MDCA Investments Pty Ltd v Mobile Dental Care Australia Pty Ltd - [2024] ATMO 221

TRADE MARKS ACT 1995

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

Re:Application by MDCA Investments Pty Ltd for an extension of time to file evidence in support of the opposition to registration of trade mark application number 2341816 (class 44) – MOBILE DENTAL CARE AUSTRALIA (figurative) - in the name of Mobile Dental Care Australia Pty Ltd.

Delegate:

Timothy Brown

Representation:

Opponent: Upekha Wedage of Rotstein Commercial Lawyers

Applicant: None

Decision:

2024 ATMO 221

Trade Marks Regulations 1995 (Cth) – application for extension of time to file evidence under section reg 5.15 – grounds for extension of time under regs 5.15(2)(a) established – application for extension of time granted.

Background

This decision concerns a request under regulation 5.15(1) of the Trade Mark Regulations 1995 (Cth)[1] made by MDCA Investments Pty Ltd (‘Opponent’) for an extension of time of one month to file evidence in support of the opposition to the registration of trade mark application number 2341816 (‘Application’) in the name of Mobile Dental Care Australia Pty Ltd.
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Opponent filed a Notice of Intention to Oppose on 2 October 2023, followed by a Statement of Grounds and Particulars on 2 November 2023. The Applicant subsequently filed a Notice of Intention to Defend on 6 December 2023.
In accordance with regulation 5.14, the Opponent was provided with a copy of the Notice of Intention to Defend on 12 December 2023 and informed that the Opponent’s Evidence in Support (‘EIS’) was to be filed by 12 March 2024.
On 12 March 2024, the Opponent filed an application for an extension of time (‘EOT’) of one month to file the EIS. The basis for the EOT was that the Opponent required more time to provide extensive evidence of prior use of Trade Mark Registration number 1772211 (‘Opponent’s Mark’). According to the Opponent, this process was complicated by the passing of the Opponent’s founder and sole director, Caitlin Wainrib, who was director of the Opponent from 2015 to 2020. The Opponent maintained that it had made all reasonable efforts to procure the relevant evidence despite the period for filing evidence occurring over the holiday season.
On 25 March 2024, a delegate of the Registrar of Trade Marks (‘Registrar’) advised the Opponent that the Registrar intended to refuse the EOT application. The delegate noted that insufficient information had been provided regarding the Opponent’s approach to preparing evidence during the relevant period, and that the Christmas holiday season did not constitute exceptional circumstances.
The Opponent filed its EIS on 8 April 2024, and on the 10 April 2024 the Opponent provided further information on the steps taken in relation to the preparation of the EIS and the challenges it had accounted. This included the following factors:

Difficulty accessing evidence of prior use of the Opponent’s Mark. Historical evidence of the Opponent’s promotional activities was linked to the former director’s email account and other online accounts, which included a Facebook account. According to the Opponent, the Opponent’s Mark was assigned to the Opponent in or around October 2020, and the Opponent did not have access to any historical data between July 2015 and 2020. This data included the Opponent’s client lists, revenue data and marketing expenditure during that time period. The EIS was substantially finalised as of 7 March 2024 apart from exhibits that required access to the former director’s Facebook accounts, and the historical information previously mentioned.
The office of the Opponent’s representatives was closed from 23 December 2023 to 15 January 2024. Principal solicitor, Mr Hamish Rotstein, who had primary carriage of the matter, was absent from 20 December 2023 to 31 January 2024.
The Opponent filed draft copies of its submissions on 12 March 2024.

On 22 April 2024, the delegate replied to the Opponent, maintaining the intention to refuse the EOT. The delegate noted that the Opponent’s submission highlighted the absences of key personnel during the EIS period, which, in the delegate’s view, indicated that there was a significant portion of time during which it appears the preparation of the EIS was not attended to. Furthermore, the delegate noted that no specific details had been provided regarding actions undertaken during the three-month period for providing EIS. The Opponent was given until 30 April 2024 to request a hearing in relation to the EOT application.
The Opponent requested to be heard on 30 April 2024. Written submissions were filed by the Opponent on 5 August 2024, and the matter was heard before me, a delegate of the Registrar, on the 15 August 2024. The Opponent was represented by Upekha Wedage of Rotstein Commercial Lawyers.

Evidence and Submissions

The Opponent has not filed any evidence in support of its EOT request. Rather, the Opponent relies on statements made in its EOT application, previous correspondence, written submissions and oral submissions.
In its written and oral submissions, the Opponent expanded on its activities and those of Rotstein Commercial Lawyers (‘RCL’) in relation to the preparation of the EIS:

Date	Event
13 December 2023	RCL received the Notice of Intention to Defend and informs Opponent that it will commence preparing the EIS.
23 December 2023 to 14 January 2024	RCL closed on account of Christmas and New Year. RCL also notes it was closed on Australia Day and Labour Day in Victoria (11 March 2024).
19 January 2024	RCL commenced preparation of the Opponent’s EIS and submissions.
19 January 2024 to 31 January 2024	RCL conducted online research for evidence of use of the Opponent’s Mark, including Wayback Machine searches, online web searches, and searches of various social media accounts managed by the Opponent.
1 February 2024	RCL commenced preparing the Opponent’s submissions, substantiating the grounds of opposition. RCL also conducted a video conference with Mr Glenn Wainrib seeking further instructions in relation to the EIS.
19 January to mid-February	The Opponent conducted internal searches and unarchived Ms Wainrib’s online accounts to obtain information relating to use of the Opponent’s Mark between 1 July 2015 and 20 February 2020, including marketing material and methods used to promote the Opponent’s Mark during this period, dates of various milestones, such as the adoption of the Opponent’s Mark, registration of the Opponent’s business name, launching of the Opponent’s website and the opening of the Opponent’s social media accounts. At this stage the Opponent also conducted searches for use of the opposed trade mark.
16 February 2024	RCL conducted a video conference with Glenn Wainrib and various members of the Wainrib family, including Stephen Wainrib, brother of the former director.
7 March 2024	RCL finalised a draft of the EIS. The draft was sent to Glenn Wainrib for his review and approval.
8 March 2024	Draft of the Opponent’s submissions is substantially completed.
11 March 2024	Public holiday in Victoria.
12 March 2024	RCL files submissions in relation to the grounds opposition. Although EIS is substantially finialised at this point, Mr Wainrib responded to RCL with instructions to remove certain confidential exhibits from the EIS and provided additional dates for inclusion in the declaration. Given the need to send another draft of the EIS to Mr Wainrib, the Opponent files for an EOT to file evidence.
8 April 2024	EIS is filed by Opponent.

Relevant Provisions

Regulation 5.15 provides:
(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.
Regulation 5.15(2) provides that an extension of time for filing evidence can only be granted if I am satisfied that the party has made all reasonable efforts to comply with the relevant filing requirements and the failure to file the evidence in time occurred despite the party acting promptly and diligently at all times to ensure the evidence was filed in time, or alternatively, if I am satisfied that there were exceptional circumstances that justify the extension of time.
The Opponent, being the party seeking an extension of time, bears the onus to satisfy the Registrar that the criteria in either regulation 5.15(2)(a) and (b) have been met.

Reasonable efforts, prompt and diligent at all times

Regulation 5.15(2)(a) requires that the party ‘has made all reasonable efforts to comply with all relevant filing requirements of this part’ and has acted ‘promptly and diligently at all times to ensure the filing of the evidence within the period’.
In TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy[2] (‘TRED’), a decision made under the equivalent extension of time provisions of the Patents Regulations1991 (Cth), the delegate explained:
While the two legs are similar, the "reasonable" leg relates to "all relevant filing requirements", whereas the "promptly and diligently" leg relates to the period for filing "the appropriate evidence". Reasonableness appears to relate to conduct over the whole of the opposition, and not just the current evidence stage. I would expect that often where a person has acted reasonably, they will also have acted promptly and diligently (an exception might be where a person was diligently preparing evidence that was unnecessary for the opposition). The question posed by the regulation is whether the person seeking the extension satisfies each leg of the test. Where they fail to satisfy one of the legs, then an extension will not be available (in the absence of exceptional circumstances).[3]
[2] [2013] APO 57 (Delegate Baker, Dr).
[3] Ibid [28].
Accordingly, regulation 5.15(2)(a) requires consideration of the party’s conduct over the totality of the opposition proceedings. However, if a party has been prompt and diligent in relation to its preparation and filing of evidence, then it will likely also have made all reasonable efforts to comply with the filing requirements.
The Opponent contends that the activities detailed at paragraph [10] of this decision demonstrate that it had acted promptly and diligently at all times in relation to its preparation and filing of evidence. The Opponent further submits that it has met all previous deadlines and has acted reasonably in complying with all filing requirements.
The Opponent also emphasised that it acted diligently in preparing and submitting extensive submissions. Regarding this point, while the Opponent may have been proactive in preparing its submissions for the grounds of opposition, at this stage of proceedings it was not necessary to file submissions in relation to the grounds of opposition, nor had the Opponent received any notice from IP Australia that it was required to file submissions by 12 March 2024. Accordingly, this factor does not assist the Opponent in demonstrating it acted promptly and diligently in the preparation and filing of evidence.
Regulation 5.12(2)(a) does not require perfection. However, the behaviour of the party seeking the extension of time still needs to be within the range of what can be considered prompt and diligent. It is not necessary for the party seeking the extension of time to detail every step taken during the opposition process. [4] The level of detail necessary will also depend on the case and the circumstances surrounding the delay. However, the party does need to explain why they were unable to have the evidence prepared during the relevant period. As the delegate stated in TRED:
The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, how it was done, by whom it was done, as appropriate to the case) covering the period in question.[5]
[4] Ibid [76].
[5] Ibid.
Context, such as the party’s strategy for the preparation of evidence, a description of what was done and when it was done, or a discussion of any unexpected challenges that arose can also help demonstrate that a party has but for the failure to file evidence within the relevant period, acted reasonably, promptly and diligently.
The Opponent detailed its approach to preparing and filing evidence, including specific actions taken during the period and the period in which they were executed. This approach included online searches, Wayback Machine searches, and social media searches for evidence of prior use of the Opponent’s Mark. Two unexpected challenges appear to have arisen during the preparation evidence: the difficulties acquiring historical data from the former director’s accounts; and a delay finalising certain dates and exhibits in the EIS. The Opponent included the former as a basis for the EOT application under regulation 5.15(2)(b). Regarding the latter, the Opponent indicates that final instructions were required from Mr Wainrib in relation to the inclusion of certain confidential exhibits and dates in his declaration. These issues were identified in a draft declaration sent to Mr Wainrib on the 7 March 2024, and Mr Wainrib was able to provide instruction regarding those issues on 12 March 2024. In its oral submissions, the Opponent indicated that given Mr Wainrib’s instructions were only received on 12 March 2024, RCL was unable to finalise the declaration by the deadline and the Opponent subsequently requested an EOT on 12 March 2024.
In my view, although the Opponent was unable to file its EIS in time, the Opponent has otherwise acted promptly and diligently in its preparation of evidence. There were no significant unexplained delays and the timeline of activities provided by the Opponent indicates that during of the period for filing evidence the Opponent’s representative engaged with the Opponent regarding the evidence needed to support its grounds of opposition, was prompt in seeking instruction where required, executed a strategy for preparing evidence in relation to prior use of the Opponent’s Mark, and was otherwise active in negotiating challenges that arose in the compilation of the evidence.
Finally, I note that the Opponent has otherwise conducted itself reasonably and met all other filing requirements during the opposition proceedings.
For these reasons, I am satisfied that the Opponent made all reasonable efforts to comply with the filing requirements and acted promptly and diligently at all times. Accordingly, the ground under regulation 5.15(2)(a) for the extension of the period for filing evidence has been established.

Decision

I grant the extension of time. Accordingly, the period for filing evidence in support is extended to 12 April 2024 and the evidence filed by the Opponent on 8 April 2024, being a declaration made by Glenn Brendon Wainrib dated 8 April 2024 with Exhibits GW-1 to GW-17, constitutes evidence in support.

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

14 November 2024