Mygrain Solutions Pty Ltd v Scintex Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Application under reg 5.15 of the Trade Marks Regulations by Scintex Pty Ltd for an extension of time to file evidence in answer to the opposition by Mygrain Solutions Pty Ltd to registration of trade mark application number 1960211 (Class 7) – PADDOCK.

Delegate: Blake Knowles

Representation: Opponent: Nico de Jong of The Loft Legal.
Applicant: Dimitrios Eliades of counsel and Matthew Sulman of Matthew Sulman & Associates.

Decision:
2022 ATMO 70

Trade Marks Regulations 1995 (Cth) – request for an extension of time to file evidence in answer under reg 5.15 – request for extension refused –– discretion exercised to take evidence into account under reg 21.15 and 21.19.

Background

This is a decision relating to a request for an extension of time under reg 5.15[1] by Scintex Pty Ltd (‘Applicant’) to file evidence in answer to the opposition by Mygrain Solutions Pty Ltd (‘Opponent’) to trade mark application number 1960211 (‘Application’) filed by the Applicant for the trade mark ‘PADDOCK’ (‘Trade Mark’) in Class 7.
[1] Trade Marks Regulations 1995 (Cth). Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The opposition commenced with the filing by the Opponent of a Notice of Intention to Oppose on 25 August 2020. After the subsequent filing of a Statement of Grounds and Particulars (‘SGP’) by the Opponent, and a Notice of Intention to Defend by the Applicant, the Opponent filed Evidence in Support on 9 February 2021. The Applicant was then notified of the deadline to file Evidence in Answer (‘EIA’) of 10 May 2021 (‘EIA Deadline’).
On 9 May 2021, the Applicant filed a request to extend the EIA Deadline by one month until 10 June 2021. Two subsequent requests to extend the EIA Deadline were also filed, which collectively sought an extension until 10 August 2021.
Collectively, the basis for the requests for the extensions of time was that the parties were involved in genuine negotiations to settle the opposition which the Applicant expected to soon be finalised. Assuming the matter was resolved by the parties, the filing of the EIA would have been unnecessary. However, in the declaration of 10 July 2021, the Applicant advised that negotiations had concluded and that draft EIA had been prepared, but a further one month extension was required to finalise and submit the EIA.
The EIA was subsequently filed on 10 August 2021, and consisted of a declaration by Ryan Rose, director of the Applicant. The EIA provides information regarding the use of PADDOCK formative trade marks by the Applicant and is similar in content to material filed by the Applicant during examination to overcome grounds for rejection under s 44 (‘Examination Evidence’). The examiner considered that the Examination Evidence sufficed to allow acceptance of the Trade Mark based on prior and continuous use (s 44(4)), notwithstanding similarity with several registered IPADDOCK formative trade marks (trade mark numbers 1875376, 1882503 and 1882505) owned by the Opponent.
On 12 October 2021, a delegate of the Registrar informed the parties that she intended to refuse the request to extend the EIA Deadline on the basis that the circumstances relied on by the Applicant were not exceptional, as required by reg 5.15(2)(b). The Applicant filed further correspondence on 15 November 2021. However, the delegate maintained her position and informed the parties on 8 December 2021 that she still intended to refuse the extension of time.
The Applicant subsequently requested a hearing and paid the relevant fee. The matter was heard before me, another delegate of the Registrar, on 1 March 2022. The Applicant was represented by Dimitrios Eliades of counsel instructed by Matthew Sulman of Matthew Sulman & Associates, who appeared by videoconference on behalf of the Applicant. The Opponent did not appear at the hearing but indicated that it objected to the grant of the extension of time.
After the hearing and following consideration of written and oral submissions made by the Applicant, I wrote to the parties on 3 March 2022 advising that if I did not intend to grant an extension to the EIA Deadline under reg 5.15, I would consider that it is appropriate to take into account the EIA under the provisions of reg 21.15(4) and 21.19. I invited the parties to make additional submissions in writing regarding reg 21.15(4) and 21.19. Written submissions were filed by Matthew Sulman on behalf of the Applicant, and Nico de Jong of The Loft Legal on behalf of the Opponent.
Evidence
The Applicant, in addition to relying on declarations annexed to the extension of time requests, relied on two further declarations by its lawyer Matthew Sulman. The first declaration is dated 15 November 2021 and contains Exhibits MJS1 to MJS 3. The second declaration is dated 23 February 2022 and contains Exhibit MJS 4.
The Opponent relied on a declaration by its lawyer Nico de Jong, made on 23 February 2022.
It is not necessary to provide a detailed summary of the contents of the declarations. For present purposes, it is necessary only to say that the declarations confirm that the parties were engaged in genuine negotiations (although the parties had different views on the likelihood of those negotiations leading to a resolution), and the negotiations eventually discontinued during the three month period for which the Applicant seeks an extension of time.
Discussion
Regulation 5.15
Regulation 5.15 states:
5.15 Extension 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;
(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 Applicant relies in its written and oral submissions on three grounds in seeking the extension to the EIA deadline, namely (i) that the bona fide engagement of the parties in negotiating a resolution was, in the circumstances of this case, an exceptional circumstance, (ii) there was an error or omission by the Registrar or an employee of the Registrar, namely, failure of the Registrar to consider that negotiations between the parties were an exceptional circumstance, and (iii) there was an error or omission by the Registrar or an employee of the Registrar namely, that the Registrar after receiving the first request for an extension one day prior to the EIA Deadline, should have notified the Applicant immediately that the EIA was not likely to be granted on the basis that negotiations did not constitute exceptional circumstances, with that error being causative of the EIA not being filed on the EIA Deadline by the Applicant.
With regards to the first ground, the Applicant submits that the category of ‘exceptional circumstances’ is inclusive and not limited to those matters specifically listed under reg 5.15(4). The Applicant submits that a combination of factors makes the circumstances in this case exceptional. Firstly, the evidence is not supplementary, but is the primary evidence relied on by the Applicant. Failure to consider the evidence could amount to the Opponent succeeding otherwise than on the merits of the case. Secondly, there was a delay of some five months after the filing of the first extension before a delegate of the Registrar considered the request. Thirdly, the proceeding is a serious opposition and the evidence contains information regarding use of the Trade Mark that is of probative value, in addition to an alleged admission by the Opponent that the marks of the respective parties are different. Fourthly, there is a public interest in the register being an accurate record of trade marks allowing them to perform their statutory function as indications of trade origin of goods. Fifthly, that there is an additional public interest in having the matter resolved before the Registrar, and not unnecessarily wasting the resources of the Federal Court in a de novo appeal.
I agree with the Applicant that the category of exceptional circumstances that may be considered in granting an extension under reg 5.15 is not closed. I also accept that a combination of circumstances or events that in isolation may not be exceptional could when combined give rise to circumstances that are exceptional in nature. However, I do not consider that the particular circumstances relied upon by the Applicant, even taken in combination, rise to the level of being exceptional.
The Applicant made a conscious choice not to initially file its evidence but to instead file a request for an extension of time one day prior to the EIA deadline. This is despite having already filed the Examination Evidence, which, by the Applicant’s own admission (see below), could also have readily been filed as the EIA. Discussions between parties are very common and by their nature the engagement of parties in genuine negotiations is not exceptional. Unless the parties agree to a cooling off period or the Registrar has otherwise suspended proceedings, parties are still under an obligation to file their evidence in accordance with statutory deadlines. Further, the other factors relied on by the Applicant, while being relevant considerations when deciding whether to exercise discretion to grant an extension of time, cannot be categorised as exceptional either alone or in combination.
With regards to the second ground, I do not consider that the initial delegate made an error in concluding that the existence of ongoing negotiations between the parties did not constitute an exceptional circumstance. In any event, even if that decision had been incorrect, it was not causative of the failure by the Applicant to comply with the EIA Deadline. The Applicant also referred in submissions to a failure of the initial delegate to consider communications which were potentially ‘without prejudice’ as constituting an error by the delegate. However, even if the relevant communications were to be considered, they would do nothing more than support the Applicant’s contention that genuine negotiations between the parties had occurred. This fact is not in dispute, and I have decided that the existence of such negotiations in this case does not constitute exceptional circumstances.
With regards to the third ground, the Applicant submitted that upon receiving the extension of time request one day prior to the EIA Deadline, a delegate of the Registrar should have considered the request and notified the Applicant on the EIA Deadline that he or she did not intend to grant the extension of time. The Applicant in oral arguments submitted that if this had occurred, it would have been ‘quite easy’ for the Applicant’s representative to submit the Examination Evidence as EIA on the EIA Deadline. I do not consider that there is any error or omission by the Registrar or an employee of the Registrar in these circumstances. Whilst the Registrar must consider requests and correspondence filed within a reasonable period, it is unrealistic to expect that the Registrar will consider every request for an extension of time immediately and advise parties whether there are any deficiencies in the request. Further, if as the Applicant submits, the Applicant could have easily filed the Examination Evidence on the EIA Deadline, it is the conscious choice not to file the EIA but to instead seek an extension of time that is causative of non-compliance with the EIA Deadline.
For the reasons give above, I am not satisfied that an extension of time should be granted under reg 5.15 based on any of the grounds relied on by the Applicant.
Regulation 21.15(4) and 21.19
Under reg 21.15(4), the Registrar is not bound by rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate. Under reg 21.19, the Registrar may propose to take into account information that is relevant to proceedings. If the Registrar has reason to believe that the information that she intends to take into account is not known to a party, the Registrar must provide the information to the party and give the party a reasonable opportunity to make representations about the information.
I note that the Applicant had not specifically requested to have the EIA considered under reg 21.15(4) or 21.19. However, the Applicant’s desire to have the EIA considered is clear, and the submissions made in respect of reg 5.15 encompass relevant considerations under reg 21.15(4) and 21.19. I am satisfied it is appropriate in the circumstances of this case that allowance of the EIA into proceedings be considered under reg 21.15(4) and 21.19.
The Trade Marks Office Manual of Practice and Procedure[2] provides some guidance on the factors to be considered in deciding whether to allow late filed evidence. These include:
·Why the evidence was filed after the due date.
·If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier.
·What the evidence shows.
·Why that information is crucial to the delegate’s decision.
·Why it is in the public interest to have the information considered.
·What is the balance of convenience for the parties if the information is considered.
[2] Part 51.2.5.
In Fed Square Pty Ltd v Federation IP Pty Ltd (‘Fed Square’), Hearing Officer Wilson said:
In order to determine whether or not to take information into account under Reg 21.19 it is necessary for an administrative decision maker to consider the nature and significance of the evidence put forward. If that material is of high probative value, that will be a crucial factor in the determination of whether it should be admitted.[3]
…
Parties should not attempt to circumvent the extension of time provisions under the misguided assumption that Regulation 21.19 will apply in every case. Furthermore, while it is available to parties, it is clear that Regulation 21.19 should not be perceived or used as a substitute for the now repealed provisions allowing for the filing of further evidence (or, indeed any available evidence stage).[4]
…
The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account. In the current matter and for the reasons set out earlier I am satisfied that they have been in this case.[5]
[3] [2015] ATMO 42, [50].
[4] Ibid, [54].
[5] Ibid, [55].
In Segator Pty Ltd v FKS Australia Pty Ltd, Hearing Officer Walters considered that circumstances which saw an applicant fail to obtain an extension of time under reg 5.15(2)(a) should also weigh heavily when balancing whether to exercise discretion to allow the evidence under reg 21.19.[6] Hearing Officer Walters then declined to exercise discretion on the basis that the evidence contained many unsupported statements on the cogency of the opponent’s evidence, and no reasons were offered why these unsupported statements were crucial to the substantive opposition or why they had not been provided earlier.[7]
[6] [2019] ATMO 126, [23] to [24].
[7] Ibid, [26].
In Trek Bicycle Corporation v Red Hawk Holdings Pty Ltd, Hearing Officer Richards declined to consider information under regulation 21.15(4) and 21.19 in circumstances where the opponent had delayed preparation of evidence due to settlement negotiations. However, this decision was based primarily on the lack of any compelling reasons given as to how the evidence would be crucial to the outcome of the decision. Further, even if the evidence were not to be considered, the opponent was still able to rely on its ground under s 44.[8]
[8] [2019] ATMO 88,
It was also acknowledged in Fed Square that the possibility of a de novo appeal to the Federal Court is a relevant consideration in deciding whether to exercise discretion to consider information under reg 21.19.[9] There are obvious cost and efficiency benefits to both the parties and the public in a matter being decided at first instance before the Registrar rather than a court. However, this alone is not a reason to exercise discretion to consider late filed evidence, otherwise every party who seeks to file late evidence could simply claim they intend to file a de novo appeal if discretion is not exercised in their favour.
[9] Fed Square (n 2), [44].
The SGP nominates grounds of opposition under ss 41, 43, 44, 58, 58A, and 60. The Opponent submits that the EIA has no bearing on grounds of opposition pursued under ss 43, 58, 58A, and 60, and limited (if any bearing) on grounds of opposition under s 41. As such, the Opponent submits that it is not crucial to the outcome of the opposition. Further, the Opponent refers to the delay of three months in filing the EIA, and contrasts this unfavourably with the delay of only seven days in Fed Square. The Opponent’s submissions also infer that the circumstances leading to failure of the Applicant to obtain an extension under reg 5.15 should also weigh heavily in deciding whether to exercise discretion under reg 21.15(4) and 21.19.
On balance, I consider that there are numerous factors, when taken together, that weigh in favour of consideration of the EIA.
Firstly, the EIA has strong probative value in relation to s 44. While s 44 is not the only ground of opposition relied on, it is an important ground as demonstrated by the fact that the Applicant has already overcome an objection under s 44 at the examination stage by reliance on the Examination Evidence. Further, while the evidence may have a varying degree of relevance in relation to each of the other grounds, I do not consider it is irrelevant. The evidence relates to use of the Trade Mark and this may have relevance in particular contexts for one or more of the other grounds of opposition. I also note there are live issues to be considered in relation to the other grounds, and it is possible that those other grounds may not ultimately be established.
Secondly, I am satisfied that the parties were in genuine negotiations and the evidence was filed within a reasonable period after those negotiations ended (approximately 1-2 months) and within a reasonable period after the initial EIA Deadline (three months). The Applicant also at gave no indication that it did not intend to file evidence. Further, given the EIA was filed prior to the initial delegates letter stating she intended to refuse the extension of time, it is likely that the Opponent would have been expecting the EIA and known it potentially needed to be addressed and responded to by way of Evidence in Reply.

Thirdly, the evidence was filed by the Applicant prior to the end of the evidence stage of the opposition. The Opponent was not ambushed with the evidence late in proceedings. As such, I do not consider that the delay in filing the evidence caused any undue detriment to the Opponent. I also do not consider that the Opponent will suffer any procedural disadvantage, provided that I allow the Opponent time to file additional evidence in response to the EIA (effectively constituting Evidence in Reply).
Fourthly, the EIA demonstrates that the Applicant has a significant commercial interest in the Trade Mark, and that there would be a strong motivation for the Applicant to appeal any adverse decision to the Federal Court. I consider there is a strong public interest in the matter being decided before the Registrar in the first instance based on all available relevant evidence filed by the parties in the opposition.
For the reasons given above, I consider that the balance of convenience clearly weighs in favour of the Applicant and that it is in the public interest to consider the EIA under the provisions of reg 21.15(4) and 21.19, noting that the EIA has been provided to the Opponent (by being uploaded to Objective Connect on 10 August 2021) and the Opponent has been given the opportunity to make representations.
Decision
I have decided that the EIA, being the declaration of Ryan Rose of 10 August 2021 with Exhibits RDR-1 to RDR-14 should be considered under the provisions of 21.15(4) and 21.19.
Given that the Applicant has the benefit of relying on the EIA in the proceedings, I direct that the Opponent may file via Objective Connect any evidence on which it wishes to rely in reply to the EIA by 9 July 2022.
Blake Knowles
Hearing Officer
Delegate of the Registrar of Trade Marks
9 May 2022

[2022] ATMO 70

9 May 2022