before the Deadline cannot reasonably be characterised as an error[9] or omission[10] based on the ordinary meaning of either word. As such, the existence of a ground under reg 5.13A(4)(a) of the Regulations has not been established.

    [9] Macquarie Dictionary (online at 24 May 2022) ‘error’ (defs 1 and 2) may be defined as ‘deviation from accuracy or correctness; a mistake, as in action, speech, etc’ or ‘belief in something untrue, the holding of mistaken opinions’.

    [10] Macquarie Dictionary (online at 24 May 2022) ‘omission’ (defs 1 and 2) may be defined as ‘the act of omitting’ or ‘the state of being omitted’.

    Circumstances beyond the control of the person

16. The expression ‘circumstances beyond the control of the person’ is mirrored in various parts of the Regulations[11] and was considered by Moshinsky J in Honest Reveira v Registrar of Trade Marks (‘Honest Reveira’).[12] Honest Reveira concerned an application for judicial review of the Registrar’s decision to grant an extension of time to file a notice of intention to oppose an application for removal. One ground of review pursued was that the material before the Registrar was not capable of constituting circumstances beyond the control of the removal opponent within the meaning of reg 9.11(4)(b) of the Regulations.[13] Relevantly, it was argued that the power to extend the time for filing a notice of opposition based on circumstances beyond the control of the removal opponent was ‘an exceptional one with a narrow scope for operation’[14] and it should operate as a force majeure provision.[15] On this basis, it was submitted that the health issues suffered by the removal opponent’s representative for part of the relevant filing period did not satisfy circumstances beyond the removal opponent’s control.

    [11] See, eg, Regulations regs, 5.9(4)(b), 9.11(4)(b), 9.15A(4)(b).

    [12] [2018] FCA 1122 (‘Honest Reveira’).

    [13] Ibid [46].

    [14] Ibid [47].

    [15] Ibid [49(a)].

17. In dismissing the application for judicial review, Moshinsky J observed that while the expression ‘circumstances beyond the control of the person’ has been characterised as a force majeure provision, this is no ‘substitute for the words actually used’.[16] Justice Moshinsky explained 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) …

    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.[17]

    [16] Ibid [56].

    [17] Ibid [57]–[58].

18. The Submissions reference Honest Reveira and assert that Mr Nguyen’s illness constitutes circumstances beyond the Applicant’s control and thereby establish the existence of a ground under reg 5.13A(4)(b) of the Regulations. I accept that health issues may fall within the expression ‘circumstances beyond the control of the person’. However, as Moshinsky J emphasised in Honest Reveira, ‘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’.[18]

    [18] Ibid [57]. See also [58] wherein Moshinsky J expressed a similar sentiment in relation to establishing circumstances beyond the control of a company by reference to the situation of a single individual.

19. In my assessment, the current matter is distinguishable from Honest Reveira for the following reasons. First, the nature of the removal opponent in Honest Reveira was a crucial consideration in establishing circumstances beyond its control for the purposes of reg 9.11(4) of the Regulations. Specifically, the small size of the removal opponent and the fact that the individual who suffered the health issues was responsible for managing its business matters were relevant factors in concluding that circumstances beyond the removal opponent’s control existed.[19] Here, no details have been provided regarding the size or nature of the Applicant other than Mr Nguyen declaring himself to be its founding director.[20] Likewise, no information has been disclosed as to whether, for example, another officer or employee of the Applicant could have attended to filing the NID or engaged legal representation to do so. The Applicant’s size and allocation of responsibilities for managing its affairs is unknown. As such, there is nothing in the material filed which indicates that Mr Nguyen was the only person capable of filing the NID on the Applicant’s behalf. Put another way, the material does not allow for the question of circumstances beyond the Applicant’s control to be extrapolated based solely on Mr Nguyen’s circumstances.

    [19] Ibid [60].

    [20] Nguyen 4, [1].

20. Second, several health issues were suffered by the relevant individual in Honest Reveira with medical certificates substantiating that one condition included ‘chronic back pain’.[21] While the evidence filed by the removal opponent was characterised as being ‘thin’ and notwithstanding that ‘another delegate may have formed a different view’, Moshinsky J accepted that the relevant individual’s health issues persisted throughout the relevant period.[22] In contrast, the current matter involves an officer of the Applicant self-diagnosing that they had developed COVID-19 symptoms on the day prior to the Deadline and choosing to self-isolate. While Mr Nguyen’s actions were understandably adopted out of an abundance of caution, it remains that his incapacitation pertained to a single day immediately prior to the Deadline.

    [21] Honest Reveira (n 12) [33].

    [22] Ibid [61].

21. Third, Nguyen 4 submits that Mr Nguyen ‘had always intended’ to file the NID before the Deadline. However, it does not address whether it was Mr Nguyen’s intention to file the NID on the day he fell ill nor does it proffer any rationale as to why the filing was not attended to in the 29 days prior to Mr Nguyen developing COVID-19 symptoms. Nothing has been put to me to suggest that circumstances beyond the Applicant's control prevented it from filing the NID at an earlier date. I acknowledge that under the Act and the Regulations, it is permissible to wait until the Deadline to file the NID. However, such a course of action is inherently fraught with risk which must necessarily be assumed by a person utilising this approach. This is particularly so given it was adopted in the midst of a pandemic whereby the risk of contracting COVID-19 or being deemed a close contact was heightened and thus reasonably foreseeable. To this end, I note Stafford-Miller Ltd v Jean Patou Parfumeur wherein the delegate commented:

    There is another aspect of this matter, on which no information or submissions were forthcoming on behalf of Jean Patou Parfumeur, and that is the question of why that firm, as the “person concerned”, apparently did nothing until the second last day of the initial three month period available to it to decide to oppose or to seek further time in which to oppose. Nothing has been put to me to suggest that circumstances beyond their control prevented them from instructing their agents at an earlier date, and I can only repeat a comment made in an earlier decision of the Registrar, Roger David Stores Pty Ltd v Sportsgirl Pty Ltd (1984) AIPC 93-210 at 39271, that where matters are left to the last day or so available, any delays due to oversight or illness or whatever may result in major consequences for which the person concerned must bear responsibility.[23]

    [23] (1988) 11 IPR 409, 411 (emphasis added).

22. Ultimately, the question of whether circumstances beyond the Applicant’s control existed requires a holistic consideration of all the circumstances. The material provided by the Applicant, which focuses exclusively on Mr Nguyen falling ill the day before the Deadline, regrettable as it may be, does not establish the existence of circumstances beyond the Applicant’s control. Naturally, I have sympathy for Mr Nguyen who was forced to self-isolate after developing COVID-19 symptoms. However, care must be taken to delineate between Mr Nguyen and the Applicant for the purposes of considering the Request. The circumstances of the Applicant including its size, structure and the degree of Mr Nguyen’s involvement in managing its affairs have not been explained despite multiple opportunities to do so. It follows that the current matter, based on the material filed, is not analogous to Honest Reveira. As mentioned at [19] of this decision, it is simply not open to me to deal with the question of circumstances beyond the Applicant’s control solely by reference to Mr Nguyen’s situation.

23. The NID is a simple document that does not require a significant expenditure of time or effort to complete and file.[24] There is nothing in any of the declarations provided by the Applicant which explain why the month available was insufficient for it to file this document or why it seemingly intended to file the NID on the Deadline. The same is true for the Submissions. As the party requesting the extension of time, it is incumbent upon the Applicant to furnish such details in order to demonstrate that circumstances beyond its control existed. In the current matter, there is insufficient evidence to establish that the failure to file the NID by the Deadline was due to circumstances beyond the Applicant’s control.

    [24] The standard form, available at < only requires basic information such as the customer’s details, an address for service, identification of the opposition matter and whether they customer intends on defending the trade mark application against opposition.

1. Accordingly, the existence of a ground under reg 5.13A(4)(b) of the Regulations has not been established.

   Decision

2. I am not satisfied that the Applicant’s failure to file the NID by the Deadline was the result of an ‘error or omission by the person’ or ‘circumstances beyond the control of the person’ as contemplated by reg 5.13A(4) of the Regulations. As such, I refuse to grant the extension of time request.

   Nicholas Barbey
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   23 June 2022