Leafmesh Pty Ltd v MISS Ma Christina Ranola

[2023] ATMO 201

TRADE MARKS ACT 1995

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

ReApplication for an extension of time to file evidence in answer by MISS Ma Christina Ranola in an opposition by Leafmesh Pty Ltd to registration of the trade mark subject of application 2156179 (37) – LEAFSHIELD – in the name of MISS Ma Christina Ranola

Delegate:                 Robert Wilson

Representation:       Extension Applicant: Mr Grayson O’Connor

Extension Objector: Written submissions by Intellepro Patent & Trade Mark Attorneys        

Decision:                   2023 ATMO 201

Trade Marks Act 1995 (Cth): Application under reg 5.15 to extend the period for filing evidence in answer – exceptional circumstances and extension granted in respect of some documents only

Background

1.       This decision concerns an application for an extension of time to file Evidence in Answer (‘EIA’) during a proceeding to oppose registration of a trade mark. The trade mark concerned is the subject of the application for registration detailed below. The application for registration is in the name of MISS Ma Christina Ranola (‘Applicant’). The opposition to registration was brought by Leafmesh Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth). The Applicant is also the person that has applied for the extension of time.

Trade Mark:

 LEAFSHIELD

Application Number:

2156179

Filing Date:

16 February 2021

Specification:

Class 37: (including) Building services; Cleaning services

Full specification appears in the annexure to this decision.

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

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

2. Acceptance of the registration application was advertised in the Australian Official Journal of Trade Marks on 7 September 2021. The Opponent filed a Notice of Intention to Oppose on 5 November 2021 and a Statement of Grounds and Particulars on 3 December 2021. The Applicant filed a Notice of Intention to Defend on 20 March 2022. The Opponent filed its Evidence in Support within the usual time allowed on 30 June 2022. The All Evidence in Support Filed notice sent to the Applicant indicated that the due date for filing its EIA was 1 October 2022 (being three months from the date of the notice). 1 October 2022 was a Saturday, accordingly, any EIA filed on Monday, 3 October 2022, was filed in time.[1]

   [1] Section 223A.

   Part EIA filed in time and extension requested

   4.       On 3 October 2022, the Applicant filed a declaration as EIA. That declaration was made by the Applicant on 3 October 2022 and was accompanied by Appendices 1 to 10 (‘Ranola 1’); this declaration was filed in time. On the same day the Applicant applied for an extension of two months to the period allowed for filing EIA. The extension application was supported by a declaration made by the Applicant on 3 October 2022 (‘Extension declaration’). If granted, that extension would make the new due date for filing 1 December 2022. The request for an extension of time was made pursuant to reg 5.15.

   Further EIA filed late

   5.       On 6 November 2022, further EIA was filed. The further EIA consisted of:

   ·     declaration made on 5 November 2022, by the Applicant, with Appendices 11 to 15 (‘Ranola 2’). Beyond the usual introductory statements, this declaration does no more than list Appendices 11 to 15; and

   ·     declaration made on 5 November 2022, by Grayson O’Connor (‘O’Connor declaration’). This declaration includes a number of statements of fact.

3. The documents listed above were filed after the original due date, but before what would be the new due date should the extension request be granted. The extension request concerns only the filing of this evidence.

   First consideration of extension request – intention to refuse

   7.       A delegate of the Registrar of Trade Marks considered the extension request and by correspondence dated 19 June 2023, indicated her intention to refuse the request. The delegate indicated her view that the information provided in the extension request was insufficient to justify granting the extension. The delegate provided the Applicant with an opportunity to provide further information to support the extension request, or to request to be heard.

   Second consideration of extension request – intention to grant

   8.       On 3 July 2023, the Applicant provided further information to support the extension request (‘3 July correspondence’). Having considered the further information, the delegate indicated her intention to grant the extension request. In accordance with reg 5.4(3), via correspondence dated 11 August 2023, the Opponent was given an opportunity to make representations on the extension request or to request to be heard.

   Third consideration of extension request – intention to refuse

   9.       On 23 August 2023, the Opponent filed submissions objecting to the grant of the extension request (‘Opponent’s submissions’). The Opponent’s submissions were prepared by Intellepro Patent & Trade Mark Attorneys. Having considered those submissions, the delegate, by correspondence dated 4 September 2023, indicated her intention to refuse the request. The delegate provided the Applicant with an opportunity to respond to the Opponent’s submissions or to request to be heard.

   Fourth consideration of extension request – intention to refuse

   10.     On 18 September 2023, the Applicant filed correspondence which was intended to clarify some circumstances ‘regarding the issues I have been facing’. The correspondence did not alter the delegate’s intention to refuse the extension request. By correspondence dated 19 October 2023, the delegate reiterated her intention to refuse the extension request and provided the Applicant with an opportunity to be heard.

   Hearing requested and Applicant heard

   11.     On 30 October 2023, the Applicant requested to heard on the extension request. By correspondence dated 17 November 2023, the Opponent was advised of the Applicant’s request to be heard and that a hearing had been scheduled. The Opponent was given the opportunity to appear at the hearing. The Opponent did not avail itself of this opportunity.

4. In my capacity as a delegate of the Registrar I heard the matter on 4 December 2023. Oral submissions were made on behalf of the Applicant by Mr Grayson O’Connor.

   Material considered in making this decision

   13.     The material discussed above, along with Mr O’Connor’s oral submissions, were taken into account in making this decision.

   The Relevant Law

5. Regulation 5.15 gives the Registrar a discretionary power to grant extensions of time for filing EIA. The regulation reads:

   (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.

6. Regulation 5.15 indicates that there are two separate grounds on which the Registrar may grant an extension of time. The first is the ‘all reasonable efforts’ and ‘promptly and diligently’ ground provided for by reg 5.15(2)(a). The second is the ‘exceptional circumstances’ ground provided for by reg 5.15(2)(b). The extension application indicates that the Applicant seeks to rely on both grounds. Only one ground need be satisfied for it to be open to the Registrar to grant the request. There was no clear indication in the written material from the Applicant as to what circumstance(s) she considered supported which ground(s). At the hearing, it became clear that the ‘exceptional circumstances’ ground was the applicable ground.

   Appendices 11 to 15 – extension granted

   16.     The Extension declaration consists, essentially, of a single paragraph in which it was indicated, ‘Due to an issue with my Optus internet and the recent data breach, I have encountered an error in submitting my Evidence in Answer. I wish to apply for a 2 month extension of time’.

7. The 3 July correspondence elaborated on the consequences to the Applicant of the Optus data breach; it stated, inter alia:

   After the Optus data breach of the 22^nd September 2022 our office was forced to reset much of our internet connections and to completely replace our modem. The modem was meant to be installed on Friday the 30^th of September but was actually installed on Monday the 3^rd of October. These issues were beyond my control.

   On the 3^rd of October 2022, I was attempting to finalise and upload all of my EIA, unfortunately this was not possible because my Appendixes 11 to 15 were not able to be extracted from the zip folder that they had been provided to me in. I attempted to open this zip folder and extract the files but this was unsuccessful. …

8. The Opponent’s submissions addressed a number of aspects of the 3 July correspondence with conclusions including that it is ‘concerned about the veracity of the reasons given’. The first of the Opponent’s concerns relate to the statements regarding the modem in the first sentence of the 3 July correspondence. The Opponent noted that part of the evidence was ‘in fact filed on 3 October 2022’ then went on to pose the question ‘Which modem was used to file this evidence?’ and noted that there ‘is no explanation as to why that modem could not have been brought into service’.

9. The Opponent then noted that ‘notwithstanding the availability of a modem’ there is a separate issue of the Applicant being able to access the documents appended to Ranola 2 on 3 October 2022 ‘due to a zip folder access issue’. The Opponent submitted, referring to the second sentence of the 3 July correspondence:

   This reason is explicitly clear, that on 3 October 2022 the Applicant had what was eventually filed on 6 November 2022 in a zip folder that she could not open on 3 October 2022 as she was attempting to finalise and upload all of my EIA. [emphasis added by Opponent].

   Unless I am wrong I understand that all of my EIA includes what was filed in part on 3 October 2022 and the remainder on 6 November 2022.

   The opponent is concerned about the veracity of the reasons given as [the O’Connor declaration was made on 5 November 2022].

   There may be an explanation for this but at present the statement of reasons concerning the zip folder having at least that file, to upload on 3 October 2022, would appear to be false.

   In addition there is no explanation why a zip folder could not be opened for over a month when co-incidentally a document dated 5 November is uploaded a day later. There is no explanation as to how a document dated 5/11/22 could have been present in the zip folder on 3 October 2022. On the face of it could not have been. This places all the other documents at issue, were any of them in the zip folder? Did the zip folder even exist? …

   In the circumstances we think it is incumbent on the delegate to not grant an extension without a full and frank and honest disclosure or at least seek a further explanation addressing this date inconsistency before granting the extension.

10. At the hearing the Applicant clarified some facts which, in my mind, addressed many of the Opponent’s concerns. Most importantly, the appendices that were intended to be filed with Ranola 1 fell into two categories. The first—Appendices 1 to 10—were files held locally on a computer. The second—Appendices 11 to 15—were documents stored in cloud based storage. I am satisfied that the lack of clarity, and seeming inconsistency, in the documentation filed to support the extension request was a result of the lack of experience and sophistication of the Applicant in dealing with matters of this type with the Registrar.

11. The Optus data breach occurred on 22 September 2022, some nine days before the due date for the filing of the EIA. It was submitted that the Optus data breach caused issues including the Applicant’s internet connection being unreliable and intermittent. It was further submitted that the poor internet connection resulted in unsuccessful attempts to download the documents stored on cloud based storage: specifically, that the files suffered from corruption and could not be successfully unarchived. I am satisfied, on the balance of probabilities, that this representation is true. I am also satisfied that the Optus data breach was an exceptional circumstance—being a circumstance beyond the control of the Applicant—which resulted in the Applicant being unable to file Appendices 11 to 15 at the same time as Ranola 1 and Appendices 1 to 10. Ranola 2 contains no statements beyond putting Appendices 11 to 15 into evidence (and potentially the O’Connor declaration which is dealt with below). Accordingly, I grant the extension request in respect of Ranola 2 and Appendices 11 to 15 under reg 5.15(2)(b).

    The O’Connor declaration – extension refused

    22.     There were no submissions that the O’Connor declaration was not filed in time because of the Optus data breach—given that the declaration was made on 5 November 2022, this is not surprising. Mr O’Connor explained at the hearing that the intention of his declaration was simply to summarise what appeared in Appendices 11 to 15. I am not satisfied that there are grounds for grating an extension of time to file the O’Connor declaration on the basis of exceptional circumstances under reg 5.15(2)(b).

12. Neither were there any submissions that satisfied me that the O’Connor declaration fell under reg 5.15(2)(a). Given the nature of the declaration and the date it was made this, too, is not surprising.

13. I am not satisfied that it is appropriate to extend the due date for filing the EIA in respect of the O’Connor declaration. Accordingly, the extension request is refused in respect of that declaration.

    Decision

    25.     I am satisfied that there are exceptional circumstances that justify the requested extension of time for the Applicant to file the EIA that it could not file on time; specifically, Ranola 2 and Appendices 11 to 15. Accordingly, I grant the extension request in respect of those documents. I am not satisfied that there are grounds for granting an extension of time to file the O’Connor declaration. Accordingly, that declaration will not form part of the EIA in the opposition to registration.

14. For the sake of clarity, the EIA in the substantive opposition matter will consist of:

    ·Ranola 1 and Annexures 1 to 10; and

    ·Ranola 2 and Annexures 11 to 15.

15. The parties will be notified in due course of the period for the Opponent to file its evidence in reply.

    Robert Wilson
    Hearing Officer
    Trade Mark and Designs Hearings
    6 December 2023

    
    

    Annexure

    The Applicant’s Services

    Class 37: Building services; Cleaning services; House cleaning services; Installation of roofing; Roofing services; Installation of fittings for buildings; Installation of fixtures and fittings for domestic premises; Advisory services relating to building construction materials; Building construction; Building construction advisory services; Building construction consultancy; Building construction supervision; Providing information, including online, about building construction, and repair and installation services; Provision of information in relation to building construction; Extermination of pests; Pest control services, other than for agriculture, aquaculture, horticulture and forestry; Proofing of buildings against pest and vermin access; Proofing of land against pest and vermin access; Proofing of premises against pest and vermin access; Proofing of structures against pest and vermin access; Erection of scaffolding; Hire of scaffolding; Scaffolding; Scaffolding dismantling; Hire of ladders; Maintaining and repair of roof guttering; Fitting services in relation to buildings; Diagnosis of building faults; Dismantling services; Roof repair; Diagnostic maintenance services; Waterproofing of buildings; House painting; Painting and decorating; Unblocking of drains; Repair services; Mending; Plumbing; Servicing of apparatus; Servicing of equipment; Waste removal (cleaning); Refurbishment; Handyman repair, maintenance and installation services; Maintenance of buildings; Property maintenance; Tailoring (repair)