MG Icon LLC v Caprice Australia Pty Ltd
[2014] ATMO 34
•30 April 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition to removal of trade mark registration 901355 MATERIAL GIRL – Request by Caprice Australia Pty Ltd for extension of time to file evidence in reply, and objection by MG Icon LLC.
| Delegate: | Hearing Officer: Nicole Worth |
| Representation: | Removal opponent: Tim Allen and Natalia Blecher of Corrs Chambers Westgarth Lawyers. Removal applicant: Peter Creighton-Selvay of Counsel, instructed by Wadeson IP. |
| Decision: | 2014 ATMO 34 Regulation 9.18 – extension of time to file evidence in reply – exceptional circumstances - all reasonable efforts to comply – acting promptly and diligently at all times – request for extension of time refused. |
Background
This decision concerns an application for an extension of time to file evidence in reply under regulation 9.18 of the Trade Mark Regulations 1995 (‘the Regulations’).
The substantive matter concerns an application by MG Icon LLC (‘the Removal Applicant’) to remove trade mark registration 901355, MATERIAL GIRL, in the name of Caprice Australia Pty Ltd (‘the Removal Opponent’), from the Register of Trade Marks. Those proceedings began in 2012, prior to changes to the Regulations brought about by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), (‘RTB’), which came into effect on 15 April 2013. The RTB repealed the provisions for extensions of time to file evidence in opposition proceedings and replaced them with new provisions including regulation 9.18. The new extension of time provisions in regulation 9.18 apply to the period of time in which the Removal Opponent may serve and file evidence in reply.
The application for removal of the trade mark was advertised on 29 March 2012.
Casco Blu Pty Ltd, the then-removal opponent[1] and exclusive licensee of the trade mark, filed a notice of opposition to removal within the time allowed for doing so, on 29 June 2012. Its evidence in support of its opposition was due to be served by 29 September 2012, however it sought and obtained an extension of time of one month and served its evidence on 10 October 2012.
[1] The right or interest of the original removal opponent has been vested in a number of successive parties, however it is not necessary to detail those changes here.
The Removal Applicant’s evidence in answer was due to be served by 10 January 2013, however it sought and obtained two extensions of time of three months each, such that its evidence in answer was due 12 July 2013[2]. The Removal Opponent objected to the second of these extensions, however a delegate of the Registrar of Trade Marks dismissed the objection (although the delegate also warned the Removal Applicant that it had reached, under ‘pre-RTB’ provisions, the 9 month benchmark beyond which an extension would only be granted if there were compelling reasons to do so). The Removal Applicant served partial evidence in answer on 19 April 2013 and 27 May 2013, and the balance on 11 July 2013. In the meantime, the RTB came into effect on 15 April 2013.
[2] There were some anomalies in the dates that the Registrar advised were the due dates for evidence in answer and evidence in reply, however nothing turns on them for the purposes of this decision so it is not necessary to elaborate further.
The Removal Opponent’s evidence in reply was due to be filed by 14 November 2013. On that day it filed partial evidence in reply and requested an extension of time of one month to file the balance. It filed additional partial evidence in reply on 27 November 2013. On 29 November a delegate of the Registrar issued a notice that he intended to refuse the extension of time but would allow the Removal Opponent 14 days to file further reasons supporting its request. The Removal Opponent filed the balance of its evidence in reply on 3 December 2013 and filed further reasons supporting its request for an extension of time on 4 December 2013.
On 23 December 2013 the delegate of the Registrar issued a notice of intention to grant the extension of time, and the Removal Applicant was given until 13 January 2014 to file an objection to the extension. It did so by way of applying for a hearing.
I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 5 February 2014. The Removal Applicant was represented by Peter Creighton-Selvay of Counsel, instructed by Wadeson IP. The Removal Opponent was represented by Tim Allen and Natalia Blecher of Corrs Chambers Westgarth, lawyers.
In its written submissions for the hearing, and at the hearing, the Removal Opponent indicated that it was in a position to file evidence further explaining the steps taken in the preparation and filing of its evidence in reply. I indicated that given this was the first contested extension of time request under the new provisions, I considered it appropriate to base my decision upon all the information available and therefore requested the Removal Opponent file the additional evidence it had described. It did so on 12 February 2014.
The Removal Applicant responded to the additional evidence on 18 February 2014. Further responses were made by the Removal Opponent on 21 February 2014 and by the Removal Applicant on 24 and 28 February 2014.
The Legislative Framework
Regulation 9.18 provides:
(1)A party may request the Registrar to extend a period for filing evidence mentioned in 9.16.
(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.
The reference to “this Part” is a reference to Part 9 of the Regulations, which governs removal of a trade mark from the Register for non-use.
As stated previously, the RTB came into effect on 15 April 2013. It repealed existing extension of time provisions and replaced them with, among other provisions, regulation 9.18 as reproduced above. The transitional provisions in regulation 22.9, item 5 provide that regulation 9.18 applies in an opposition proceeding commenced before 15 April 2013 in which an extension of time is requested for a period that commences on or after 15 April 2013. Accordingly, although the subject proceedings commenced prior to the RTB coming into force, the requested extension of time is governed by the provisions of regulation 9.18 because the evidentiary period to which the extension relates began after 15 April 2013.
The Explanatory Statement to the RTB (‘the Explanatory Statement’) states:
A second purpose of the Regulation is to amend the Patents Regulations and the Trade Marks Regulations 1995 (the Trade Marks Regulations) to reduce delays in the resolution of patent and trade marks applications.
…
Schedule 3 to the Regulation amends both the Patent Regulations and Trade Mark Regulations to streamline the opposition process by reducing time frames and introducing a more rigorous test for granting extensions of time to file evidence.[3]
[3] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1), p 1.
The Explanatory Statement goes on to state that the intention is that all substantive proceedings before the Registrar be conducted in a similar manner[4] (substantive proceedings being those that focus on registrability and use issues[5]). It makes only limited comment specifically in respect of regulation 9.18[6], but of provisions relating to opposition to registration is says:
New regulation 5.15 [relating to extensions of time for filing evidence] narrows the circumstances in which the Registrar will grant an extension of time to provide evidence. Extension of the evidentiary periods is at the discretion of the Registrar and only where the Registrar is satisfied that the party entitled to file evidence in that period has acted promptly and diligently at all times since the opposition proceedings began, but despite that, or because of some other exceptional circumstances, cannot file the evidence in that period. Once the conditions are met the Registrar has the discretion to consider whether or not it is appropriate than an extension of time be granted.[7]
[4] Explanatory Statement, p 32.
[5] Explanatory Statement, p 24.
[6] Being “The test for extending evidential periods is prescribed in regulation 9.18”, Explanatory Statement, p 33.
[7] Explanatory Statement, p 29.
Discussion and Reasons
Clearly an intention of the RTB is to reduce delays in opposition proceedings, including opposition to removal of a trade mark for non-use, by narrowing the circumstances in which an extension of time will be available. As yet there are no published decisions of the Registrar in respect of extensions of time to file evidence under the new provisions, although the Commissioner of Patents had, by the date of the hearing, published two decisions including Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd (‘TRED’)[8].
[8] [2013] APO 57 (11 November 2013), at [34]-[35].
In relation to equivalent extension of time provisions in the Patents regulations the delegate observed in TRED that:
[I] need to ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?
3. Were there exceptional circumstances that warrant the extension?
I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.
I accept that the same principles apply to the matter before me: questions 1 and 2 relating to the provisions of paragraph (a) of subregulation 9.18(2), and question 3 relating to the provisions of paragraph (b).
For the sake of clarity, I confirm that the evidence the Removal Opponent seeks to adduce by way of the extension comprises a statutory declaration by Angela Skrinos dated 15 November 2013 and filed 27 November 2013 (‘the Skrinos declaration’), and a statutory declaration by Lynette Hayward dated 29 November 2013 and filed 3 December 2013 (‘the Hayward declaration’).
The Removal Opponent addressed both grounds (a) and (b) of subregulation 9.18(2) and also made submissions relating to “other matters”. It began its submissions with a discussion of exceptional circumstances, so for convenience I will do likewise.
Regulation 9.18(2)(b)
The Removal Opponent submits that there is nothing in the wording of regulation 9.18 that requires the exceptional circumstances relied upon to be causally linked to the delay in filing evidence, only that those circumstances “justify the extension”. It further submits that regulation 9.18(4), being a non-exhaustive provision, clearly intended to cater for circumstances falling outside of the examples given thus conferring upon the Registrar the discretion to determine whether exceptional circumstances exist. The factors relied upon here are, according to the Removal Opponent:
(a)The fact that a 6 month extension for filing Evidence in Answer was available to [the Removal Applicant] under repealed reg 5.15;
(b)The fact that the RTB Amendments came into force between the Evidence in Answer period and the Evidence in Reply period;
(c)The fact that stricter extension provisions therefore applied to [the Removal Opponent] at the Evidence in Reply stage than to [the Removal Applicant] at the Evidence in Answer stage;
(d)The mid opposition asset sale[9] which transferred ownership of the MATERIAL GIRL trade mark (and the associated business) to [the Removal Opponent] and which resulted in [the Removal Opponent] being substituted as the Opponent in these proceedings; and
(e)The resultant breach of natural justice flowing from the denial of the [extension of time] in the above circumstances.
The exceptional circumstances result essentially from the timing of these opposition proceedings: the fact that they straddle the RTB commencement date. In circumstances where [the Removal Applicant] had an additional 6 months over the prescribed period to file substantial Evidence in Answer, to deny [the Removal Opponent] an additional 1 month over its prescribed period in which to file Evidence in Reply would be fundamentally inconsistent with basic tenets of natural justice, a result that could not have been intended by the drafters of the RTB legislation.
[9] The John Harris Group, the ultimate owner of both the business that was the previous trade mark owner and the business that was the exclusive licensee, sold those businesses to the Removal Opponent via an agreement dated 26 July 2013.
The Removal Applicant disputes that these factors, in isolation or in combination, constitute exceptional circumstances and submits that for the Registrar to hold that they do would rob the term “exceptional circumstances” of any real meaning, setting a low bar for the grant of an extension of time. In particular it submits that Parliament made a deliberate and conscious choice to apply the stricter provisions of regulation 9.18 to ongoing oppositions – this is articulated in regulation 22.9 and is recognised in the fact that Parliament allowed parties in ongoing oppositions the benefit of an additional month to file evidence in reply (the RTB reduced the evidentiary period for evidence in reply to two months, but the transitional provisions provide that that evidentiary period remain at three months for ongoing oppositions). It also submits that the mid opposition asset sale was a deliberate commercial decision taken by the former and current Removal Opponent and was prioritised over the preparation of evidence, rather than being a circumstance imposed against their will. To hold that this was exceptional would be in direct conflict with the comments of the delegate in TRED, quoted in paragraph 23 below.
Subregulation (4) of regulation 9.18 provides examples of what may constitute exceptional circumstances:
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.
In considering the nature of exceptional circumstances the delegate in TRED remarked[10]:
The matters that are specified as exceptional circumstances are circumstances beyond the control of a party, an error or omission by the Commissioner, an order of a court and directions by the Commissioner. These matters give some guide to the other situations that would be regarded as exceptional circumstances: matters outside the normal evidentiary process, and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence. This is consistent with the explanation in the Statement that the loss of an expert is not an exceptional circumstance.
[10] At [64].
Additionally, I observe that the ordinary meaning of the word “exceptional” is that which is “unusual; extraordinary”[11] or “out of the ordinary course, unusual, special”[12].
[11] Macquarie Dictionary, online edition, © 2014 Macmillan Publishers Group Australia.
[12] Oxford English Dictionary, online edition, © 2014 Oxford University Press.
It is for me, then, to determine whether the circumstances relied upon by the Removal Opponent meet the standard of “exceptional” when considered in light of the above, and whether they accordingly justify the extension.
The subject of an inequity in extension provisions available to the respective parties has not been considered in the Patent decisions I have cited above, in the context of exceptional circumstances justifying an extension. The delegate in TRED commented, although not in relation to any inequity, that the amendments to the Patents regulations themselves did not constitute exceptional circumstances:
It is true that the attorney for TRED has had to read and understand the new regulations, and adopt new work practices to comply with the changes. It is also true that changes to the opposition procedures are not frequent. While the changes to the Regulations were outside the normal evidentiary process, and outside the control of the party, they came in before the SGP was served. I do not accept that the changes to the Regulations would make it unreasonable to insist on TRED filing their evidence. This is not an exceptional circumstance.
The applicability of these comments to the matter before me is somewhat limited because the RTB changes came in before the statement of grounds and particulars was served. In contrast to the matter before me, the parties faced the same, narrower extension of time provisions for the evidentiary periods.
In a subsequent decision of the Commissioner of Patents, Merial Limited v Novartis[13], the applicant evidently made submissions about the advantages the opponent may have obtained under the former extension of time provisions. However that discussion is made in the context of the question “Was the failure to file evidence despite acting promptly and diligently at all times?” and not in the context of exceptional circumstances. The delegate consequently noted “These however are simply not relevant considerations for the threshold question of whether the failure to file evidence occurred despite Novartis acting promptly and diligently”. The delegate makes no such observations in respect of his discussion “Were there exceptional circumstances that warrant the extension?” As such, these comments are also of only limited applicability to the matter before me.
[13] [2013] APO 65 (5 December 2013).
What I find compelling is that Parliament clearly intended to apply regulation 9.18 to ongoing oppositions. That puts into immediate effect the purpose of the RTB articulated in the Explanatory Statement, namely to “to streamline the opposition process by reducing time frames and introducing a more rigorous test for granting extensions of time to file evidence”. It is reasonable to accept that the occurrence of parties seeking and obtaining extensions of time under different provisions was taken into account in the making of that decision, and that this was considered neither to justify the preservation of the repealed provisions for ongoing oppositions, nor to outweigh the benefits of streamlining the opposition process.
Additionally, the likelihood that there were multiple oppositions ongoing at the time the RTB came into force mitigates the exceptionality of parties facing different extension of time provisions. Accordingly, I do not consider that the fact the evidence stages straddled the commencement date of the RTB, and that the Removal Applicant was granted extensions under the repealed provisions, is an exceptional circumstance that justifies an extension.
The “mid-opposition asset sale”, referred to earlier by the Removal Opponent, culminated in the sale agreement of 26 July 2013. The Removal Opponent submits that such an event is not something that occurs in the ordinary course for the vast majority of companies, but rather is a substantial, typically infrequent event that will put various functions performed by the purchaser and vendor companies under stress. Even though the sale of a business is a decision within the control of the entities concerned, I agree with a proposition that such a sale might contribute to exceptional circumstances (so long as there is more to the circumstances than merely the fact of the sale itself).
Here, however, the sale of the businesses occurred in late July. Even allowing for an adjustment period for the Removal Opponent, it is difficult to see how the sale justifies an extension sought more than three and a half months later. The declarant Lynette Hayward is an employee of the Removal Opponent, and prior to the sale was the director of both the businesses that were sold, those businesses being the former owner of the trade mark and its exclusive licensee. The Removal Opponent relies substantially upon her for its evidence in reply, and she has had full knowledge of these proceedings since inception. She also had full knowledge of the sale. As such, even though she had difficulty receiving emails during the transition to the systems of the new owner of the business, she anticipated (or ought to have anticipated) that the next stage of the opposition proceedings required attention. This is particularly so because she went to a meeting in late September with the director of the Removal Opponent and the lawyers representing it, wherein documentation she was to retrieve for use as evidence was discussed and wherein it was agreed that a revised framework for evidence, a “checklist” and draft declaration would be prepared and provided by the lawyers. Having not received these documents I consider a reasonable course of action would have been for her to make enquiries with the other participants at the meeting, prior to the due date almost two months later. Having not done so does not justify the extension.
Accordingly I am not satisfied that the mid opposition sale of the businesses is an exceptional circumstance that justifies the extension sought. My conclusion remains the same whether I consider it as the sole basis for the extension, or in combination with the factors described previously.
Consequently paragraph (b) of regulation 9.18(2) is not established and I move on to the consideration of paragraph (a).
Regulation 9.18(2)(a)
The two legs of paragraph (a) direct me to consider the Removal Opponent’s conduct over the whole of the opposition as well as its conduct in the evidentiary period in question. In accordance with subparagraph 9.18(2)(a)(i), the Removal Opponent must satisfy me that it has made all reasonable efforts to comply with all the relevant filing requirements of Part 9 of the Regulations. In accordance with subparagraph 9.18(2)(a)(ii), the Removal Opponent must satisfy me that despite acting promptly and diligently at all times to ensure the filing of its evidence in reply within the period, it was unable to do so.
As described previously, the evidence supporting the Removal Opponent’s request for an extension of time occurs in two parts: that which it initially filed on 4 December 2013 (the ‘initial evidence’), and that which it filed on 12 February 2014 pursuant to my request (the ‘subsequent evidence’). In order to provide some guidance as to the sufficiency of evidence to satisfy regulation 9.18(2)(a), I will discuss the initial evidence and the subsequent evidence separately.
The initial evidence comprises a declaration by Natalia Blecher, a lawyer with Corrs Chambers Westgarth (‘Corrs’). It sets out the following relevant events which I have compiled into a chronological table:
The Skrinos declaration, filed 27/11/13
“Prior to the initial evidence deadline”
Ms Blecher liaised with Ms Skrinos by telephone and email regarding the wording of Ms Skrinos’ declaration.
13/11/13
Ms Skrinos emailed Corrs to make a final change to the draft declaration and advised she would sign and return the amended declaration that day.
14/11/13
Due date for evidence in reply
14/11/13
Having not received the signed declaration from Ms Skrinos, Corrs sent a further email to her and followed up with a number of telephone calls, to which there was no answer.
Later that day Ms Skrinos advised Corrs that she had not been at work the previous day, but would sign and send the declaration that day.
15/11/13
Ms Skrinos emailed the signed revised declaration to Corrs.
The Hayward declaration, filed 3/12/13
26/9/13
A meeting was held between Ms Blecher, Tim Allen (lawyer and Partner with Corrs), Mark Hansky (director of the Removal Opponent) and Ms Hayward. Suitable evidence in reply was discussed and Ms Hayward provided instructions regarding documentation she expected to be able to retrieve from the Removal Opponent’s predecessors in business. She indicated that the task of retrieving the documents was likely to be time consuming, but that she would try hard to locate them.
“Over the ensuing weeks”
Corrs liaised with Ms Hayward regarding the preparation of her documentation.
28/10/13
Corrs sent a draft declaration and checklist of outstanding documents to Ms Hayward at her email account with the Removal Opponent.
Email communication with Ms Hayward was problematic during this period (although apparently not between Corrs and Mr Hansky). Corrs received an automatic notification that delivery to Ms Hayward’s email address had failed.
12/11/13
Corrs telephoned the offices of the Removal Opponent and were advised that the email address was correct, but that they could try re-sending any emails to an alternative email account of Ms Hayward’s.
13/11/13
Mr Hansky informed Corrs that Ms Hayward was in India and not due to return until the following week.
14/11/13
Due date for evidence in reply
20/11/13
Ms Hayward telephoned Corrs and advised that she had gathered most of the information, and also discussed other documentation still to be retrieved and the difficulty of retrieving it.
25/11/13
Corrs received a parcel from Ms Hayward containing a large volume of material for possible inclusion as exhibits to her declaration.
26/11/13
Corrs completed a review of that material and emailed Ms Hayward advising which documents were incorporated, subject to redaction, into her declaration.
27/11/13
Ms Hayward responded to Corrs, enabling them to finalise the declaration.
28/11/13
Corrs sent a finalised version of the declaration to Ms Hayward.
2/12/13
Ms Hayward sent a signed copy of her declaration to Corrs.
3/12/13
Ms Hayward’s declaration, complete with exhibits, was filed with the Trade Marks Office.
I note that the Removal Opponent served and filed its notice of opposition to the removal on the due date and its evidence in support of the opposition 11 days after its original due date, well within its extended due date. I therefore consider that, up to the period for evidence in reply, it has made all reasonable efforts to comply with the filing requirements of Part 9.
However I do not consider that I could be satisfied, on the basis of the initial evidence, that the Removal Opponent has acted promptly and diligently at all times. In respect of the Skrinos declaration, there is simply too little information regarding anything that occurred prior to 13 November 2013. Whether or not it was reasonable to expect that Ms Skrinos would return her signed declaration when she originally said she would, 13 November 2013, I cannot make any judgment relating to promptness and diligence “at all times” during the evidentiary period because the initial evidence only identifies, with any specificity, actions taken one day prior to the due date.
In respect of the Hayward declaration, a number of questions are raised that the initial evidence does not answer. The final instalment of the evidence in answer was filed and made available to the Removal Opponent 11 July 2013. The Registrar issued a notice on 14 August 2013 advising that evidence in answer had been filed and that evidence in reply was due 14 November 2013[14]. However it was not until 26 September 2013 that the meeting between Corrs, Mr Hansky and Ms Hayward took place discussing how to formulate evidence in reply. No explanation is provided as to what, if anything, occurred in the intervening two and a half months since receipt of the evidence in answer or the six weeks since notification of such from the Registrar.
[14] The notification from the Registrar that evidence in answer had been filed was delayed a number of weeks because, also on 15 April 2013, the Trade Marks Office moved to a new electronic system of receiving evidence whereby evidence that was filed with the Office was simultaneously served on the other party. For a period of time there was some delay in issuing notices whilst the Office dealt with voluminous numbers of requests for access to the system. For this reason the Office did not acknowledge receipt of the evidence in answer until 14 August 2013 (and the notice advised accordingly that evidence in reply was due three months later, on 14 November 2013).
The next question that arises is why, despite advising at the meeting of 26 September 2013 of the sort of documentation expected to be retrievable and despite liaising with Corrs over the ensuing weeks, Ms Hayward did not complete the task until 25 November 2013, approximately two months later and 11 days after the due date. When she began retrieving the documents is not stated, although I note she had indicated the task was likely to be time consuming. Nonetheless, without an explanation of when she undertook the task or how much time she spent on it I could not be satisfied that she had acted promptly and diligently “at all times” during the period. I note also that she was experiencing difficulties with receiving emails. However, in the knowledge that the evidence in reply required preparation and that Corrs would be sending information regarding it pursuant to the meeting held on 26 September 2013, I consider that prompt and diligent conduct would have called for following it up with either Corrs or Mr Hansky, well before approximately two months had elapsed.
The actions taken after the due date had passed are well documented and construct a clear picture of what occurred at that time, however they cannot contribute to establishing prompt and diligent action to ensure filing “within the period”.
Given I am not satisfied that the initial evidence establishes prompt and diligent conduct at all times within the period, regulation 9.18(2)(a) cannot be applied on the basis of that evidence.
The subsequent evidence comprises declarations by Ms Blecher, Mr Allen and Ms Hayward further explaining the history of the opposition and the steps taken in the preparation of the evidence in reply. I have compiled the relevant events into the following chronological table.
Prior to the official period for evidence in reply as notified by the Registrar
June 2012
Corrs was engaged to act in the opposition to removal for the John Harris Group, the then-owner of the businesses that owned the trade mark and held the exclusive license to use it.
Ms Hayward was a director of both of the businesses that owned the trade mark and held the exclusive license to use it.
(The John Harris Group subsequently sold those businesses to the Removal Opponent via an agreement dated 26 July 2013.)
During the few months prior to the sale of the businesses.
Ms Hayward held “countless discussions” regarding the sale of the businesses with the vendor and purchaser. To “preserve confidentiality” around the negotiations, the sale was not discussed with any external parties, including Corrs.
11/7/13
Corrs received automatic notification from the Trade Marks Office that the final instalment of evidence in answer had been filed. The officer at Corrs to whom the email was sent was on leave at the time, and the email was subsequently forwarded to Ms Blecher on 17/7/13.
17/7/13
Corrs conducted an initial review of the evidence in answer and sent, to Mr Keith Hein (an officer of the John Harris Group), a summary of it and a “checklist” for evidence in reply, including the names of Ms Skrinos and Ms Hayward as potential witnesses.
[26/7/13]
[the sale of the businesses took place and the Removal Opponent became the owner of the trade mark]
29/7/13
Having not received a reply from Mr Hein to their email of 17/7/13, Corrs followed up with a further email.
Ms Hayward formally transitioned to employment with the Removal Opponent. Around this time she began experiencing significant difficulty with receiving emails.
14/8/13
Still not having heard from Mr Hein, Corrs telephoned his office but were advised that he was on annual leave and not due to return until 19/8/13.
The official period for evidence in reply: 14/8/13 to 14/11/13
21/8/13
Corrs received from the Trade Marks Office formal notification, dated 14 August 2013, of the filing of the evidence in answer and the due date for the evidence in reply (being 14 November 2013). The notification referred to the Removal Opponent as the owner of the trade mark, which was the first Corrs had heard of the trade mark changing hands.
Corrs were obliged to approach their previous instructor, Mr John Harris of the John Harris Group, to obtain clearance to act for the Removal Opponent. Without such instructions, Corrs could not approach the Removal Opponent. They attempted to do so that day but were informed that he was not in the office. They then attempted to contact Mr Hein but were informed he was on leave and now not due to return until 26/8/13.
28/8/13
Corrs were advised by Mr Hein that the Removal Opponent had purchased the businesses of the former trade mark owner and its exclusive licensee. It was suggested that they forward their email of 17/7/13 (containing the summary of the evidence in answer and a “checklist” for evidence in reply) to Mr Hansky, and to seek instructions as to whether the Removal Opponent wished to engage Corrs to represent it in the opposition to removal.
3/9/13
Corrs sent an email to Mr Hansky, copied to Ms Hayward, which forwarded the email of 17/7/13 and sought a number of instructions.
Corrs received automatic notification that delivery to Ms Hayward’s email address had been delayed.
10/9/13
Corrs forwarded the above email to Ms Hayward’s alternative email address but received an automatic delivery failure notice.
That day Mr Hansky advised Corrs that the Removal Opponent wished to pursue the opposition to removal and proposed meeting to “discuss the way forward”. Corrs replied with suitable dates to meet.
The Hayward declaration
26/9/13
The meeting was held between Ms Blecher, Mr Allen, Ms Hayward and Mr Hansky. Amongst other discussion topics, Ms Hayward indicated that there was an “enormous volume” of records relating to the trade mark, and that given the time pressures she would require specific guidance on what would be useful. It was agreed that Corrs would put together a revised framework for evidence and prepare draft declarations to be made by Mr Hansky, Ms Skrinos and Ms Hayward.
In the first week of October
Corrs dispatched its engagement documentation to the Removal Opponent and applied to the Trade Marks Office to update their records to reflect the Removal Opponent as the opponent in this matter.
18/10/13
Drafts of Ms Hayward’s and Mr Hanksy’s declarations were created.
28/10/13
Corrs sent a revised framework for evidence in reply and a checklist to Mr Hansky and Ms Hayward by email. Also attached were the draft declarations. Ms Hayward did not receive that email although Mr Hansky did.
Mid November
Ms Hayward travelled to India on a business trip.
12/11/13
Corrs called the Removal Opponent’s reception to discuss the difficulties with Ms Hayward’s email address, and were advised to try re-sending it to an alternative email address of Ms Hayward’s.
13/11/13
Corrs attempted to call Ms Hayward but were informed that she was in India, due to return 18/11/13.
Corrs then called Mr Hansky who confirmed he would provide his signed declaration the following day. They also discussed seeking an extension of time to file Ms Hayward’s declaration.
14/11/13
Due date for evidence in reply
18/11/13
Ms Hayward returned to her office and received the email from Corrs attaching her draft declaration and checklist list of documents that would be useful to include as exhibits.
Ms Hayward set about gathering that information, spending approximately 15 hours on the task between 18/11/13 and 2/12/13. Differences in IT systems contributed to the difficulty of the task.
20/11/13
Ms Hayward telephoned Corrs and discussed documentation still to be retrieved and the difficulty of retrieving it.
25/11/13
Corrs received a parcel from Ms Hayward containing a large volume of documents for possible inclusion as exhibits to her declaration.
26/11/13
Corrs completed a review of that material and advised Ms Hayward which documents were incorporated, subject to redaction, into her declaration.
27/11/13
Ms Hayward responded, enabling Corrs to finalise the declaration.
28/11/13
Corrs emailed a final version of the declaration to Ms Hayward.
2/12/13
Corrs received a signed copy of Ms Hayward’s declaration.
3/12/13
Ms Hayward’s declaration was filed.
The Skrinos declaration
26/9/13
It was agreed, at the meeting between Ms Blecher, Mr Allen, Mr Hansky and Ms Hayward, that Corrs would prepare a draft declaration to be made by Ms Skrinos.
21/10/13
The draft of Ms Skrinos’ declaration was created.
28/10/13
Corrs sent the draft Skrinos declaration to Mr Hansky and Ms Hayward, along with drafts of the declarations to be made by themselves.
13/11/13
Mr Hanksy authorised Corrs to contact Ms Skrinos directly to finalise her declaration, which they apparently did.
Ms Skrinos emailed Corrs to make a final change to the draft declaration and advised that she would return the signed declaration that day.
14/11/13
Due date for evidence in reply.
Corrs, having not received the signed declaration from Ms Skrinos, sent a further email to her and followed up with a number of telephone calls, to which there was no answer.
Later that day Ms Skrinos advised that she had not been at work the previous day, but would sign and send the declaration that day.
15/11/13
Ms Skrinos emailed the signed revised declaration to Corrs.
27/11/13
The Skrinos declaration was filed with the Office.
(In their submissions at the hearing, Corrs explain that it was initially thought it would be preferable to file the Skrinos declaration together with the Hayward declaration, which it was corroborating. Ultimately, however, Corrs formed the view that there was no material advantage to further delaying the filing of the Skrinos declaration.)
As can be seen from the table above, the subsequent evidence provides a far more comprehensive explanation of events and circumstances during the period for evidence in reply. Despite this, however, I am not satisfied that it establishes prompt and diligent action at all times.
Neither the John Harris Group, the Removal Opponent, nor Ms Hayward informed Corrs of the asset sale until 28 August 2013, over one month after the sale took place. In the meantime, progress in the preparation of evidence in reply stalled because Corrs sent, on 17 July 2013, its initial review of the evidence in answer and proposed checklist for evidence in reply to Mr Hein of the John Harris Group, not knowing that the trade mark was now owned by a different entity. Mr Hein was either on annual leave at the time the information was sent, or received the information and subsequently went on leave without taking action in regard to it. Neither scenario excuses lateness because annual leave is generally not an unforeseen event.
Ms Hayward was understandably very busy during negotiations for the business sale and her transition to employment with the Removal Opponent. Nonetheless, she has been closely involved in these proceedings since they began. She was also well aware, after the meeting that took place on 26 September 2013, that evidence in reply was required and that she would be significantly involved in the preparation of that evidence. However she did not set about retrieving the documentation identified at that meeting until 18 November 2013, approximately two months later and four days after the evidence was due to be filed.
The fact that Ms Hayward was having difficulties with her email accounts, although perhaps contributing to the delay, cannot be used to excuse it. The difficulties started at around the time she transitioned to employment with the Removal Opponent, in late July. A significant period of time passed between the onset of the difficulties with her email and the missed email from Corrs subsequent to the meeting of 26 September 2013. Given she had been experiencing email difficulties for a number of weeks, Ms Hayward ought to have been mindful that emails sent to her may have gone astray. Given the meeting she had with Corrs and Mr Hansky on 26 September 2013, she should have anticipated an evidence framework and checklist to be sent to her that would provide the “specific guidance” she sought. In the knowledge that she was required undertake the time consuming task of retrieving documentation, I consider that a prompt and diligent action would have been to check whether the evidence framework and checklist had been sent, either with Corrs or with Mr Hansky, well before approximately two months had elapsed.
Although the declaration of Ms Skrinos was first drafted on 21 October 2013, there is no evidence that she received it at any time before 13 November 2013. Corrs may reasonably have expected her to return the signed copy of it that day or the next, given she advised she would do so on both of the occasions they contacted her, however the finalisation of her declaration appears to have been left until very late in the period, allowing little time to deal with any contingencies (such as a witness delaying the return of their signed declaration).
In all, whilst the subsequent evidence provides a clearer picture of the events and circumstances that occurred, those events and circumstances do not establish prompt and diligent action at all times to ensure the filing of evidence within the period.
Since I am not satisfied that the Removal Opponent has acted promptly and diligently at all times, on either the initial evidence or the subsequent evidence, regulation 9.18(2)(a) may not be applied to extend the period for filing evidence in reply.
Other matters
The Removal Opponent also made submissions relating to “other matters”. These are that:
· It would be open to the Removal Opponent to apply for leave to serve the Skrinos and Hayward declarations as further evidence under repealed further evidence provisions in regulation 5.15 (which continue to apply to oppositions that began prior to the commencement date of the RTB).
· The RTB amendments were aimed at reducing delays in opposition proceedings which resulted in “unnecessary expense” and prolonged uncertainty. They cannot have been intended to exclude highly probative evidence filed “just days after a deadline”.
· The balance of the Removal Opponent’s evidence in reply had been filed by the time the Removal Applicant objected to the extension, so the Removal Applicant cannot be said to have been disadvantaged by the late filing nor was it put to any expense arising from the delay. It is submitted that the only possible motivation for objecting to the extension was to exclude highly probative evidence.
· The exclusion of highly probative evidence is inconsistent with the philosophy underpinning the Act and RTB (which includes, broadly, to better balance and operate the intellectual property system and not unduly prejudice its users).
These submissions, however, are not relevant to the matter before me. Regulation 9.18(2) directs that the Registrar may extend the period only if satisfied that either paragraphs (a) or (b) are satisfied. Public interest considerations, the probity of evidence and whether the evidence is already filed are more relevant to a consideration of allowing further evidence, and the Removal Opponent has the option of making such an application.
Decision and costs
I am not satisfied that there are exceptional circumstances that justify extending the period in which the Removal Opponent may file evidence in reply. Nor am I satisfied that the evidence was not filed despite the Removal Opponent acting promptly and diligently at all times during the period.
Accordingly, I refuse to grant the extension. As a consequence, the period for filing evidence in reply ended on 14 November 2013 and the declarations filed after that date do not constitute part of the evidence in reply.
Both parties made submissions regarding costs. In particular the Removal Applicant submitted that it had wasted costs by meeting the initial evidence, after which the subsequent evidence was filed. The Removal Opponent made submissions pointing out that the Removal Applicant had elected to go straight to a hearing, in person in Canberra, with counsel representing it, and that the subsequent evidence was filed as a result of my request.
The general rule is that costs follow the event. However at this stage I consider it appropriate that an award of costs should await the conclusion of the substantive proceedings, the outcome of which may assist in the determination of the proper result.
Nicole Worth
Hearing Officer
Trade Marks Hearings
30 April 2014
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