LM Sports Pty Ltd as Trustee for TJNL Enterprises Trust v the Racing League Pty Ltd

[2022] ATMO 81

TRADE MARKS ACT 1995

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

Re:Request by The Racing League Pty Ltd for an extension of time to file a Notice of Intention to Defend in the opposition by LM Sports Pty Ltd as trustee for TJNL Enterprises Trust to registration of trade mark application number 2114349 (class 41) – TRL THE RACING LEAGUE with device – in the name of The Racing League Pty Ltd.

Delegate:	Nicholas Barbey
Representation:	Opponent: Self-represented Applicant: Cirrus Legal Pty Ltd
Decision:	2022 ATMO 81 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 established – extension granted – intention to direct that opponent has three months to file evidence in support of the opposition.

Background

1. This decision concerns a request made by The Racing League 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 2114349.

2. By way of background, LM Sports Pty Ltd as trustee for TJNL Enterprises Trust (‘Opponent’) filed a notice of intention to oppose together with a Statement of Grounds and Particulars (‘SGP’) on 11 March 2021. The SGP was initially assessed as being inadequate and the Opponent later rectified it. The Applicant was subsequently given a copy of the rectified SGP on 2 June 2021. Pursuant to 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, 2 July 2021 (‘Deadline’).

3. On 25 June 2021, the Applicant applied for an EOT to file the NID (‘Request’) which included a declaration made by Gerard Patane, principal solicitor of Cirrus Legal Pty Ltd, made on 25 June 2021 (‘Patane 1’). According to Patane 1, the NID was unable to be filed by the Deadline because the attorney responsible for the matter was on leave. A one month extension to the Deadline was requested so that the attorney could obtain instructions and file the NID. No response from IP Australia was received and the Applicant proceeded to file the NID on 26 July 2021.

4. On 22 November 2021, a delegate of the Registrar of Trade Marks (‘Registrar’) notified the Applicant of their intention to refuse the Request because the information disclosed failed to particularise the attorney’s leave dates and it proffered no explanation as to why another attorney could not file the NID. The Applicant was given the option of either filing a supplementary declaration clarifying why the NID was not filed by the Deadline or request to be heard.

5. The Applicant responded by filing a supplementary declaration made by Gerard Patane on 6 December 2021 (‘Patane 2’). Mr Patane states that he is a sole practitioner with expertise in property, commercial and media law. If his clients require assistance outside of these areas, ‘the services of a contract solicitor’ are used.[1] Patane 2 detailed the following chronology of events preceding the NID being filed:

   a)After receipt of the rectified SGP on 2 June 2021, it took approximately one week to obtain instructions from the Applicant;

   b)On or about 11 June 2021, Mr Patane briefed Larry Noble, a patent attorney, and requested that Mr Noble ‘provide legal advice and an estimate of costs to file a notice of intention to defend’.[2] Mr Noble informed Mr Patane that he had ‘pre-arranged leave at the end of June/early July’ and would not be available ‘until at least 3 July 2021’;[3]

   c)On or around 16 June 2021, Mr Patane phoned IP Australia to notify it that additional time to file the NID would likely be required. Mr Patane declares that IP Australia’s representative advised that an EOT request would need to be lodged and assured him that obtaining the extension ‘would not be an issue’.[4] Mr Patane was especially concerned about not receiving a response prior to the Deadline. However, IP Australia’s representative informed him that they ‘had never seen [an EOT request] refused’;[5]

   d)On 25 June 2021, the Applicant filed the Request seeking an additional one month in order to extend the Deadline to 2 August 2021;

   e)On 26 June 2021, Greater Sydney went into lockdown. Mr Patane declares that this was very disruptive. In particular, Mr Noble was ‘stuck down the coast’ and was prevented from meeting with the Applicant until 22 July 2021; and

   f)On 26 July 2021, the NID was filed. Mr Patane highlights the filing date as being approximately one week earlier than the one month extension to the Deadline sought.

   [1] Patane 2, [3].

   [2] Ibid [5].

   [3] Ibid [6].

   [4] Ibid [7].

   [5] Ibid.

6. Accordingly, Patane 2 submits the Applicant has acted promptly to comply with the Deadline and the above listed events warrant the Request being granted.[6]

   [6] Ibid [11].

7. On 14 December 2021, a delegate of the Registrar informed the Applicant that the intention to refuse the Request was being maintained. The delegate highlighted that Mr Noble’s pre-arranged leave was inconsequential given another attorney could have filed the NID. Similarly, the lockdown of Greater Sydney was immaterial given Mr Noble’s leave was scheduled to finish after the Deadline. The Applicant was provided with a final opportunity to be heard otherwise the Request would be refused.

8. The Applicant exercised its right to be heard and a hearing was scheduled. Directions were issued that invited both parties to file written submissions and/or any evidence that they wished to rely on at the hearing. The Applicant filed another declaration made by Gerard Patane on 18 February 2022 (‘Patane 3’). Patane 3 clarifies that Mr Noble returned from leave on 4 July 2021 and not 3 July 2021 as previously declared. Mr Patane declares that another attorney would have been engaged to file the NID had he not been informed by IP Australia to lodge the Request. The Opponent did not file any material and took no part in this proceeding.

9. As a delegate of the Registrar, I heard this matter by video conference on 2 March 2022. Gerard Patane and Larry Noble attended the hearing on the Applicant’s behalf.

   Discussion

   Relevant provisions

10. 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.

11. 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.
    …
    (3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.

12. 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 apparent 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.

13. At the hearing, Mr Patane explained that the Request was being sought on the basis of reg 5.13A(4)(a) of the Regulations being satisfied. That is, the Applicant’s position is that an ‘error or omission’ had been made by an employee[7] and this caused the Applicant’s failure to file the NID by the Deadline. 

    [7] Act s 6 defines an ‘employee’ as being ‘a person, other than the Registrar or a Deputy Registrar, who (a) is a person engaged under the Public Service Act 1999 and is employed in the Trade Marks Office; or (b) is not such a person but performs services, in the Trade Marks Office, for or on behalf of the Commonwealth’.

    Error or omission

14. The expression ‘error or omission’ appears in various places throughout the Act and the Regulations as well as in other Commonwealth legislation relating to intellectual property.[8] 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’),[9] Jenkinson J provided the following insight on this expression as it appeared in s 160(2) of the Patents Act1952 (Cth):

    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.[10]

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

    [9] [1988] FCA 421 (‘Kimberly-Clark’).

    [10] Ibid [10].

15. Relevantly, Jenkinson J also observed in Kimberly-Clark that the expression ‘error or omission’ should not be construed narrowly and pointed out 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.[11] 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 causal relationship with, the failure to file the NID by the Deadline.

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

16. In his oral submissions, Mr Patane emphasised that upon learning of Mr Noble’s leave, he phoned IP Australia to notify it of the Applicant’s likely inability to comply with the Deadline. Mr Patane reiterated that IP Australia’s representative advised him to apply for an EOT. Mr Patane states that IP Australia’s representative assured him that the Request would be granted and this allayed his concerns. Tellingly, had such an assurance not been given, Mr Patane asserts that another attorney would have been engaged to file the NID or he would have personally attended to it. As such, Mr Patane was ‘shocked’ to discover that the Request had been refused approximately five months after it had been lodged.  

17. Mr Noble confirmed Mr Patane’s version of events noting that he too was of the understanding that the Request would be granted. At the time, Mr Noble perused IP Australia’s streamlined EOT process available to those affected by COVID-19 and this provided further reassurance that the Request would be granted as advised by IP Australia’s representative. Mr Noble conceded that the streamlined process was no longer in effect when the Request was filed[12] but indicated he was of the understanding that such requests would still be favourably considered given the ongoing COVID-19 pandemic.

    [12] The streamlined process available to request extensions of time only applied until 31 March 2021. See ‘Business continuity and the Coronavirus disease (COVID-19) outbreak’ (Web Page, 24 August 2021) <>

    In my assessment, the information and material relied upon by the Applicant establish the existence of a relevant ‘error or omission’ by an employee as contemplated by the Regulations. The apparent failure of IP Australia’s representative to apprise Mr Patane of the consequences of not complying with the Deadline and communicate the inherent possibility that the Request may be refused are relevant but not determinative. Instead, it is the information communicated by IP Australia’s representative that obtaining the extension ‘would not be an issue’ which is critical insofar as it lulled the Applicant into a false sense of security and directly influenced the course of action adopted. This communication was plainly erroneous and should not have been conveyed to Mr Patane. It is clear that the Applicant relied on this information and proceeded on the basis that the Request would be granted. It follows that I am satisfied that but for this error, the NID would have been filed by the Deadline as declared in Patane 3.

    The Registrar’s discretion

18. Having found that a relevant ‘error or omission’ occurred, I must now consider whether the circumstances justify the extension being granted. Factors which have been held relevant to the exercise of the Registrar’s discretion include the relative inconvenience to the parties concerned as well as the public interest.[13]

    [13] See, eg, Re Hall [1997] ATMO 69 in the context of a late application for an extension of time for acceptance under s 224 of the Act.

19. Here, the extension of time requested is one month, being from 2 July 2021 to 2 August 2021. Evidently, the Request is not for a particularly lengthy extension and it was promptly lodged a week before the expiry of the Deadline. The information provided within the Request detailed why the extension was sought and, notably, the NID was subsequently filed within the extension period requested. This occurred despite a lack of any response from IP Australia to the Request.

20. At the hearing, Mr Noble highlighted that the first communication received from IP Australia was approximately five months after the Request had been submitted. By any reasonable measure, this is a rather delayed response time. During the intervening period, the Applicant proceeded on the understanding that the Request would be granted and the NID had been filed as it had no reason to believe otherwise. In Mr Noble’s view, the discretion should be exercised as refusing the Request now would ‘set the Applicant back quite a bit’[14] without any quantifiable detriment having occurred to the Opponent or its business. I agree and note that the Opponent, although invited, has chosen not to file any submissions or participate in the hearing. As such, there is no information before me as to what, if any, inconvenience it will be caused by the extension being granted.[15] However the Applicant will likely suffer greater inconvenience if the Request is not granted.

    [14] Act s 54A(1)(b) provides that the trade mark application will lapse if ‘the applicant does not file an intention to defend the application for registration of the trade mark within the prescribed period, or that period as extended (see section 52A)’.

    [15] Other than having to continue the opposition proceeding which the Opponent would have already considered and accepted when it elected to file the notice of opposition.

21. With respect to the public interest, there is a significant public interest in the efficient and predictable progression of opposition matters before the Trade Marks Office. In my opinion, achieving this efficiency includes ensuring that an application does not lapse simply because insufficient opportunity has been afforded to an applicant to defend it from opposition. While it is desirable that the time limits imposed by the Act and the Regulations are adhered to, there is a degree of flexibility built into the relevant provisions. To this end, it has been recognised that a public interest exists in serious matters being dealt with on their merits and not being ‘shut out in consequence of a failure in procedure, lamentable though the failure may be’.[16] Given the opposition is at an early but important stage, the public interest is served if the substantive opposition is allowed to continue and thereby avoid potential duplication of the Applicant lodging a new application for the same trade mark that is subsequently opposed by the Opponent.

    [16] Kaiser Aluminium & Chemical Corporation v Reynolds Metal Company [1969] HCA 7, [14] (Kitto J).

22. For the above reasons, I am satisfied that it is appropriate to exercise the discretion under reg 5.13B of the Regulations.

    Decision

23. I am satisfied that the Applicant’s failure to file the NID by the Deadline was the result of an ‘error or omission’ as contemplated by reg 5.13A(4)(a) of the Regulations. I find that the circumstances justify the one month extension sought and it is appropriate to exercise the discretion to grant an extension under reg 5.13B of the Regulations. As such, I grant the extension request.

24. For the purposes of the substantive opposition proceeding, pursuant to reg 5.19 of the Regulations, I intend to direct that the Opponent file and serve evidence in support of its opposition within three months from the date of this decision. Naturally, the parties may make written submissions regarding the proposed direction within two weeks of this decision. If neither party objects to the proposed direction by that time, this direction shall be taken as made.

    Nicholas Barbey
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    19 May 2022