Montres Rolex S.A. v Celine

This decision concerns an objection by Montres Rolex S.A. (Montres) to an application by Celine for an extension of time to serve evidence in support of an opposition to the registration of trade mark application number 564807. The opposition is governed by the provisions of the *Trade Marks Act 1955* (Cth). Montres applied for the trade mark CELLINI in class 14, which was accepted with a narrower specification of goods and certain endorsements. Celine lodged a notice of opposition and subsequently sought multiple extensions of time to serve its supporting evidence.

The legal issues before the delegate of the Registrar of Trade Marks were whether to grant Celine's latest request for an extension of time to serve evidence in support of its opposition, and whether to award costs. Montres argued that the total period for serving evidence, if extended, would be an inordinate length of time, particularly as negotiations between the parties had broken down. Celine contended that the initial extensions were largely due to ongoing settlement negotiations, during which it had exercised restraint in collecting evidence. Celine further argued that the statutory three-month period for evidence is often insufficient in opposition cases and that its evidence was now complete.

The delegate considered the criteria outlined in *Lyons v Registrar of Trade Marks*, namely whether a proper case had been made out, the relative inconvenience to both parties, and the public interest. The delegate found that Celine had provided sufficient information to make out a proper case, noting that the parties appeared satisfied with the proceedings for the first 18 months of agreed extensions. While acknowledging that a two-year delay might initially seem excessive, the delegate concluded that given the mutual agreement on the earlier extensions and the fact that Celine's evidence was now finalised, the present extension was not inordinate. The delegate also found that allowing the extension would not significantly disadvantage Montres, whereas refusing it could seriously disadvantage Celine. Furthermore, the delegate considered it to be of paramount importance in the public interest that the Registrar possess all facts to make an informed decision on the substantive opposition.

The delegate decided to allow Celine's extension of time to file evidence in support until 2 August 1997. Costs were awarded to Celine, as the delegate saw no reason why costs should not follow the decision.