MAISON A.E. DOR v Soft Construct Limited

[2023] ATMO 13

TRADE MARKS ACT 1995

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

Re:Request by MAISON A.E. DOR for an extension of time to file a Statement of Grounds and Particulars in the opposition by MAISON A.E. DOR to registration of trade mark application number 2180773 (classes 32, 33) – DOOR (figurative) – in the name of Soft Construct Limited.

DELEGATE:  Nicholas Smith

REPRESENTATION:              Opponent: Marine Guillou of Philips Ormonde Fitzpatrick

Applicant: Andrew Caska of Caska Intellectual Property Pty Ltd

DECISION:  2023 ATMO 13

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

1. This decision concerns a request made by MAISON A.E. DOR (‘Opponent’) for an Extension of Time (‘EOT’) to file a Statement of Grounds of Particulars (‘SGP’) in the opposition to registration of the mark which is the subject of Australian trade mark application 2180773.

   Application Number:   2180773

   Filing Date:  21 May 2021

   Goods:Class 32: Beer and brewery products; ales; lagers; shandy; beer-based beverages; non-alcoholic fruit juice beverages; fruit juices; waters; mineral water; lemonades; cola; tomato juice; vegetable juices; nonalcoholic beverages; Flavoured carbonated beverages; carbonated water; Non- alcoholic beverages; cocktails, non-alcoholic; cider, non- alcoholic; kvass; non-alcoholic beverages flavoured with tea; soft drinks; energy drinks; non-alcoholic dried fruit beverages; Non-alcoholic preparations for making beverages; concentrates for making fruit juices; concentrates for making soft drinks; cordials; Nut and soy based beverages; coconut-based beverages; Waters; energy drinks; frozen carbonated beverages; frozen fruit- based beverages; ginger beer; honey-based beverages; protein drinks; smoothies; syrups for making beverages; preparations for making all of the above

Class 33: Alcoholic beverages (except beer); aperitifs; arak; distilled beverages; cider; cocktails; wine; gin; liqueurs; mead; spirits (beverages); brandy; sake; whisky; alcoholic drinks; alcoholic beverages containing fruit; rum; vodka; Absinthe; Alcoholic energy drinks; Alcoholic cocktail mixes; Alcoholic jellies; Alcopops; Cachaca; Chinese brewed liquor (laojiou); Chinese mixed liquor (wujiapie-jiou); Chinese spirit of sorghum (gaolian-jiou); Chinese white liquor [baiganr]; Coffee-based liqueurs; Cream liqueurs; Curacao; Digestifs [liqueurs and spirits]; Kirsch; Liqueurs; Mead [hydromel]; Mulled wine; Natural sparkling wines; Perry; Pre-mixed alcoholic beverages; Preparations for making alcoholic beverages; Prepared alcoholic cocktails; Prepared wine cocktails; Sake; Sangria; Schnapps; Sparkling wines; Spirits [beverages]; Vermouth.

Trade Mark:  (‘Trade Mark’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

1. The application was advertised as having been accepted for possible registration on 4 July 2021. This set a deadline of 4 September 2021 for any person to commence the opposition process. On 8 September 2021 the Opponent filed a Notice of Intention to Oppose (‘NIO’) and a request for an extension of time to file the NIO. The Opponent failed to file the SGP by the 8 October 2021 deadline.

1. On 10 November 2021 this office wrote to the Opponent indicating that the SGP had not been filed by the deadline and if the Opponent intended to pursue the Opposition the SGP must be accompanied by a separate extension of time request. This was acknowledged by the Opponent on 16 November 2021 who stated in its correspondence that ‘We note that we should apply further extensions of time to file the Statement of Grounds and Particulars, however, we are of the view we should deal with those extensions of time separately’.

1. On 29 November 2021 this office wrote to the Opponent indicating an intention to refuse the extension of time in respect of the NIO. Following further supplementary declarations provided by the Opponent, on 4 February 2022 this office sent a communication to the parties indicating that it intended to grant an extension of time to 4 October 2021¹ but that the parties had 10 business days from the date of the letter to make representations on the extension of time. If no objection was received or hearing requested, the extension would be granted.

1. On 17 February 2022 representatives from Soft Construct Limited (‘Applicant’) communicated with IP Australia in respect of the 4 February 2022 letter objecting to the extension of time. It does not appear from either the evidence provided by the Opponent or the records of IP Australia that this letter, or the fact that, by reason of the objection having been received, the extension of time to file the NIO had not yet been granted, was communicated to the Opponent.

1. On 16 March 2022, a representative from IP Australia called the Opponent and indicated that IP Australia had received submissions from the Applicant but that IP Australia was willing to grant the extension of time to file the NIO. She advised that the SGP was out of time and that the Opponent would have to file a SGP by 18 March 2022 and seek an EOT to file the SGP from 6 October 2021 to 6 April 2022.²

2. On 18 March 2022 the Opponent filed the SGP, the EOT requesting an extension of time to 6 April 2022 and in support, a declaration of Marine Guillou, registered trade marks attorney of Philips Ormonde Fitzpatrick, the Opponent’s Representatives, dated 18 March 2022 (‘Guillou 1’).

1. On 31 March 2022 this office formally granted the extension of time to file the NIO.

1. On 8 August 2022 a delegate of the Registrar wrote to the Opponent, indicating an intention to refuse the EOT and provided the Opponent with 14 days to file a supplementary declaration with a full and frank explanation of all circumstances leading to the late filing of the SGP. On 15 August 2022 the Opponent filed a second declaration of Marine Guillou, dated 15 August 2022 (‘Guillou 2’).

¹ The extension of time request was for a one-month extension notwithstanding the NIO was filed 4 days late.

² It is unclear why the 6 October 2021 date was used as the deadline to file the SGP was 8 October 2021, being 1 month from the date the Opponent filed the NIO.

1. The additional declaration was considered by a delegate of the Registrar and on 21 September 2022, the delegate notified each party that she intended to refuse the EOT, providing the Opponent 14 days to request a hearing. On 5 October 2022 the Opponent sought a hearing by video-conference. The matter was set down for hearing on 6 December 2022 and I was assigned to conduct the hearing in my capacity as delegate of the Registrar of Trade Marks. On 15 November 2022 I set down a timetable for the filing of submissions and any further material. The Opponent filed written submissions on 28 November 2022 (‘Opponent’s Submissions’) and in support filed a third declaration of Marine Guillou, dated 28 November 2022 (‘Guillou 3’). The Applicant filed written submissions on 2 December 2022 (‘Applicant’s Submissions’). At the hearing Russell Waters of Philips Ormonde Fitzpatrick represented the Opponent and Andrew Caska of Caska Intellectual Property Pty Ltd represented the Applicant, both appearing by video-conference.

1. At the hearing it became apparent that the Applicant had not been provided with Guillou 3 and thus had not had the opportunity to file written or oral submissions on this material. Following the hearing I made directions that the Applicant have until 4 January 2023 to file additional written submissions in this matter. The Applicant filed further written submissions on 3 January 2023.

1. Guillou 1 and 2 sets out much of the background to the present proceeding summarised above. Guillou 3 sets out Ms Guillou’s understanding of what occurred between 4 February and 16 March 2022. Specifically, Ms Guillou understood that she needed to file the SGP after the extension of the NIO was approved but that she had never been provided with any particular deadline after 4 February 2022 since the 4 February 2022 document merely indicated that IP Australia intended to grant the extension and was providing the Applicant with an opportunity to comment. Ms Guillou claims that she only became aware of the urgency of the matter in her phone call on 16 March 2022 and that IP Australia indicated that it would accept the SGP provided it would be filed before the end of the week, which it was.

The extension of time provisions

1. The application for extension is made pursuant to reg 5.9(1)(b) which is reproduced below:

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.

1. The EOT only 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. The relevant principles are thus well established. In summary they are:

·The Opponent ‘carries the burden of establishing an appropriate case to justify [an extension of time]’.³

·This burden ‘does not amount to a burden of proof and it is not appropriate that it should be so described’.⁴

·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.⁵

·Just because a decision is shown to be mistaken does not render it a relevant error or omission.⁶

·The relevant ‘error or omission’ must precede the failure to comply with the Deadline and not be the failure itself.⁷

1. The expression ‘error or omission’ 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

³ Vangedal Nielsen v Smith (Commissioner of Patents) (1980) 33 ALR 144, 149 (Bowen CJ).

⁴ Re Sanyo Electric Co Ltd and Commissioner of Patents (1996) 36 IPR 470, 479 (Deputy President McDonald).

⁵ Kimberly-Clark Ltd v Commissioner of Patents (No 3) (1988) 84 ALR 685 (Jenkinson J).

⁶ Ibid 695.
⁷ Golden Buffalo Group Pty Ltd v Posh Lifestyle Pte Pty Ltd [2022] ATMO 104, [15] (Hearing Officer Barbey).

Commissioner of Patents (No 3) (‘Kimberly-Clark’),⁸ Jenkinson J provided the following insight on this expression as it appeared in s 160(2) of the Patents Act 1952 (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.⁹

1. 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.¹⁰ That is, the mere failure to file the SGP by the 8 October 2021 deadline does not demonstrate that a relevant ‘error or omission’ has occurred. Rather, to establish the ground under reg 5.9(4)(a), the ‘error or omission’ relied upon must be antecedent to, and have a causal relationship with, the failure to file the SGP by the deadline.

1. 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.

1. 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.

⁸ [1988] FCA 421 (‘Kimberly-Clark’).

⁹ Ibid [10].

¹⁰ Ibid [9], [11].

1. The Opponent’s Submissions argue that the error in reg 5.9(4)(a) was a failure by the Opponent’s representative to appreciate that the SGP had to be filed notwithstanding that the outcome of the extension of time application to file the notice of intention to oppose was not yet known.

1. The Opponent’s Submissions also raise the possibility of error by representatives of IP Australia in their conduct from November 2021 to March 2022. The Opponent submits that IP Australia was somehow at fault for failing to advise the Opponent, who is legally represented by a specialist IP firm, that the Opponent should seek to file the SGP as soon as possible after the deadline, or that there was a possibility that an EOT application for the SGP would not be granted. Such submissions are both incorrect and irrelevant, as even if IP Australia had made an error between November 2021 and March 2022 this could not have caused the Opponent to miss the 8 October 2021 deadline.

1. The Applicant submits that the Opponent’s representatives, who are experienced practitioners, were aware of the deadline of 8 October 2021 and the Opponent chose not to file the SGP by the deadline in order to save costs. I do not consider that this submission is plausible given the evidence of the Opponent’s conduct in this matter. Firstly, I consider that the Opponent has made a full and frank disclosure of its conduct in this matter and it does not disclose an awareness of the 8 October 2021 deadline prior to 8 October 2021. Secondly, it would be very unusual practice for a party to ‘save costs’ by deliberately delaying the filing of a document until after a deadline, thus incurring the cost and risk of an application of an extension of time, which has occurred in this case.

1. I am satisfied from the evidence before me that the Opponent’s representatives were under the misapprehension that they were not required to file the SGP until after the extension of time to file the NIO had been resolved, rather than by 8 October 2021. I am satisfied that this error was the reason that the Opponent did not file the SGP by 8 October 2021 – given the efforts made by the Opponent with respect to the application to extend the time to file the NIO it undoubtedly would have filed the SGP by 8 October 2021 were they aware of the specific requirements. This is supported by the records of communication from IP Australia to the Opponent on 10 November 2021 where it notifies the Opponent that the SGP has not been filed and the EOT must now be filed at the time the SGP was filed. I find that this is a genuine error by the Opponent’s representatives under reg 5.9(4)(a) that resulted in the SGP not being filed

by the deadline. I note that the Opponent was informed about this requirement on 10 November 2021 and chose not to file the EOT until March, but that is a matter to be discussed under the question of discretion, rather than whether a reg 5.9(4)(a) error has arisen.

1. However, that is not the end of the matter: as indicated above, reg 5.10 is a discretionary provision and the application of the Registrar’s discretion will be discussed below.

The Registrar’s discretion

1. 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, including the desirability of operating the trade mark system efficiently and without unreasonable delays.¹¹

2. Due to a number of factors, including delays in resolving this EOT and the extension of time application for the NIO, this is a matter that has been significantly delayed and what should have been an opposition proceeding commencing in 4 September 2021 has, at least partially due to the failure of the Opponent to promptly file their NIO and the Opponent’s representatives to appreciate the need to file the SGP by 8 October 2021, been delayed at least 18 months. The Applicant has suffered significant inconvenience in this matter as a result of the ongoing delay in the resolution of this proceeding. I do not treat lightly the impact the ongoing uncertainty about the status of this proceeding has on the Applicant.

1. However, desirable as it may be that the time limits imposed by the Act and the Regulations are adhered to, there is a significant public interest 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’.¹² I consider that at this stage the public interest is served if the substantive opposition is allowed to continue and be resolved before the Registrar rather than the Opponent having to bring a separate application to cancel the Trade Mark in court, which it could do on the basis of the same grounds on which the Opposition is brought.

¹¹ 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.

¹² Kaiser Aluminium & Chemical Corporation v Reynolds Metal Company [1969] HCA 7, [14] (Kitto J).

1. The Applicant submits that such a discretion should not be exercised due to the conduct of the Opponent and that the Opponent made a conscious decision to delay filing the SGP and the EOT for the SGP, for as long as possible and that the Opponent has not displayed an intention to expeditiously attend to the matter. The Applicant makes much of the Opponent’s decision not to file the SGP following receipt of the e-mail from IP Australia sent on 10 November 2021 notifying the Opponent that the SGP had not been filed by the deadline and that an EOT would have to be filed with the SGP. I agree with the Applicant that the Opponent, in its letter of 16 November 2021, took the view that the SGP and EOT applications must be filed and considered separately to the extension of time application for the NIO. However, there are two relevant factors here that operate in favor of the Opponent. Firstly, based on the evidence of Ms Guillou, it does not appear that she was aware or informed by the previous solicitor in charge of the matter that the SGP and EOT had to be filed promptly regardless of the outcome of the extension of time application for the NIO. Secondly, it is difficult to see how the Opponent’s conduct here has delayed the proceeding in any way. Had the Opponent filed the SGP and EOT shortly after 10 November 2021 it would not have been considered until after the extension of time to file the NIO had been resolved (i.e. shortly after 16 March 2022). The Opponent filed the SGP and EOT on 18 March 2022, within 2 days after being notified that extension of time to file the NIO had been granted, so no practical delay resulted from the Opponent’s conduct.

1. Moreover, I do not consider the Opponent’s conduct of the proceeding as a whole demonstrates anything other than a clear intention to maintain an ongoing opposition that has unfortunately been delayed due (in the case of the NIO) to the impacts of Covid and (in the present case) by an error by their representative. I do not find that any aspect of the Opponent’s conduct around the SGP, other than the reg 5.9(4)(a) error, is sufficiently egregious as to justify shutting the Opponent out of what is clearly a legitimate attempt to oppose the registration of the Trade Mark.

1. For the above reasons, I am satisfied that it is appropriate to exercise the discretion under reg 5.10 and grant the EOT for the length of time sought.

Decision

1. I am satisfied that the Opponent’s failure to file the SGP by 8 October 2021 was the result of an ‘error or omission’ as contemplated by reg 5.9(4)(a). I find that the circumstances justify the

extension sought and it is appropriate to exercise the discretion to grant an extension under reg 5.10. As such, I grant the extension request to extend the deadline to file the SGP to 6 April 2022. I direct this office to provide the SGP to the Applicant, and note that pursuant to reg 5.13, the notice of intention to defend must be filed within one month from the day the Applicant is given a copy of the SGP.

1. Neither party as sought orders as to costs and as the Opponent is seeking the exercise of discretion from a Delegate of the Registrar I make no orders as to costs.

Nicholas Smith Hearing Officer

Delegate of the Registrar of Trade Marks 7 February 2023