Mygrain Solutions Pty Ltd v Scintex Pty Ltd - [2022] ATMO 70

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] ATMO 70
Decision Date: 9 May 2022

CaseChat Overview and Summary

This matter concerned an application by Mygrain Solutions Pty Ltd (the Applicant) for an extension of time to file evidence in answer in opposition proceedings before the Registrar of Trade Marks, with Scintex Pty Ltd (the Opponent) being the other party. The Applicant sought to extend the deadline for filing its evidence in answer, which had passed.

The primary legal issue before the Hearing Officer was whether to grant the Applicant an extension of time to file its evidence in answer under regulation 5.15 of the *Trade Marks Regulations 1995* (Cth). Alternatively, the court had to consider whether, if an extension was not granted under regulation 5.15, it was appropriate to take the Applicant's evidence into account under regulations 21.15(4) and 21.19. The Applicant argued that its bona fide engagement in settlement negotiations constituted an exceptional circumstance justifying an extension, and also raised grounds relating to alleged errors or omissions by the Registrar.

The Hearing Officer noted that the Applicant had made requests for an extension of time, and after considering submissions, advised the parties that if the extension under regulation 5.15 was not granted, the evidence would be considered under regulations 21.15(4) and 21.19. The Applicant relied on declarations from its lawyer, and the Opponent relied on a declaration from its lawyer, both confirming that genuine negotiations had occurred but eventually discontinued. The Hearing Officer ultimately decided that the balance of convenience favoured the Applicant and that it was in the public interest to consider the Applicant's evidence in answer under regulations 21.15(4) and 21.19, given that the evidence had been provided to the Opponent and the Opponent had an opportunity to make representations.

The Hearing Officer directed that the Applicant's evidence in answer, being the declaration of Ryan Rose dated 10 August 2021 with exhibits, would be considered under regulations 21.15(4) and 21.19. The Opponent was granted leave to file any evidence it wished to rely on in reply to this evidence by 9 July 2022.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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. DiscussionRegulation 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.

Decision

Reasons for decision

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 KnowlesHearing OfficerDelegate of the Registrar of Trade Marks9 May 2022

Ratio Decidendi

Legal Principle Established

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