Gopika Pty Ltd as Trustee for the Meece Trust for an extension of time to file a bill of costs following opposition to registration of trade mark number 2157853 (class 35) –
[2025] ATMO 56
•14 March 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Gopika Pty Ltd as Trustee for the Meece Trust for an extension of time to file a bill of costs following opposition to registration of trade mark number 2157853 (class 35) – CINNAYUM CINNFULLY DELICIOUS (Figurative) – in the name of Cinnayum Pty Ltd.
Delegate:
Jonathon Galloway
Representation:
Opponent: Khajaque Kortian of Spruson & Ferguson
Applicant: Teller & Associates
Decision:
2025 ATMO 56
Trade Marks Act 1995 (Cth) – application for extension of time under s 224 to file a bill of costs – s 224(2)(a) established – discretion exercised – extension of time allowed
Background
This decision concerns a request for an extension of time (‘Request’) pursuant to s 224 of the Trade Marks Act 1995 (Cth)[1] to file a bill of costs following the opposition to registration of trade mark application number 2157853 (‘Opposition’). The Opposition was in respect of a trade mark application in the name of Cinnayum Pty Ltd (‘Applicant’) who was represented by Teller & Associates. The Opponent in respect of the Opposition was Gopika Pty Ltd as Trustee for the Meece Trust (‘Opponent’), who was represented by Khajaque Kortian of Spruson & Ferguson.
[1] Unless otherwise stated, each reference to a section or regulation is a reference to the Trade Marks Act1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’) respectively.
On 20 October 2023, a delegate of the Registrar of Trade Marks (‘Registrar’) issued a decision in relation to the Opposition.[2] The delegate found that the Opponent had established a ground of opposition under s 58 and costs were awarded against the Applicant. Accordingly, the deadline for filing the bill of costs fell on 20 January 2024 (‘Deadline’).[3]
[2] Gopika Pty Ltd as Trustee for the Meece Trust v Cinnayum Pty Ltd [2023] ATMO 163 (Hearing Officer Goldsworthy).
[3] Reg 21.12. The Opponent notes that the due date for the bill of costs fell on a Saturday, giving rise to an effective due date of 22 January 2024.
The Request was submitted on behalf of the Opponent on 21 May 2024, on the basis of an error or omission by the Opponent’s agent. The Request was accompanied by a declaration and a bill of costs in respect of the Opposition.
On 3 June 2024, a delegate wrote to the parties confirming receipt of the Request. The correspondence noted that under s 224 a request for an extension of time for a period longer than 3 months must be published for opposition in accordance with the Act.[4] The correspondence confirmed that publication occurred on 3 June 2024. It further stated that provided no opposition was received during the one month opposition period, the Request would be considered, at which point any intention to grant the Request would result in an additional opportunity for the Applicant to file written comments.
[4] s 224(5).
On 1 August 2024, the delegate indicated an intention to grant the Request under s 224(2)(b). The correspondence advised that the delegate would allow a further 7 business days for the Applicant to file written comments in the matter of the Request. Further correspondence from the delegate, on 7 August 2024, advised that the time for the Applicant to provide written comments had been extended.
On 16 August 2024, the Applicant wrote to the Office requesting reconsideration of the intention to grant the Request. A brief summary of these submissions is: the declaration filed with the Request did not provide sufficient disclosure of the error or omission, such as identifying the responsible person or the exact nature of their error or omission; and the Opponent had relied on a similar issue in respect of a different trade mark in November 2023. The Applicant submits that after becoming aware of a technical error in November 2023, the Opponent should have taken steps to resolve that issue or implement contingencies for managing deadlines.
On 22 August 2024, the delegate wrote to the parties to notify them that she intended to refuse the Request but would allow the Opponent a further 14 days to file a supplementary declaration addressing the issues raised by the Applicant.
On 5 September 2024, the Opponent filed a second declaration, responding to the assertions made by the Applicant. The Opponent’s second declaration noted the delegate’s prior intention to grant the Request under s 224(2)(b) and submitted that s 224(2)(a) was also relevant. The delegate considered the second declaration but maintained her intention to refuse the Request. The Opponent was given 7 business days to request and pay for a hearing. The Opponent did so on 1 October 2024.
As a delegate of the Registrar, I heard the matter on 16 January 2025. The Opponent filed written submissions, as well as a third declaration[5] and was represented by Khajaque Kortian of Spruson & Ferguson. The Applicant filed written submissions prepared by Lisa Teller of Teller & Associates but did not appear at the hearing.
[5] The Opponent’s third declaration was originally submitted on 6 January 2025 and resubmitted on 7 January 2025 due to a corrupt file issue.
Evidence
By the time the hearing took place, the Opponent had filed three declarations in support of the Request. Each of the declarations was made by Mr Kortian as the person responsible for handling the Opposition on behalf of the Opponent. The declarations filed are as follows:
- Declaration by Khajaque Kortian, Principal of Spruson & Ferguson, dated 20 May 2024 (‘First Kortian’);
- Declaration by Khajaque Kortian dated 5 September 2024 with Annexure A (‘Second Kortian’); and
- Declaration by Khajaque Kortian dated 6 January 2025 with Annexures B and C (‘Third Kortian’).
First Kortian explains that, given the critical nature of the Deadline, Mr Kortian expected the practice management system to generate three reminders, including one on the morning of the Deadline, one later in the afternoon of the same day and subsequent reminders each weekday until the administration staff received confirmation that a bill of costs had been filed. First Kortian states that none of the reminders were sent by the practice management system upon which Mr Kortian and his team rely. As a result, the Opponent did not file the bill of costs by the Deadline.
First Kortian declares ‘[t]he cause of this technical error in the reminders not being sent has not yet been ascertained’.[6] First Kortian provides that neither Mr Kortian nor members of his team were notified by the practice management system regarding the Deadline. First Kortian concludes that a failure of the practice management system caused the failure to submit a bill of costs by the Deadline.
[6] First Kortian [4].
Second Kortian is directed to addressing the alleged deficiencies in First Kortian as set out in the Applicant’s correspondence of 16 August 2024. Second Kortian indicates that it is not apparent which staff member was tasked with entering the reminders on the practice management system to monitor the Deadline. As such, Mr Kortian declares:
I would have instructed my Personal, [sic] Assistant Gail Tyldsley, per the usual practice after a successful Opposition, to either personally enter or to arrange for one of our firm’s Trade Marks Admin team to enter, on our firm’s practice management system to police both the deadline for any appeal to the Federal Court of Australia and the deadline to file a Bill of Costs. It is not apparent from my enquiries which staff member undertook the task in late 2023.[7]
[7] Second Kortian [4].
Second Kortian provides further possible explanations for the practice management system not sending a reminder notice on or after the Deadline. These concern human error in the entry or processing of that reminder on the practice management system. That is, either the Deadline was not entered into the practice management system or an attempt to enter the Deadline was made but not successfully executed due to a technical reason.[8]
[8] Ibid [8].
Second Kortian declares that the bill of costs not being filed until after the Deadline only became apparent in May 2024 due to an enquiry made in respect of ongoing related disputes involving the Applicant.[9]
[9] Ibid [11].
Annexed to Second Kortian is a copy of the reminder email sent from the practice management system in relation to the appeal deadline of 10 November 2023 following the Opposition. Second Kortian declares that a similar reminder concerning the Deadline was not sent to Mr Kortian or the professional assisting with the matter.
Third Kortian seeks to provide further information regarding the practice management system. Annexure B is a screenshot of Spruson’s practice management system in relation to the Opposition. Third Kortian asserts that the date corresponding to the Deadline was entered but it appears that no date was entered into the column that would have triggered Ad hoc reminders. Further, Annexure B indicates that the file was closed on 12 December 2023, which allegedly would have caused the practice management system to cease sending any further reminder notices. Annexure C is declared to be a screenshot from the practice management system showing a record of the reminder generated for the appeal deadline in respect of the Opposition.
Third Kortian states that the Opponent’s representative handles a substantial volume of matters and is heavily reliant on computerised reminders to ensure that staff are able to meet numerous deadlines.
Submissions
The Opponent submits that the written and oral submissions made during the Opposition state an express intention to recover costs in the event that it was the successful party. The Opponent submits that the evidence filed in support of the Request establishes an error or omission and a causal link that led to the failure to file by the Deadline.
In respect of the Registrar’s discretion the Opponent submits that, upon finding an error or omission has led to the late filing, the balance of convenience and public interest would support the exercise of discretion in favour of the Opponent. That is, the party that was obligated to pay should not be absolved of their obligation, and the inconvenience of paying the bill of costs after the Deadline does not outweigh the inconvenience to a party that was successful and therefore entitled to the recovery of its costs.
The Applicant relies on the submissions filed on 14 January 2025 in relation to the hearing, as well as its earlier correspondence dated 16 August 2024. The earlier correspondence persuaded the delegate to reconsider granting the Request. It alleged that the information in First Kortian was deficient in its explanation of the error or omission and was not supported by documentary evidence of a fault with the practice management system. In addition, the Applicant also noted that First Kortian contained no indication of steps taken by Mr Kortian and his team to rectify any faults. It alleged that the Opponent’s representative had claimed a technical error in relation to another trade mark application by the Applicant in respect of a late filing of a Notice of Intention to Oppose which had a deadline of 28 November 2023. The Applicant submits that on both occasions Mr Kortian said that the cause of the claimed critical error ‘had not yet been ascertained’. The Applicant submits that it is not credible that Mr Kortian’s team had no backup or alternative system in place regarding such deadlines after becoming aware of the issue due to the earlier missed deadline.
The Applicant submits that the Opponent has been given opportunities to justify the Request and that Third Kortian contains no explanation as to why the information therein was not provided earlier. The Applicant notes that each of the declarations were filed over a period of eight months, Third Kortian having been filed only after notification of the delegate’s intention to refuse the Request, after the delegate had considered First Kortian and Second Kortian.
The Applicant submits that Third Kortian contains new information which should have been submitted earlier and does not evidence the precise ‘error or omission’ or prove the causal link that led to the failure to file the bill of costs by the Deadline. Specifically, the Applicant refers to Annexure B which shows no date entered in the row which allegedly would have triggered the reminder and the explanation by Mr Kortian that the file was closed on 12 December 2023 which would have meant no other reminders after that date would have been forthcoming.
Discussion
A key requirement of demonstrating a relevant error or omission is that an applicant for the extension can demonstrate that the failure to file the document or take the step in time must have been ‘by reason of’ the error or omission[10] and there must be a ‘causal relationship’ between the two.[11]
[10] Lyons v Registrar of Trade Marks [1983] FCA 252 (Beaumont J).
[11] Kimberly-Clark Ltd v Commissioner of Patents [1988] FCA 697, [15] (Jenkinson J).
In my view, First Kortian and Second Kortian reasonably explain that the practice management system did not send the relied upon reminders. Second Kortian indicates that it is likely that either a staff member did not enter the Deadline, a staff member incorrectly executed the process of entering the Deadline, or a technical issue with the practice management system occurred.[12] Mr Kortian does not rely solely on a ‘technical fault’ as the cause of the error or omission. Second Kortian goes some way to identifying the person responsible for the error or omission by stating that Mr Kortian would have instructed his personal assistant to personally enter or arrange for a member of the administration staff to enter the Deadline.[13] For completeness, I consider that the information in Third Kortian is not material to this decision as a reasonable explanation has been set out in First Kortian and Second Kortian.
[12] Second Kortian [8].
[13] Ibid [4].
The concept of ‘error or omission’ has been held to include instances such as the failure of a legal representative to diarise a key date.[14] The evidence of the Opponent explains that Mr Kortian relies on a series of automatic reminders to ensure that all deadlines are met. Based on First Kortian and Second Kortian, it is clear that there was a critical step in the process that was either not done or done incorrectly and this directly led to a failure to file the bill of costs by the Deadline.
[14] British Sky Broadcasting Ltd v SkyNetGlobal Limited [2003] ATMO 17, 13 (Hearing Officer Williams).
The Request was made under s 224 which is a discretionary provision. Even where the Registrar is satisfied that there was an error or omission on the part of a relevant person, the Registrar must also be satisfied that the exercise of the discretion in favour of the Opponent is appropriate.[15] I consider that the evidence provides a reasonably clear explanation of the error or omission and the causal link that led to the failure to file the bill of costs by the Deadline. Therefore, my focus should now be on the consequences of granting or refusing the Request, rather than debating the reasons why the bill of costs was not filed by the Deadline.[16] I note that extension of time provisions are beneficial and should be applied beneficially.[17]
[15] Hancock v A Space Recreation Pty Ltd [2017] ATMO 49, [17] (Hearing Officer Wilson).
[16] Robert Burrell and Michael Handler, Australian Trade Mark Law (Lexis Nexis Australia 3rd ed, 2024) 56.
[17] Robert ErwoodChalk v Commissioner for Superannuation [1994] FCA 1063, [23] (Davies J).
The Opponent’s submissions in respect of the balance of convenience and the public interest are based on the fact that the Opponent was successful and maintained an express intention to recover costs in its written and oral submissions concerning the Opposition. The Opponent submits that denying it the opportunity to recover costs would not be a fair and reasonable decision in light of the circumstances. The Opponent further submits that absolving the Applicant of its obligation to pay the costs is contrary to the public interest.
The Applicant submits that it has already incurred significant further costs because of the conduct of the Opponent in relation to the Opposition and the Request. Further, the Applicant submits that it relied on the absence of a bill of costs in its budgeting for subsequent annual expenses. The Applicant submits that the public interest and the balance of convenience favour adherence to the requisite filing deadlines.
I acknowledge that the delay in filing the bill of costs would be frustrating to the Applicant. However, the Applicant was aware of its obligation to bear the costs following the conclusion of the Opposition. I am not convinced that it is reasonable to absolve the Applicant of this obligation because of the delay in filing the bill of costs and/or the Applicant’s subsequent budgeting. Further, while I note the Applicant’s assertion that the Opponent relied on a similar reason in a different matter and should have taken steps to resolve that issue moving forward, evidence of the earlier matter is not before me.
The Applicant further submits that the public interest favours efficiency and predictability in trade mark proceedings. While efficiency and predictability are desirable, the extension of time provisions contemplate that it may be reasonable to extend the time for doing a relevant act. While this will be dependent on the particular circumstances, the extension of time provisions allow for deadlines to be extended, unless it can be shown that it would be unreasonable to do so.
It has been noted that errors concerning deadlines are not uncommon, even by experienced professionals.[18] I consider that First Kortian and Second Kortian sufficiently explain the error or omission. There is no plausible explanation that explains a delay in recovering costs, other than an error or omission in the course of managing the matter at the conclusion of an Opposition. The Opponent has demonstrated that an error in the process of entering the Deadline caused the failure to file the bill of costs by the Deadline. I have considered the apparent disruption to the Applicant however I find that the balance of convenience and public interest favour granting the Request.
[18]Neurocrine Biosciences Inc v KINNECT Holdings Pty Ltd [2023] ATMO 63, [7] (Hearing Officer Goldsworthy).
Decision
Having taken into account all of the above, I consider it is appropriate to exercise the Registrar’s discretion to extend the time for the Opponent to file its bill of costs to 21 May 2024.
The Opponent has requested an award of costs. However, this was a matter between the Opponent and the Registrar over the extension of time request and it is appropriate for the parties to bear their own costs in relation to this hearing. Accordingly, I decline to make an award of costs.
Jonathon Galloway
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
14 March 2025
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