NCL Corporation Ltd. v Norwegian Brand Ltd

[2020] ATMO 131

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by NCL Corporation Ltd. to extension of protection to Australia of International Registration Designating Australia 1273316 (classes 16, 35, 38, 39, 43) - NORWEGIAN.COM (figurative) (Australian Trade Mark Application No. 1847335) and International Registration Designating Australia 1273904 (classes 16, 35, 38, 39, 43) - NORWEGIAN.COM (figurative) (Australian Trade Mark Application No. 1847336) – both in the name of Norwegian Brand Ltd.

– and –

Application by NCL Corporation Ltd. for an extension of time to file evidence in support and request to have regard to late-filed evidence under regulation 21.19.

Delegate:	Nicholas Smith
Representation:	Opponent: Clive Elliot QC of Counsel instructed by Kate Duckworth Intellectual Property Limited Holder: Did not appear in respect of the extension of time application
Decision:	2020 ATMO 131 Trade Marks Act 1995 (Cth) – application for extension of time to file evidence under regulation 17A.34K – grounds for extension of time under regulation 17A.34K(a) and (b) considered – no grounds established – application for extension of time refused – request to have regard to late filed evidence under regulation 21.19 – discretion applied

Background

1. Extension of protection in Australia for International Registrations Designating Australia 1273316 and 1273904 (trade mark application numbers 1847335 and 1847335) in the name of Norwegian Brand Ltd (‘Holder’) are opposed by NCL Corporation Ltd. (‘Opponent’).

2. Regulation 17A.34J(3) of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), provides that evidence in support of this opposition was to be filed by the Opponent by 11 September 2019. On 4 September 2019, the Opponent sought an extension of time of three months within which to file its evidence in support (‘Request’).[1]

   [1] The Opponent’s Evidence in Support, being a declaration of Daniel Farkas (‘Farkas declaration’), was filed on 10 December 2019.  The request was technically made under reg 5.15 however as the application is for the extension of protection of an International Registration Designating Australia the proper provision is 17A.34K, which is substantively identical and this decision treats the request as being made under reg 17A.34K.

3. A delegate of the Registrar of Trade Marks (‘Registrar’) wrote to the Opponent on 9 October intending to refuse the Request.  A copy of the Request and the Registrar’s letter were sent to the Holder at the same time.

4. The Opponent responded on 21 October 2019 with a letter providing further information in support of the Request.  The Registrar wrote again to the Opponent on 8 November 2019 expressing an intention to refuse the Request, but also offering the Opponent the opportunity for an oral hearing.  The Opponent’s further reasons and the Registrar’s second letter were also forwarded to the Holder at that time.

5. The Opponent applied to be heard in relation to the Request on 20 November 2018.  This office issued formal hearing notices to both parties setting the Request to be heard initially on 14 April 2020, however due to the impact of Covid-19 on the parties the hearing was delayed until 14 July 2020.

6. The Opponent also filed written submissions as directed, and Clive Elliot QC instructed by Kate Duckworth of Kate Duckworth Intellectual Property Limited appeared on its behalf by video conference at the hearing on 14 July 2020. The written and oral submissions sought, in the event that the Registrar refused the Request, that the Registrar have regard to the Farkas declaration pursuant to Regulation 21.19 of the Regulations. This decision shall also consider whether discretion should be exercised pursuant to r 21.19.

   The Opponent’s Evidence and Submissions

7. In support of the Request the Opponent filed, on 8 May 2020, a declaration dated 7 May 2020 by Nicole Meyer, Equity Partner of Dickinson Wright PLLC, the Opponent’s representative (globally) (‘Meyer Declaration’). 

8. On June 30, 2020 the Opponent filed written submissions (‘Opponent’s Submissions’).  These submissions included a chronology, list of facts and relevant case law.

   The Opponent’s timeline

9. The Opponent has set out a timeline of its work in preparing the Farkas declaration.  The Meyer declaration notes that the Opponent and Holder are engaged in range of disputes around the world.  The Opponent is a large and well-known cruise company and the Holder is an airline.  There are approximately 25 such disputes in different jurisdictions.

10. It is not necessary to set out the chronology in full but in summary the Opponent’s representative Kate Duckworth of Kate Duckworth Intellectual Property Pty Ltd and the Opponent’s US attorney were in communication as early as March/April 2019 regarding the preparation of evidence in this matter.  A draft statutory declaration was sent to the Opponent’s US attorney on 17 April 2019.  On 15 May 2019 the US attorney sent further information to the Opponent’s representative and a revised declaration was sent back 3 days later.  On 11 June 2019 the Opponent was advised that the deadline for filing evidence in support was 11 September 2019.

11. The Meyer Declaration states that ‘during July and August 2019, the opponent kept gathering the information required to complete the evidence’.  No other evidence is presented to explain the Opponent’s conduct during these months, nor is there any explanation of how this process could have taken two months, notwithstanding that the parties were involved in a number of (presumably similar) trade mark disputes around the world.

12. The Opponent’s representative sent follow up e-mails to the Opponent’s US attorney in July and August and on 27 August 2019 sent a further follow-up e-mail raising concerns about missing the filing deadline, following which the Request was filed on 4 September 2019.  A draft statutory declaration was prepared by 21 October 2019 and filed on 10 December 2019.

13. It is apparent from the timeline that the Opponent’s representative bears no blame for the failure of the Opponent to file its Evidence in Support; it prepared the draft declaration well before the deadline, and was prompt in turning around draft declarations and sent regular reminders to the Opponent.  What is not apparent is what work the Opponent conducted on the draft declaration between 18 May 2019 and the deadline of 11 September 2019.

14. The Meyer declaration notes that the Opponent has a large global trade mark portfolio and the Deponent deals directly with one attorney and one paralegal in-house.  Given the size of the Opponent, this presumably does not represent the entire in house legal team of the Opponent, rather it simply illustrates the individuals with whom the deponent worked.  The Meyer declaration states that the Opponent had a number of other opposition deadlines in various jurisdictions around the world between June and September 2019 that were taking up significant time for the Opponent and its legal representatives and despite working diligently they were unable to satisfy the original deadline of September 11, 2019.

    The extension of time provision

15. Regulation 17A.34K is reproduced in full below.  I note that this provision is substantively identical to Regulation 5.15, which provides for an extension of time in respect of applications to register trade marks filed with the Registrar.  For the purposes of summarising the principles, I shall refer to case law in respect of Regulation 5.15:

    17A.34KExtension of time for filing

    (1)A party may request the Registrar to extend a period for filing evidence mentioned in regulation 17a.34J.

    (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 Subdivision; 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 Subdivision;

    (b)an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Subdivision;

    (c)an order of a court or a direction by the Registrar that the opposition be stayed.

16. Sub-regulation (2) provides two alternative grounds.  I must first be satisfied that at least one of those grounds has been established before exercising my discretion to grant an extension of time, and the length of the extended period, are enlivened.  The Opponent has made submissions for each ground, which I consider in turn below.

    Discussion of the grounds for an extension of time

    Regulation 17A.34K(2)(a)

17. The evidence in the Meyer declaration establishes that the Opponent’s representative had been acting promptly and diligently in preparing a draft statutory declaration almost 5 months before the evidence was due.  However aside from correspondence from the Opponent’s representative regarding the impending deadline, there is no evidence, short of generalised assertion, that the Opponent itself acted promptly and diligently in gathering evidence and preparing the Evidence in Support at any point between 18 May and 11 September 2019.  Indeed there is no evidence other than generalised assertion, that the Opponent (or its representatives) did any gathering of evidence or took any steps in the preparation of the Evidence in Support during this period.

18. The Opponent also, in its submissions, points to the extent of the evidence filed and the relatively small number of personnel involved in preparing the evidence for the Opponent.  These submissions are not persuasive.  Firstly, the two individuals referred to in the Meyer Declaration were not the whole of the Opponent’s in-house team; the Opponent could have assigned other individuals to assist in the project (or engaged third party support) and apparently chose not to.  Secondly, it was the Opponent’s forensic decision to file that quantity of evidence.  The fact that it made that decision but also decided not to provide adequate internal resources to prepare this evidence does not show that the Opponent has made all reasonable efforts to comply with all relevant filing requirements, rather it suggests the opposite.  Finally, I am not persuaded that the nature of the Opponent’s reputation (and hence the evidence necessary to file in this matter) was significantly greater than that filed by other large multinational companies in proceedings of this nature.   

19. The Opponent has not satisfied me that a ground for extension of the period for filing evidence in support found in reg 17A.34K(2)(a) has been established. 

    Regulation 17A.34K(2)(b)

20. The Opponent submits that the combination of the large quantity of the evidence necessary to prepare, the small size of the Opponent’s legal team and the considerable number of other evidentiary deadlines it faced amounted to exceptional circumstances that justified the extension of time.

21. The Meyer declaration lists a number of evidentiary and other legal deadlines that faced the Opponent between June and September 2019, however it provides no information about what sort of similar deadlines the Opponent faced prior to June or after September 2019.  As a result I cannot find that the evidentiary burdens on the Opponent were exceptional or unusual (even under the broad definition of ‘exceptional’ that the Opponent submitted that I should have regard to[2]).  In any event, as noted at paragraph 18 above, the fact that the Opponent made the forensic decision to prepare a large amount of evidence and apparently did not have the internal resources to complete preparation by a deadline does not amount to exceptional circumstances.  This is particularly the case where there is no evidence, other than generalised assertion, that the Opponent took any steps to prepare evidence between 18 May and 11 September 2019.

    [2] See Merial Inc v Intervet International B.V. [2017] NZHC 2918, [31].

22. What is apparent is that the Opponent was presented with a draft statutory declaration and a request for evidence almost 5 months before the deadline.  It then received a revised declaration 4 months before the deadline.  Despite being apprised of the deadline, it took no documented steps to progress this revised declaration in the next 4 months.  While it may have had internal constraints, the Opponent is a large corporation and there was nothing preventing the Opponent from devoting more internal resources to gathering its evidence with the aim of filing the evidence in a timely manner.

23. The Opponent has not satisfied me that the ground for extension of the period for filing evidence in support found in reg 17A.34K(2)(b) has been established.

    Residual discretion to admit late filed evidence

24. The Opponent further submits that there is a public interest in allowing the extension of time.  I note that reg 17A.34K does not contain a discretion allowing an extension of time for evidence if it is in the public interest and as such I cannot consider the Request on that basis.

25. However I can consider the Opponent’s Submissions with respect to the residual discretion to consider its late filed evidence when deciding the opposition pursuant to s 55.

26. The Opponent submits that a discretion to admit late filed evidence is found in reg 21.19, which I have extracted below:

    21.19Registrar may use information available

    (1)If:

    (a)information that is available to the Registrar is relevant to proceedings before the Registrar; and

    (b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and

    (c)the Registrar proposes to take the information into account in making a decision in the proceedings;

    before making the decision the Registrar must:

    (d)provide the information to the party; and

    (e)give the party a reasonable opportunity to make representations about the information.

    (2)For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

27. The delegate of the Registrar in Federation Square Pty Ltd v Federation IP Pty Ltd (‘Federation Square’) provided a useful summary of Regulation 21.19:

    Historically, regulation 21.19 has been utilised by delegates of the Registrar to take into account information provided at examination that was not served for opposition purposes,[3] or for material arising from notices to produce[4] and other information the delegate became aware of that was pertinent to the proceedings.[5] In essence, the applicability of regulation 21.19 is not limited in the type of material it may allow into proceedings. Neither is the regulation limited to a particular point at which it may be considered, although it has ordinarily been applied by the delegate at around the time the substantive opposition matter is heard and after the other party has had an opportunity to respond.[6]

    [3] Laboratoires La Prairie v Wendy Stockden-Brock [2005] ATMO 80.

    [4] Lodestar Anstalt v Austin, Nichols & Co Inc [2009] ATMO 38; (2009) 82 IPR 308.

    [5] Davide Campari-Milano SpA v Perfection Fresh Australia Pty Ltd [2008] ATMO 53.

    [6] Federation Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [36].

28. The delegate in Federation Square also noted that as there are;

    ·     no longer any ‘further evidence provisions’ in relation to matters commenced after April 2013;

    ·     that there is a reduced evidence in reply stage, and

    ·     that there are more rigorous requirements for extensions of time,

    it was anticipated by the legislature that Regulation 21.19 may play a different role in trade mark oppositions than it had in the past.[7] The delegate referred to the following from the Explanatory Statement to the ‘Raising the Bar’ amendments:

    Current regulation 21.19 provides a general discretionary power to the Registrar to inform herself of any information available to the Registrar by reference to any document available in the Trade Marks Office. Following the restructuring of the Trade Marks Regulations by item 11, the Registrar will still have the discretion to consider whether the information is relevant and whether it should be taken into account. However, it is not intended that the provisions of current regulation 21.19 be used as a substitute for the repealed further evidence provisions.[8]

    [7] Ibid [38].

    [8] Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No.1) p 29 (emphasis added).

29. The delegate also stated:

    The clear intention is that Regulation 21.19 should not [be] interpreted as a substitute for the repealed further evidence provisions. The fact that prior to the ‘Raising the Bar’ amendments Regulation 21.19 existed concurrently with the further evidence provisions affirms that the original intent of the regulation was to stand apart from the regular evidence stages of the opposition. Parties should not assume an entitlement to the application of Regulation 21.19 and the presence of an evidence stage appropriate for that material will not assist the party applying.[9]

    However:

    [T]he intent of the ‘Raising the Bar’ amendments cannot be to entirely shut out [of] oppositions where there is a serious issue to be heard, the evidence is of high probative value, submitted shortly after the due date and is immediately available to the Registrar and the other side.[10]

    [9] Federation Square, [40].

    [10] Ibid [52].

30. The delegate of the Registrar in TWG Tea Company Pte Ltd v Tsit Wing International Company Limited stated her view that:

    [A] serious opposition should be able to be decided on the merits of the case, with all relevant information available to the delegate of the Registrar for the making of that decision. This principle remains undiminished and is a potent factor to be weighed into the balance whenever a Registrar’s delegate exercises discretion under legislation that has the potential to exclude evidence crucial to an opposition outcome.[11]

    [11] [2015] ATMO 64, [45].

31. There must be a compelling case for the Registrar to take information into account that is not part of properly filed evidence.  The decision of a delegate to take into account information under Regulation 21.19 requires consideration of a number of factors which include: the public interest and that of the parties in matters being decided in a timely and predictable manner; the public interest that the delegate of the Registrar have before them all material relevant to a decision; the requirement that principles of procedural fairness be adhered to; and the relative inconvenience to the parties.[12]  There can be significant tensions between these factors and the Registrar must weigh up each factor in making her decision.

    [12] Registrar of Trade Marks v Woolworths Ltd (1999) FCA 1020, per French J.

32. In the present case, I am conscious of the fact that If I did not allow consideration of the Evidence in Support, it appears prima facie that the Opponent would be unable to succeed on 3 of the 4 grounds of opposition particularised in the SGP, namely the grounds of opposition under ss 58, 58A and 60 of the Act.  It is possible that the oppositions may succeed under section 44 based on the trade marks cited in the statements of grounds and particulars.  However the Opponent’s evidence in support appears to be directly relevant to the use and reputation of the Opponent’s and its trade marks in Australia and accordingly is of a high probative value.

1. If the Opponent were also unsuccessful in respect of the s 44 ground of opposition the effect of refusing to have regard to the evidence under regulation 21.19 would appear to be to require the Opponent (in order for the grounds under ss 58, 58A and 60 to be considered) to appeal the decision of the Registrar to a court of competent jurisdiction where the evidence, if admissible, would not be excluded.  As noted in Studio SrL v Buying Systems (Aust) Pty Ltd[13], it would be preferable for these oppositions to be fully decided by the Registrar and the parties not be forced into incurring the additional expense of a hearing in the courts.  Indeed the present proceeding has similarities with the circumstances in Federation Square’ where the delegate noted:

   [T]he likely eventuality of not allowing the material to be considered in the proceedings is that the opposition proceeds under the section 44 ground of opposition, and in the event the Opponent is unsuccessful, it must appeal to the Federal Court to have the matter decided on whatever grounds and evidence it then formally relies on. Alternatively, the opposition may be withdrawn and the Opponent is still forced to prosecute the matter through the courts. Of course this is a risk that all parties take if they fail to submit their evidence by the due date. On these facts not allowing the material to be considered seems to be at odds with the broader purpose of the relevant ‘Raising the Bar’ amendments, which were to “reduce delays in the resolution of patent and trade marks applications” and to “streamline the opposition process”.[14]

   [13] [1992] AIPC 90-858.

   [14] [2015] ATMO 42, [44] (citations omitted).

2. There is a considerable public interest in avoiding an additional and unnecessary court hearing in order to hear all the grounds of opposition particularised by the Opponent, which would also delay the final resolution of the matter.  Furthermore consideration of the Opponent’s Evidence in Support would involve little inconvenience to the Holder (as the Holder will be provided time to file Evidence in Answer and may avoid the additional costs of an appeal of the decision of the Registrar).  As such, I consider it appropriate to exercise the discretion under reg 21.19 and have regard to the Opponent’s Evidence in Support in this proceeding

   Decisions

   35.     The Request for an extension of time under regulation 17A.34K has been refused.  Under Regulation 21.19 I allow the material comprising the Opponent’s Evidence in Support being the Farkas declaration to be considered by the Registrar in making her decision on the substantive opposition.  If not already provided, the Holder must be provided with a copy of the Farkas declaration so it will have a reasonable opportunity to respond (by means of filing its evidence in answer).

3. Accordingly, the Holder’s evidence in answer is due three months from the date of this decision.

   Nicholas Smith
   Hearing Officer
   Oppositions and Hearings
   Trade Marks and Designs
   3 August 2020