Milir Enterprises Pty Ltd as Trustee for the Lynch Family Trust v Dungbeetle Enterprises (Pty) Ltd and Scarab Australia Pty Ltd
[2015] ATMO 95
•30 September 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Dungbeatle Enterprises (Pty) Ltd and Scarab Australia Pty Ltd to registration of trade mark application 1622569(40, 42) - SCARAB WASTE WATER AUSTRALIA (AND DEVICE) - filed in the name of Milir Enterprises Pty Ltd as trustee for the Lynch Family Trust.
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Application by Dungbeatle Enterprises (Pty) Ltd and Scarab Australia Pty Ltd for an extension of time in which to file evidence in support
Delegate: | Iain Campbell Thompson |
Representation: | Opponents: Self represented Applicant: Did not appear |
Decision: | 2015 ATMO 95 Application for extension of time under reg 5.15(2)to file evidence in support; reasons not sufficient, extension of time not granted |
Background
In this matter Milir Enterprises Pty Ltd as trustee for the Lynch Family Trust (‘the Applicant’) has applied for registration of the application appearing below:
Application No: 1622569
Priority Date: 14 May 2014
Services:Class 40: Waste treatment (transformation); sewerage and waste water treatment services; effluent treatment (waste treatment); industrial treatment of effluents; chemical treatment of waste products; processing of waste materials; operation of sewerage and waste water treatment systems; waste destruction; waste management information; waste management services; waste processing; waste recycling services
Class 42: Design of sewerage and waste water treatment systems and facilities; on-site testing and development services provided via mobile pilot plants for sewerage and waste water
Trade Mark:
(‘the Application’)
Following examination of the application it was advertised as accepted for possible registration on 9 October 2014 in the Australian Official Journal of Trade Marks.
On 9 October 2014, Dungbeatle Enterprises (Pty) Ltd and Scarab Australia Pty Ltd (‘the Opponents’) filed Notice of Intention to Oppose. On 27 October 2014, the Opponents filed their Statement of Grounds and Particulars.
On 21 April 2015 the Opponents filed an application for extension of time of two months from 20 April 2015 in which to file evidence in support of its opposition. By letter dated 7 May 2015 a delegate of the Registrar of Trade Marks wrote to the Opponents notifying his intention to refuse the grant of the extension of time on the basis that he was not “satisfied that the EOT [extension of time] application satisfies the requirements of reg 5.15(2)(a) or (b).” The delegate allowed the Opponents “14 days from the date of the letter to respond to my decision and provide further information.”
The Opponents stated reasons for requesting the extension of time were:
I am based in South Africa, and have not had the opportunity to travel to Australia to engage a professional team to handle this problem. The Applicants for this trade mark have attempted to bring an urgent high court application against me in South Africa (Case No 16211/2015). This case was heard on the 15th April, 2015, in which the application was dismissed, with costs. I am now awaiting the full documents from court, which does contain some particularly damaging evidence, some of it is related to the applicant of this trade mark, and his actions. These documents will include hundreds of pages of incriminating testimony (some even self incriminating) for which I would be inclined to deliver to your office personally, and once I had consulted with an IP professional. Furthermore, our address for service was changed 6 weeks ago, and have not received any service notices from the IP Australia. Please can this address be recorded on the opposition application.
Subsequently the Opponents requested to be heard on the extension of time application. As a delegate of the Registrar of Trade Marks, I heard the submissions of the Opponents in Canberra on 22 July 2015. The Opponents were represented by their director in common, Steve Nicol.
Reasoning and Decision
Regulation 5.15 of the Trade Mark Regulations 1995 provides:
5.15Extension of time for filing
(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.
Mr Nicols’ oral submissions were, in essence, a recapitulation of his written submissions which I reproduce below:
The reasons for the delay are as follows;
Once I became aware of this trade mark application, I have made every attempt to oppose the process. Initially, I filed my intention to oppose and paid the opposition fee, only to be informed that formal opposition could only take place once it was advertised. The day it was advertised, I resubmitted my opposition, and paid the fee again. I have managed to contact the IP department on many occasions regarding this application, regularly enquiring on the progress, and procedure with team members [of Trade Marks Hearings].
Our address for return for service was changed and we did not receive the correct procedure to submit documents. This was corrected to the new address, but two days ago I received a letter from IP Australia - dated 8/5/2015 - which still reflects the original service address. Whilst the correct address would always remain my responsibility, the timing of the changes did result in delays, as some of the documents either never arrived, or arrived late.
Scarab (SA) has been dealing with a very high priority court case in which much of the evidence recorded in court, is relevant to this trade mark application. Mike Lynch (Milir Enterprises) has claimed that his only need for the Scarab trade mark was to salvage business that he was losing, as I had refused to support his violation of the fudiciary [sic] responsibilities as Managing Director of Scarab Australia. He now claims he has already developed his own brand, as he needed to create distance between his product/brand and Scarab, and, that he has abandoned Scarab in favour of his own Porta Treat. If this is the case, why would he want to proceed with this trade mark, if it weren't not [sic] malicious intent? Lynch does not want to use the trade mark, but wants to stop me using it. This can be seen in the court documents I would like to present as evidence.
The above court case was heard on the 15th April 2015, and the deadline for evidence in support of this opposition was the 21st April leaving only 6 days - including two days over that weekend - to get information together for the submission. This court case was pivotal for this trade mark application. We included Scarab's pending trade mark application in all settlement proposals, prior to the court hearing. Furthermore, this trade mark has been offered as settlement by Lynch (Milir), but included unreasonable (even dishonest) demands. Knowing I would not accept such ridiculous settlement offers, this created enough delays to allow evidence in support of opposition to expire, or at least become rushed. I am suggesting this was deliberate.
As stated above, this court case was important for our Australian case, and that as soon as it was recorded, as a judgement, we had just 6 days to proceed. It should be noted that the 8-hour time zone difference was almost impossible to find and consult legal advice. We made contact with several professionals, and only one came back to me, Kerry Newcomb, a Brisbane attorney, but she said she could only assist once she returned from a conference in San Diego. Our trade mark attorney, in South Africa, and Kerry are now advising me. Furthermore, I have made a special effort to come to Australia, on the 7th May 2015, to address this issue, and am prepared to return for any hearings / meetings.
I have already paid for security of costs, as requested, and paid for a hearing, as per request, in an effort to regain the opportunity to submit evidence.
The applicant’s opposition to this extension should not be seen by you as delaying tactics on our behalf. The applicants are already using their own trade mark, Porta Treat, to market this type of product. Surely, a second brand would simply confuse their clients. We suggest that the applicants are desperately trying to avoid evidence being presented, as such evidence would seriously jeopardize this trade mark being registered.
The registration of the Scarab trade mark, by the applicant (Mike Lynch), would effectively keep Scarab out of the Australian market. I believe the applicant has no intention of using the mark and that the registration of the Scarab trade mark is purely malicious, and for a purpose not connected with its bona fide use.
I do not consider that the circumstances outlined by the Opponents support their case for an extension of time in which to serve their evidence in support. The circumstances referred to which include the court case in South Africa, the attempts to instruct a legal representative in Australia and the failure to advise IP Australia in a timely manner of a change in address for service are all circumstances within the responsibility and/or control of the Opponents and are matters which may be routinely addressed. There are no exceptional circumstances (under regulation 5.15(2)(b)) that would justify the grant of the extension of time.
In Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42 at [22] the Registrar’s delegate observed (with footnotes omitted):
The current practice of the Trade Marks Office in determining whether a party has acted promptly and diligently at all times is to critically analyse a chronology of events in the relevant period. There is an inherent risk that this approach may paint an artificial picture somewhat at odds with the business realities for parties and legal representatives in trade mark oppositions. Most chronologies are likely to reveal gaps where no (or very little) action has been taken to gather or prepare evidence. However, the presence of these gaps is not necessarily determinative. In the decision of Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd, the delegate of the Commissioner of Patents commented with regard to the identical wording in patent extension of time provisions:
An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently. 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.
A bald interpretation of the wording ‘at all times’ in the Regulations may create unrealistic expectations. However, the above comments show the intent of the provisions is to create a more rigorous requirement, not an unattainable one. The answer to the determination lies in a consideration of all the facts and circumstances of a particular case. Acting to ensure the prompt filing of evidence means that the relevant actions should have some connection to the filing of the evidence, but do not necessarily have to be the physical act of gathering and compiling that evidence. It may for example, include discussions between a party and its representative relating to the requirements for the evidence. However, lengthy delays that are unexplained (or are supported by actions which are not designed to ensure the prompt filing of evidence) will not assist.
Viewed in the light of the above quotation, the Opponent lists the problems which beset it in gathering its evidence in support of the opposition but does not state what steps it undertook to address the problems or when these steps occurred. I therefore cannot be satisfied that the Opponents have, to use the wording of 5.15(2)(a) of the Regulations, acted “promptly and diligently at all times to ensure the filing of the evidence within the period”. I further note that the Opponent’s problematic circumstances are not well documented or corroborated and amount to a series of assertions by the Opponents in circumstances where the onus is on the Opponents to establish the need for a grant of extension of time.
I refuse to grant the extension of time.
Iain Thompson
Hearing Officer
Trade Marks Hearings
30 September 2015
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