Neurocrine Biosciences Inc v KINNECT Holdings Pty Ltd

This decision concerned a request by KINNECT Holdings Pty Ltd (the Removal Opponent) for an extension of time to file a Notice of Intention to Oppose an application by Neurocrine Biosciences Inc (the Removal Applicant) for the removal of registered trade mark 1406467 from the Register. The Removal Opponent's representative had filed the Notice of Intention to Oppose one day after the expiry of the prescribed two-month period. The delegate of the Registrar of Trade Marks heard the matter and considered submissions from both parties.

The primary legal issue before the delegate was whether to grant the Removal Opponent's request for an extension of time under regulation 9.11 of the Trade Marks Regulations 1995 (Cth). This required the delegate to be satisfied that the grounds for the extension justified its grant, as stipulated by regulation 9.12. Specifically, the delegate had to determine if the Removal Opponent had demonstrated an intention to file the Notice of Intention to Oppose within the time limit and if that intention was frustrated by an error or omission, as contemplated by regulation 9.11(4)(a). The delegate also had to consider whether there was sufficient reason for the delay in making the extension request itself, given it was filed after the initial deadline had passed.

The delegate reasoned that the Removal Opponent had established a clear intention to file the Notice of Intention to Oppose in time, evidenced by email communications. The delay was attributed to an error by the Removal Opponent's agent, who mistakenly believed the deadline for filing the Notice of Intention to Oppose was one day later than it actually was, due to the different advertisement dates of two related trade mark removal applications. The delegate found this misapprehension to be a qualifying error under regulation 9.11(4)(a), noting that errors by professionals concerning deadlines are not uncommon. The delegate was satisfied that there was sufficient reason for the delay in making the extension request, as the initial request had deficiencies that were subsequently rectified. Furthermore, the delegate considered that granting a one-day extension was reasonable and would prevent a serious injustice, as the matter concerned the merits of a trade mark removal application, and the prejudice to the Removal Applicant was minimal.

Consequently, the delegate exercised the discretion of the Registrar under regulation 9.12 to grant the Removal Opponent's request for a one-day extension of time to file the Notice of Intention to Oppose. The delegate also awarded costs against the Removal Applicant in favour of the Removal Opponent, applying the general rule that costs follow the event in the absence of specific circumstances justifying a departure from this principle.