Happy Skincare Pty Ltd ATF Breckell Family Trust v Happy Skin Co Pty Ltd
[2020] ATMO 92
•27 May 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Happy Skincare Pty Ltd ATF Breckell Family Trust to registration of trade mark application number 1963096 in the name of Happy Skin Co Pty Ltd
– and –
Request by Happy Skincare Pty Ltd ATF Breckell Family Trust for an extension of time to file a Statement of Grounds and Particulars
Delegate: | Adrian Richards |
Representation: | Opponent: Written submissions Applicant: Written submissions |
Decision: | 2020 ATMO 92 Application under regulation 5.9 of the Trade Marks Regulations 1995 (Cth) for an extension of time to file a Statement of Grounds and Particulars – error or omission – ground established and extension granted. |
Background
This decision deals with a request for extension of time (‘Request’) to file a statement of grounds and particulars (‘SGP’) in the opposition to registration of trade mark application number 1963096 (‘Application’). The Application is in the name of Happy Skin Co Pty Ltd (‘Applicant’), the registration of which is opposed by Happy Skincare Pty Ltd as Trustee for the Breckell Family Trust (‘Opponent’).
The Application was advertised as having been accepted for possible registration on 26 March 2019. This set a deadline of 26 May 2019 for any person to commence the opposition process in relation to the Application.[1] An officer of the Opponent filed a notice of intention to oppose (‘NIO’) on 23 May 2019, setting a deadline of 24 June 2019[2] for the Opponent to file its SGP.[3] On 12 June 2019 Mark My Words Trademark Services Pty Ltd (‘Opponent’s Attorney’) notified this office that it had become the address for service for the Opponent in relation to the opposition. The Opponent’s Attorney filed the SGP on 25 June 2019, along with the Request. The SGP was filed just one day out of time.[4]
[1] Trade Marks Regulations 1995 (Cth) reg 5.6(1).
[2] The month within which to file nominally ended on 23 June 2019. Since that fell on a Sunday, the effective deadline was 24 June 2019: Acts Interpretation Act 1901 (Cth) s 36(2)(b).
[3] Trade Marks Regulations 1995 (Cth) reg 5.7(1).
[4] Ibid. See reg 2.2 for the reckoning of time.
A delegate of the Registrar of Trade Marks considered the Request and notified each party that she intended to grant the extension in letters dated 23 August 2019, giving the Applicant 14 days to comment on her intention, or to request a hearing. The Applicant opted for the latter, seeking a hearing by way of written submissions on 28 August 2019.
A nominal hearing date of 18 November 2019 was scheduled. The Opponent filed two supplementary declarations in support of its Request on 30 September 2019. The Applicant objected to the filing of that new material on 10 October 2019. I was assigned to conduct the hearing in my capacity as delegate of the Registrar of Trade Marks. I responded to the Applicant’s objection on 24 October 2019, copying in the Opponent. In the same correspondence I proposed a timetable for the filing of submissions, which the Applicant commented on. I sent a finalised scheduled for submissions to the parties on 4 November 2019. The parties filed their submissions in accordance with the timetable and on 18 November 2019 the matter was ready to be decided.
Evidence
The following declarations were filed by the Opponent in relation to the Request:
Jacqui Pryor, Trade Marks Attorney and Director of the Opponent’s Agent, made on 25 June 2019 (‘Pryor 1’).
Jacqueline Louise Pryor, made on 25 September 2019 with annexures JP1 to JP3 (‘Pryor 2’).
Phoebe Breckell, Director of the Opponent, made on 25 September 2019 with annexures PB1 and PB2 (‘Breckell 1’).
To be clear both Pryor 1 and Pryor 2 were made by the same individual.
The extension of time provisions
Regulation 5.9[5] sets out the potential bases for making the Request, and is reproduced below:
[5] All references to regulations in these reasons are to the Trade Marks Regulations 1995 (Cth).
5.9 Extension of time for filing—application
(1) A person who intends to oppose an application under subsection 52(1) of the Act may request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under subregulation 5.6(1); or
(b) the period for filing a statement of grounds and particulars under subregulation 5.7(1).
(2) A request under paragraph (1)(a) or (b) may be made:
(a) within the period for filing the document in question; or
(b) before the trade mark is entered on the Register under section 69 of the Act.
Note: See subparagraph (3)(b)(ii) and subregulation 5.10(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must:
(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice or the statement of grounds and particulars has ended—the reason why the request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request 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.
The Request nominates the ground in reg 5.9(4)(a)—error or omission. This ground also appears in the extension of time provision of general application in s 224 of the Trade Marks Act 1995 (Cth), its in pari materia s 223 of the Patents Act 1990 (Cth) and s 137 of the Designs Act 2003 (Cth), and in previous enactments covering the same subject matter. The relevant principles are thus well established and most were canvassed in the Applicant’s submissions. In summary they are:
- The Opponent ‘carries the burden of establishing an appropriate case to justify [an extension of time]’.[6]
- This burden ‘does not amount to a burden of proof and it is not appropriate that it should be so described’.[7]
- The failure to file the SGP cannot itself be the error or omission—there must have been an earlier error or omission that caused that failure to file.[8]
Just because a decision is shown to be mistaken does not render it a relevant error or omission.[9]
[6] Vangedal Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144, 149 (Bowen CJ).
[7] Re Sanyo Electric Co Ltd and Commissioner of Patents (1996) 36 IPR 470, 479 (Deputy President McDonald).
[8] Kimberly-Clark Ltd v Commissioner of Patents (No 3) (1988) 84 ALR 685 (Jenkinson J).
[9] Ibid 695.
Regulation 5.10 deals with the power to grant the Request, and is set out below:
5.10 Extension of time for filing—grant
(1) The Registrar may grant a request under subregulation 5.9(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension.
(2) However, if 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.
(3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
Regulation 5.10(1) explicitly ties the power to grant the Request back to the grounds in reg 5.9(4). The presence of the word ‘may’ imports all the discretionary considerations that have been expounded by juridical consideration of the general extension of time provisions particularly in patents and trade marks matters. However, most of the general considerations are not of any prominence in relation to these facts. For example, there is a clear purpose to the extension and the Registrar is not functus officio.
The Applicant has focused on another aspect of the discretion. That is, whether there has been a full and frank disclosure of ‘all the conduct, knowledge, beliefs and mental processes’ of the relevant officers and agents ‘relevant to an understanding of the way the failure to do the act…occurred, or relevant to an evaluation of the reasonableness of that conduct.’[10] Where this occurs, and the details of the disclosure are favourable, such candour is indeed likely to compel an exercise of the power to grant more time. However, offering up such a disclosure is not itself a requirement in all (or even many) situations—it has subsequently been held that the court in Kimberly-Clark ‘was not laying down rules for the exercise of general discretions to grant extensions of time.’[11] The context in which the extension of time is sought is important.[12] In Kimberly-Clark the court was dealing with an application to extend time to object to the grant of a patent under s 59(1)(d) of the Patents Act 1952 (Cth). To place this in the present context, this would be as if the Opponent were seeking an extension of time to file the NIO after the deadline for doing so had passed. In such a situation it is often appropriate to examine in some detail the intentions of a would-be opponent.[13] However, since the Opponent has already commenced the opposition process, having before me now ‘all the conduct, knowledge, beliefs and mental processes’ of the various actors working on the Opponent’s behalf would only be of limited relevance to the Request.
[10] Ibid 698.
[11] Ferocem Pty Ltd v Commissioner of Patents (1994) 49 FCR 205, 208 (Burchett J).
[12] Re Sanyo Electric Co Ltd and Commissioner of Patents (1996) 36 IPR 470, 479 (Deputy President McDonald).
[13] British Sky Broadcasting Ltd v SkyNetGlobal Ltd (2003) 57 IPR 93, 102 (Hearing Officer Williams).
Status of the supplementary declarations
Pryor 2 and Breckell 1 were filed together after the hearing date had been set. As mentioned in the background, and apparent in the Applicant’s written submissions, the Applicant has made clear it considers the filing of Pryor 2 and Breckell 1 controversial. In its 10 October 2019 objection it suggested that they either not be considered at all in these proceedings, or that the Request should be treated as having been filed when the supplementary declarations were:
The Additional Declarations did not accompany the Prospective Opponent's EOT Request as originally made on 25 June 2019. No direction or leave was given by your Office to the Prospective Opponent to file further evidence in support of the EOT Request.
The only declaration accompanying the EOT Request as originally made on 25 June 2019, was the declaration of Jacqui Pryor dated the same date. If these Additional Declarations were intended to form part of the EOT Request, it seems that they have been filed out of time and not in compliance with Reg 5.9(3)(b) ( "The request must: ... (b) be accompanied by a declaration ... ").
We also note that the evidence in the Additional Declarations relates to events on or before 25 June 2019, and not subsequent events. Accordingly, the Additional Declarations could have been filed with the EOT Request on 25 June 2019.
Given the clear terms of Reg 5.9(3)(b), our client (the Applicant) submits that the Additional Declarations should not be considered in determining the EOT Request. In the alternative, the EOT Request should be considered incomplete when made on 25 June 2019, and was only completed when the Additional Declarations were received by your Office on 30 September 2019.
Would you please let us know how the Office proposes to deal with the Additional Declarations?
I provided the following response in my letter of 24 October 2019:
…I propose to treat the new material as having been filed on 30 September 2019, and I invite you to make submissions on its probative value as part of your substantive submissions in relation to the application for extension of time. My reasons for this approach are below.
In order to meet filing requirements, reg 5.9(3)(b) on its face requires a declaration to accompany the application. The application was accompanied with a declaration, so its filing date appears to have been correctly recorded. Even if I were to do as you suggest and treat the application as having been filed on 30 September 2019, it is unclear what practical effect this could have.
As to how much weight I will give the new material, that depends on more than just whether it could have been filed earlier. It is true that the prospective opponent was neither asked nor invited to file the new material, but the terms of 5.9(3)(b) do not prevent the filing of a supplementary declaration. It is also open to me to consider any material that I reasonably believe to be appropriate (reg 21.15(4)). In that regard, it would be helpful to understand whether the consideration of this new material would bring about a practical injustice. I note your letter did not suggest that this might be the case, and that you have time to respond to the new material.
The Applicant responded to my letter among its written submissions:
The “practical effect” is this. On the proper construction of regulation 5.9(3), an extension of time request is not considered complete until the request is accompanied by all of the declarations upon which a Prospective Opponent relies. Otherwise, as demonstrated by the shifting nature of the errors or omissions in this case, the errors or omissions relied on by a Prospective Opponent in its first declaration may not be the error or omission on which it ultimately relies at a hearing.
If that is so, then the “practical effect” of the Prospective Opponent’s making a (complete) extension of time request on 30 September 2019 is that it must satisfy the Registrar that “there is sufficient reason for the delay in making the request” as at that date, being more than three months after the period for filing the SGP ended. The Prospective Opponent does not explain why it took more than three months to file [the supplementary declarations].
The Applicant’s submissions no longer indicate that the supplementary declarations ought to be disregarded. Aside from this concession, the Applicant’s latest submission does little to advance the issue.
The Applicant submits what it considers the proper construction of a provision to be without also explaining how that construction is to be arrived at. The example of shifting errors or omissions could not on its own mandate the adoption of an interpretation as severe as the Applicant suggests. The resources it will typically demand from a party to establish an appropriate case[14] necessarily weigh against the expectation that any request for more time be filed as soon as possible.[15] Such a tension necessitates a balance and, as outlined in my letter of 24 October 2019, the legislation offers that flexibility by leaving space for more detail to be placed before the decision maker.
[14] Vangedal Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144, 149 (Bowen CJ).
[15] Trade Marks Regulations 1995 (Cth) reg 5.2.
To the extent that the Applicant may suggest that the Opponent’s position has fundamentally changed, this is not borne out in the evidence. As I have outlined in the discussion below, the Opponent identified the relevant error in Pryor 1 and filled in certain details in Pryor 2 and Breckell 1.
There is no need for the Opponent to separately explain why it did not file Pryor 2 and Breckell 1 on 25 June 2019. Nearly all requests for extension of time in this office are granted or refused without being subject to hearing. Pryor 1 alone was enough to move the first delegate to intend to grant the Request. Had the Applicant not intervened, there would not have been any pressure on the Opponent to add further detail. The Opponent could not have known that the Request would have a contradictor until this office sent notice of the Applicant’s hearing request to it over two months later, on 29 August 2019. It is unremarkable in that context that the Opponent decided to file further detail.
Discussion
Opponent’s evidence
Pryor 1 was filed with the Request. It referred to a misunderstanding between attorney and client. The Opponent had told the Opponent’s Attorney that it would file the NIO on 26 May 2019. The Opponent’s Attorney therefore assumed a deadline of 26 June 2019 would apply to the SGP. But the Opponent proceeded to file the NIO earlier on 23 May 2019.
Pryor 2 clarifies that the Opponent’s Attorney did not have instructions to act in relation to this opposition until 12 June 2019, after the NIO was filed. This explains why an officer of the Opponent was responsible for filing. The Opponent’s Attorney and the Opponent were in contact before that time, with the result being that the Opponent’s Attorney on or about 21 May 2019 entered the SGP deadline of 26 June 2019 into its file management software. The true deadline was uncovered as a result of a routine file check on 25 June 2019. The same day as discovering their recorded deadline was wrong, the Opponent’s Attorney filed the SGP alongside the Request.
In both Pryor 1 and Pryor 2, the declarant indicates that her office has standing procedures for reviewing filing deadlines, but they were not triggered. In the present matter, those procedures would have been followed as soon as this office notified the Opponent’s Attorney that the address for service had been amended in its favour. But, as it happened, that notice was not received by the Opponent’s Attorney until 26 June 2019.
Breckell 1 corroborates the story in Pryor 1 and provides partly redacted emails between the declarant and the Opponent’s Attorney. The earlier email conveys that the declarant herself planned to file the NIO on 26 May 2019. However, the Opponent subsequently decided to file on 23 May 2019 reasoning that it should file earlier because 26 May 2019 fell on a Sunday.
The decision to file the NIO earlier than it had previously indicated signals that the Opponent was likely not across the nuances surrounding deadlines in trade marks oppositions. That it did not know it could just file the following Monday also speaks to it not being aware of the significance of the date that it did choose to file (apart from t that it represented a deadline). It is unsurprising then that the Opponent’s decision to file earlier was apparently not communicated to the Opponent’s Attorney at the time nor on 12 June 2019 (when it gave instructions to act).
Applicant’s submissions
The Applicant’s submissions responding to the Opponent’s evidence rely heavily on the idea that Kimberly-Clark should be brought to bear with full force, indicating in some detail each of the areas in which the Opponent’s case might have been put more clearly. For example, pointing out that the Opponent’s Attorney has not provided extracts from its file management system to corroborate that the entry attested to in Pryor 2 was made. Again, while more detail may have made the case for an extension of time more compelling, the mere lack of this level of detail is not a good reason to doubt the coherent and frankly believable account set out in the Opponent’s evidence.
A substantial question raised in the Applicant’s submissions asks what happened to the letter issued from this office in response to the filing of the NIO. That letter explicitly put the Opponent on notice of its SGP deadline. The official file indicates that the letter was mailed to the Opponent’s PO Box on 28 May 2019. None of the Opponent’s evidence so much as mentions it. While it is possible that letters get lost in the mail, this is a relatively rare event. I note that the Opponent has not yet had an opportunity to respond to this point. Rather than re-open the proceedings, however, on balance I do not consider this omission to be fatal to the Request. It must be borne in mind that at this point the Opponent was acting on its own behalf and
assessing the conduct and state of mind of a person who is not a patent attorney against standards of what a competent attorney would have known, or would have done, to determine whether a discretion should be exercised, is wrong in principle.[16]
[16] GS Technology Pty Ltd v Commissioner of Patents (2004) 63 IPR 9, 25 [72] (Spender J).
In all the circumstances it is more likely than not that the Opponent was relying on prior discussions with the Opponent’s Attorney as to the relevant deadlines (and, as has been covered, the Opponent’s Attorney was in turn relying its understanding of a factual setting that had changed without notice).
The Applicant also submits that the misapprehension of the Opponent’s Attorney as to the SGP deadline is not causally linked to the failure to file the SGP on time. This argument again assumes a comprehensive account is required to justify an extension of time. In particular, the there is no direct evidence of any instruction from the Opponent to the Opponent’s Attorney that the SGP should be filed on the last possible day. The Applicant’s preferred account is that since the Opponent instructed the Opponent’s Attorney to file the SGP in emails sent on 12 and 20 June 2019, that these instructions should have caused the filing of the SGP. My sense is that this ignores the content and tone of the emails which refer to earlier discussions. It may reasonably be inferred from the material in evidence that those discussions related at least in part to timing. Even were I to construe this evidence as the Applicant would prefer, then the Attorney’s failure to act on instructions and file either on or around 12 or 20 June 2019, both well within time, would itself provide the basis for grant of an extension of time.
Decision and costs
I am satisfied that that the grounds set out in the Request justify an extension of one day, and the explanation given for the delay is sufficient. There being no apparent discretionary reasons to refuse, I grant the Opponent’s request for an extension of time to 25 June 2019 in order to file its SGP.
Both parties have asked that costs be awarded. Costs typically follow the event, and I see no reason in the present circumstances to depart from that general rule. I award costs against the Applicant.
Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
27 May 2020
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