Neurocrine Biosciences Inc v KINNECT Holdings Pty Ltd
[2023] ATMO 63
•17 May 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application under regulation 9.11 of the Trade Marks Regulations 1995 (Cth) by KINNECT Holdings Pty Ltd for an extension of time to file a notice of intention to oppose the application for removal of registered trade mark 1406467 (classes 16, 41, 42 and 44) for KINNECT made by Neurocrine Biosciences Inc
Delegate: | Benjamin Goldsworthy |
Representation: | Removal Applicant: King & Wood Mallesons Removal Opponent: IP Wealth Pty Ltd |
Decision: | 2023 ATMO 63 Trade Marks Regulations 1995 (Cth) – request under regs 9.11 for extension of time to file notice of intention to oppose – presence of intention to file and causative error – grounds justify extension – extension granted |
Background
This decision concerns a request for an extension of time (‘EOT Request’) made under reg 9.11(1)[1] by KINNECT Holdings Pty Ltd (‘Removal Opponent’) to file a Notice of Intention to Oppose (‘NIO’) in relation to an application under s 92(4)(b) (‘Removal Application’) for the removal of registered trade mark 1406467 (‘Trade Mark’) made on 24 June 2022 by Neurocrine Biosciences Inc (‘Removal Applicant’).
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
On 30 June 2022, this office advertised the Removal Application for opposition purposes. This office also advised the Removal Opponent of the Removal Application on the same day. That letter noted that the period to file a NIO would end on 30 August 2022. On 31 August 2022, the Removal Opponent’s representative firm at that time (‘Agent’) filed the NIO. On 1 September 2022 a delegate of the Registrar responded noting that the NIO was received late, affording an opportunity to respond. On 5 September 2022 the Agent filed the EOT Request. It was accompanied by an irregular declaration apparently written by a person yet signed in the representative firm’s name (‘Initial Declaration’). On 27 September 2022, a delegate of the Registrar expressed an intention to grant the extension of time (‘EOT’). In response, the Removal Applicant filed written submissions on 11 October 2022, which persuaded the delegate to reverse course and express an intention to deny the EOT Request. In reply, on 22 November 2022, the Removal Opponent filed declarations of Kevin Conlon, Chief Executive Officer and Managing Director of the Removal Opponent (‘Conlon-Declaration’) and Hannah Fas, lawyer of the Agent (‘Fas-Declaration’), both of 22 November 2022. In December 2022, the delegate then expressed an intention to grant the EOT Request.
The Removal Applicant requested an oral hearing and the parties filed written submissions. I heard the matter as delegate of the Registrar of Trade Marks on 6 March 2023. The Removal Opponent was represented by Karla Holzberger from IP Wealth (IP Wealth had at this point taken over carriage of the opposition from the Agent). The Removal Applicant did not appear, relying only on written submissions of Bill Ladas from King & Wood Mallesons.
Legislation
A person may file an application for removal of a trade mark from the Register on the two grounds set out in ss 92(4)(a) and (b). However, any person may oppose such application by filing a notice of opposition with the Registrar.[2] A ‘notice of opposition’ is constituted by the NIO and Statement of Grounds and Particulars (‘SGP’). A trade mark must be removed from the Register if no opposition to the application is made.[3] A NIO must be filed within 2 months from the day that the application for removal is advertised in the Official Journal.[4] However, the intellectual property regimes do have flexibilities for mandatory dates intended to minimise the occasioning of serious injustices.[5] The trade marks regime in particular provides that EOTs may be granted if the Registrar is satisfied of certain matters.
[2] Section 96(1).
[3] Section 97.
[4] Regulation 9.8.
[5] Alphapharm Pty Ltd v H Lundbeck A-S [2014] HCA 42 (‘Alphapharm’), [7] (Crennan, Bell and Gageler JJ)
Regulations 9.11 and 9.12 provide:
9.11 Extension of time for filing—application
(1) A person who intends to oppose an application for removal may request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under subregulation 9.8(1); or
(b) the period for filing a statement of grounds and particulars under subregulation 9.9(1).
(2) A request under paragraph (1)(a) or (b) may be made within the period for filing the document in question.
Note: See subparagraph (3)(b)(ii) and subregulation 9.12(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must:
(a) be in an approved form; and
(b) be accompanied by a declaration stating:
(i) the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice of intention to oppose or the statement of grounds and particulars has ended—the reason why the request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds:
(a) an error or omission by the person, the person’s agent, the Registrar or an employee;
(b) circumstances beyond the control of the person, other than an error or omission by the person, the person’s agent, the Registrar or an employee.
9.12 Extension of time for filing—grant
(1) The Registrar may grant a request under subregulation 9.11(1) for an extension of time only if the Registrar is satisfied that the grounds set out in the request justify the extension.
(2) However, if the request is made after the period for filing the notice or statement of grounds and particulars has ended, the Registrar must not grant the extension unless the Registrar is satisfied that there is sufficient reason for the delay in making the request.
(3) The Registrar must decide the length of the extended period having regard to what is reasonable in the circumstances.
Consideration
It is for the Removal Opponent to demonstrate that sufficient grounds exist that justify the EOT.[6] The Removal Opponent pressed only grounds under 9.11(4)(a). For this it must first show a preliminary intention to file the NIO before the required period and that the intention was frustrated by an error or omission.[7] The Removal Applicant acknowledges implicitly that a requisite intention to file the NIO existed and much of its argument focuses on alleged gaps in the evidence and arguments around causation. I regard the declarations and especially the Removal Opponent’s email instructions to the Agent as evidence of the Removal Opponent’s intention to file an effective NIO, in time.[8] As grounds for the EOT Request, the Removal Opponent relies on an alleged error in the Agent’s belief about the last day for filing of a NIO (‘End Date’).[9]
[6] Regulations 9.11 and 9.12.
[7] British Sky Broadcasting Ltd v SkyNetGlobal Limited [2003] ATMO 17 (‘British Sky’); Crown & Andrews Pty Ltd v All American Fremantle International Inc (1997) 38 IPR 595, 604 (Reg); Stork Pompen BV v Weir Pumps Ltd (1988) 11 IPR 542, 546 (Reg); Re Kimberly-Clark Limited v the Commissioner of Patents and Minnesota Mining and Manufacturing Company [1988] FCA 421 (‘Kimberly-Clark’) (Jenkinson J). See also South & Walker Ltd v Goldmine Software Corp (2001) 49 IPR 85 (Reg), 94 (‘Goldmine’), also involving a failure to file a NIO to a non-use application and an error by the lawyer for the registered owner; and Terumo KK v Boston Scientific Ltd (2000) 62 IPR 151 (Reg), where an agent ‘lost track’ of time and an EOT was granted.
[8] Conlon-Declaration, Exhibit 1, Email from Kevin Conlon to the Agent, 23 August 2022.
[9] Regulation 9.11(4)(a).
Some important context is that two non-use applications for two trade marks owned by the Removal Opponent (the Trade Mark and trade mark 948963) were filed together by the Removal Applicant on the same day in the same document. However, the non-use application for the Trade Mark was processed by this office on the day before that for trade mark 948963. Therefore, the advertisement dates in the Official Journal were different, resulting in the End Date for filing the NIO for the Trade Mark occurring on 30 August 2022 and on 1 September 2022 for trade mark 948963.[10] The responsible lawyer of the Agent assumed other correspondence concerning the date was not relevant and relied solely on notices regarding trade mark 948963’s End Date when filing the NIO for the Trade Mark, because the non-use applications had been filed on the same day.[11] Errors, even by experienced professionals, are not uncommon, especially concerning deadlines.[12] The error or omission here is sufficiently explained, not unordinary and little would gained by a one day delay. The evidence shows a misapprehension, but not complete ignorance of the End Date. The specified misapprehension qualifies as the type of error contemplated by this ground.
[10] Recall that, the manner that the End Date is calculated for filing the NIO is based on the advertisement of the non-use application in the Official Journal and the filing of the NIO must occur within two months of that date. See, paragraph [4] of these reasons.
[11] Fas-Declaration, [20]-[21].
[12] There are numerous examples of failures to diarise such as in British Sky (n 7) and Genetech Inc v Wellcome Foundation Ltd (1988) 11 IPR 401 (Reg) (‘Genetech’). Other areas of the law on the question of EOTs also reflect this. See, Jess v Scott (1986) 70 ALR 185 (Wilcox J), where a solicitor received instructions to file and a relevant notice, though acted one day after the period allowed and Re Dixon and Mellos as the Controlling Trustees of the Estate of Urwin [2017] FCCA 2180 (Barnes J), concerning miscalculation and request for an extension of time by one day.
The Removal Applicant submits that the Removal Opponent has not identified the individual who made a relevant error. This was so for the Initial Declaration. However, the later declarations remedy this, showing that person as being the responsible lawyer. The Removal Applicant asserts a lack of ‘full and frank disclosure’ from all relevant officers, particularly administrative staff. It questions the causal link between the failure to act and the alleged error, asserting that administrative staff would have been responsible for entering in deadlines on a system based on correspondence, such as a letter referencing the End Date, sent to the Agent on 26 August 2022. In this regard, Kimberly-Clark is relied upon.[13] However, the court there was, ‘not laying down rules for the exercise of general discretions to grant [EOTs].’[14] Furthermore, the context for an EOT Request is important.[15] Kimberly-Clark concerned an EOT for the opposition to a grant of a patent, where the would-be opponent was apparently unaware of an opposition period running. In such case, examination of the intentions of a would-be opponent and comprehensive declarations from multiple persons might be required.[16] Because the Agent acted on a clear anterior intention to file an effective NIO, late by only a single day, exploration of all the conduct, knowledge, beliefs and mental processes of all the various persons would be of limited additional assistance and only foster delay. Such comprehensive disclosure, whilst strengthening the case for the EOT Request, is not always necessary.[17] Evidence at hand already supports both actual knowledge that there was an opposition period running, and the presence of a relevant and causative error or omission.
[13] Kimberly-Clark (n 7) [17] (Jenkinson J), requiring ‘prompt, frank, comprehensive and clear disclosure’.
[14] Ferocem Pty Limited v Commissioner of Patents [1994] FCA 981, [6] (Burchett J).
[15] Re Sanyo Electric Co Ltd and Commissioner of Patents (1996) 36 IPR 470, 479 (Deputy President McDonald). See also, Happy Skincare Pty Ltd ATF Breckell Family Trust v Happy Skin Co Pty Ltd [2020] ATMO 92 (‘Happy Skincare’), [11].
[16] Happy Skincare ibid.
[17] Happy Skincare (n 15) [11].
The Removal Applicant alleges various contradictions in the evidence. It notes an email from the Agent to the Removal Opponent stating, ‘we will proceed to file the Notices of Opposition early next week’, yet the NIO was filed the following Wednesday, and not ‘early next week’. This is de minimis. The Fas-Declaration states the NIO filing was delayed to, ‘allow…sufficient time to prepare and file its [SGP]’.[18] This is suggested to be inconsistent with another email which states, ‘[w]e are also well progressed in preparing the Statements of Grounds and Particulars…due in one month’s time’.[19] These statements are not contradictory or inconsistent. That a filing is ‘well progressed’ does not necessarily mean the filing or filer is ready. Notwithstanding its misapprehension of a single day, the Agent acted in an otherwise ordinary manner. The EOT Request is otherwise not ‘so seriously lacking’ such that it would not be reasonable to conclude requisite intention and causative error were present.[20] It is in my estimation significantly more likely than not that the NIO would have been filed on time but for the error about the End Date.
[18] Fas-Declaration, [9].
[19] Fas-Declaration, Exhibit 1, Email from Agent to the Removal Opponent, 31 August 2022.
[20] Kimberly-Clark (n 7) [17] (Jenkinson J).
The relevant period for filing of the NIO ended on 30 August 2022. As the EOT request was made on 5 September 2022, reg 9.12(2) is applicable. This requires that I be satisfied there is sufficient reason for the delay in making the EOT Request. The initial EOT Request was filed 5 days after the End Date. The reasons offered for the delay include that the error was only discovered after the event. As already noted, the initial EOT Request had deficiencies, but these were overcome by at latest 22 November 2022. Whilst those who seek indulgences are well advised to ask early with all in order at the time of the request, this must be balanced against making a prompt initial EOT request. Unnecessary delay in requesting an EOT after already missing a deadline will typically lessen the likelihood of its grant. Here the additional delay is very short and a reasonable time was taken to correct the particular deficiencies and it is not otherwise colourable. I am satisfied that the delay in finalising the request has sufficient reasons. I must also consider whether the EOT period requested is reasonable in the circumstances. The request is for a single additional day, which is about as short as an EOT can be. This time goes no further than is reasonably required to remedy the issue. I am satisfied that one day is reasonable in these circumstances.
I now consider whether the grounds as set out in the EOT Request, being the error and its circumstances, justify its grant.[21] Because of their nature, EOT discretions should be applied beneficially.[22] The public interest often also prefers serious matters be dealt with on the merits, rather than be shut out on a technicality.[23] An allegation of non-use of a trade mark is a serious matter. The non-use matter for the identical trade mark 948963, claiming some of the Trade Mark’s designated services, has progressed forward.[24]
[21] Regulation 9.12(1).
[22] Chalk v Commissioner for Superannuation (1994) 50 FCR 150 (‘Chalk’), 155 (Davies J). See also, Richard Hall, Re [1997] ATMO 69 and Express Sales & Marketing Pty Ltd v Snapper Hill Group Pty Ltd [2022] ATMO 93 (‘Express Sales’).
[23] Kaiser Aluminium and Chemical Corporation v The Reynolds Metal Company [1969] HCA 7, [14] (Kitto J).
[24] See Genetech (n 12) which considered ‘serious interest’ in the opposition there shown by a separate case on the same material, before the UK Patents Court.
The balance of convenience[25] and the consequences between the parties[26] are of relevance, and further justify the grant. The Removal Opponent’s clear and serious disadvantage outweighs the prejudice to the Removal Applicant.[27] The evidence stages of non-use proceedings will be set back a few months by grant of this EOT. This does not greatly prejudice either the Removal Applicant or the public. Otherwise, no severe impacts or serious irreparable mischief for any party is likely by a grant. Rather, the type of ‘serious injustice’[28] EOT provisions generally seek to minimise would result from no grant, noting the grounds and relatively short period requested. Granting this short EOT shuts out no party. In the circumstances, I am satisfied that the grounds that are set out in EOT Request justify the extension.
[25] Express Sales (n 22), [34]-[35]; Cacao Fine Chocolates & Patisserie Pty Ltd v Pana Chocolate Holdings Pty Ltd [2017] ATMO 36, [23]; Goldmine (n 7); Atomic Skifabrik Alois Rohrmoser v Sasdor Pty Ltd (1988) 11 IPR 605 (Reg).
[26] Chalk (n 22) 156 (Davies J).
[27] Goldmine (n 7).
[28] Alphapharm (n 5).
Decision
For the reasons above, I exercise the discretion of the Registrar under reg 9.12 to grant the request made under 9.11(1) for an EOT of one day for the Removal Opponent to file the NIO.
Costs
The Removal Opponent has been successful and seeks costs. However, the Removal Applicant counters that the authorities provided by the Removal Opponent do not stand for a general rule that costs should follow the event in EOT Request matters regardless of the result. The Removal Applicant asserts that each party should bear its own costs, noting the Removal Opponent’s ‘successive opportunities’ to correct the minor deficiencies in especially the initial EOT Request, which occurred before the hearing. The Registrar may award costs against any party.[29] However, ample authority exists stating as the starting point that costs follow the event.[30] No specific circumstances exist, such as particularly blameworthy or oppressive conduct,[31] otherwise making departure from the general rule reasonable. I award costs against the Removal Applicant according to Schedule 8 of the Regulations
[29] Section 221.
[30] Milne v Attorney-General (Tas) [1956] HCA 48, [32] (Dixon CJ, McTiernan, Fullagar and Taylor JJ). See also, Cranbrook School v Wylie [2004] ATMO 49 (‘Cranbrook School’) and Ian Horak and Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off (7e, TR, Online) 318.
[31] Cranbrook School ibid [63].
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
17 May 2023
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