New Horticulture Pty Ltd v Enviro Pak Pty Ltd - [2016] ADO 2

DESIGNS ACT 2003

DECISION OF A DELEGATE OF THE REGISTRAR OF DESIGNS WITH REASONS

Re:Opposition by New Horticulture Pty Ltd to application for extension of time under section 137(2)(a) of the Designs Act 2003 in relation to Registered Design No. 304960 in the name of Enviro Pak Pty Ltd.

Delegate:	Heath Wilson
Representation:	Applicant: Written submissions from Allens Linklaters Opponent: No written submissions
Decision:	2016 ADO 2 Application for an extension of time under section 137(2)(a) of the Designs Act 2003 – whether error or omission – discretion to grant the extension not exercised – extension of time refused.

Background

This is an opposed application for an extension of time to request a hearing on the examination of Registered Design No. 304960 (‘the Design’) in the name of Enviro Pak Pty Ltd (‘the Owner’). It is the third application for an extension of time made for this purpose by the Owner and in this instance is made under section 137(2)(a) of the Designs Act 2003 (‘the Act’).
The Design has a lengthy and detailed history. I will therefore set out the major events that are likely to affect the ultimate outcome. Some of the background described hereunder will be elaborated on later in light of the evidence produced by the parties.
On 11 January 2006, a certificate of registration was issued to the Owner in relation to the Design. The initial five year registration period was renewed on 11 January 2011 under section 47 of the Act for a further five years. As a result, the ten year term of registration for the Design expired on 11 January 2016.
After the company New Horticulture Pty Ltd applied to the Registrar of Designs on 6 December 2012 for examination of the Design, it ultimately became the subject of court proceedings between the Owner and New Horticulture. On 25 June 2013, the Federal Court made interlocutory orders that the Registrar of Designs examine the Design.[1]
[1] See Enviro Pak Pty Ltd v New Horticulture Pty Ltd (No. 2) [2013] FCA 624 (25 June 2013).
On 10 September 2013, the first examination report issued with a deadline of 10 March 2014. A second report issued on 15 April. Due to an office delay, the period for the Owner to respond to the examination report was subsequently extended for a further two months.[2] Ultimately, the deadline became 12 May 2014 (as the 10 May fell on a Saturday)[3].
[2] See section 137(1) of the Act.
[3] See section 136A(2)(a) of the Act and Reg 11.33 of the Designs Regulations 2004 (‘the Regulations’)
On 12 May (under cover of a letter dated 10 May), the Owner informally applied[4] via email for an extension of time under section 137 of the Act seeking six months in which to address the grounds for revocation in the first report. On 3 July 2014, a delegate of the Registrar wrote a letter intending to refuse the extension of time and allowed until 24 July 2014 for the submission of further evidence supporting an application for a free extension of time[5], or to lodge a paid extension of time[6], or to request a hearing on the revocation[7].
[4] While it was not explicit, the application was treated as an application under section 137(1). An application under s137(2) would have needed to be in the approved form (Reg 11.13) or accompanied by the requisite fee (Items 7 and 8 of Schedule 4 of the Regulations).
[5] Under section 137(1) of the Act.
[6] Section 137(2).
[7] Section 68(4)(a).
On 25 August 2014, the office received a letter from the Owner with the date 21 July 2014. The letter contained a formal request for a hearing but, once again, the Owner did not apply for a paid extension of time for the late hearing request or provide sufficient reasons for the extension of time.
On 11 September 2014, a delegate of the Registrar refused the extension of time under section 137(1) of the Act. The Owner has sought a review of this decision with the Administrative Appeals Tribunal. Ultimately, the Owner had not overcome the grounds for revocation and the Design had effectively ceased[8] in law on 10 May 2014.
[8] Under section 48(1) of the Act.
The cessation of the Design was advertised in the Australian Official Journal of Designs (‘the Journal’) on 18 September 2014.
A letter subsequently sent to Mr De Flumeri (Director of the Owner) on 27 February 2015 by a Deputy Registrar of Designs referred to the deadline in the examiner’s second report and provided, inter alia, an option for the Owner to request an extension of time for the 4 month period from 10 May 2014 to 25 August 2014 for the purposes of requesting a hearing on the examination. The deadline for a response to this letter was 27 March 2015. Should the extension be granted, the Deputy Registrar wrote, the status of the design would revert to ‘registered’ while it was heard on the examination.
Subsequently, Griffiths J in Enviro Pak Pty Ltd v New Horticulture Pty Ltd(No 3)[9] found:
In light of the above, the applicant indicated this morning, through its Counsel, that it proposed to seek an extension of time from IP Australia and that the proceedings should be stayed pending consideration of the determination by either IP Australia and/or the Administrative Appeals Tribunal in respect of an extension of time application or related appeal.
Although I am deeply concerned about the long delays in these matters, it is evident that IP Australia does not consider that the processes before it are finalised. It has given the applicant until 27 March 2015 to lodge an application for an extension of time within which to request a hearing of the examination. The existing stay should therefore continue but I believe that this should only occur on the giving of an undertaking by the applicant that it will prosecute any such application for an extension of time and any related appeal to the Administrative Appeals Tribunal with diligence and deliberate speed.
[9] Enviro Pak Pty Ltd v New Horticulture Pty Ltd (No 3) [2015] FCA 195 (10 March 2015) at [8]-[9].
On 27 March 2015 an application for an extension of time was made under section 137(2)(b) of the Act on the Owner’s behalf by its then legal representatives PWT Legal. PWT Legal also set out the circumstances intending to demonstrate that the failure to request a hearing in time under section 68(4)(a) was due to ‘circumstances beyond the control’ of the Owner.
On 20 April 2015, IP Australia wrote to the Owner intending to refuse the extension of time under section 137(2)(b) and allowed 14 days for a supplementary declaration to be made or for the Owner to request a hearing on the extension of time. The reasons provided by the office included:
Notwithstanding that we received this hearing request on 25 August 2014, the request was dated 21 July 2014 and Mr De Flumeri has declared that he wrote and posted the request on that date. He has also submitted that:

“The fact that Enviro Pak’s request for a hearing posted 21 July 2014 was not received by IP Australia until 25 August 2014 was a circumstance that was beyond both my control and the control of Enviro Pak”.

The circumstance set out above goes only to why the hearing request dated 21 July 2014 was not received by IP Australia until 25 August 2014. Had this request been received by IP Australia on 21 July 2014, it would still have been over two months late. There is no explanation of the circumstances that necessitated an extension of time beyond 10 May 2014.

Subsequently, the Owner requested to be heard on the extension of time which was scheduled for 28 July 2015. Mr De Flumeri has since commented[10] that:
I now understand that the application was made under the incorrect section of the Designs Act 2003, being s137(2)(b).
[10] The second declaration of John De Flumeri at paragraph 14.
On or around 16 July 2015, the Owner engaged new legal representatives (Allens Linklaters) who corresponded with the office and again applied on behalf of the Owner for an extension of time, this time under section 137(2)(a). As a consequence, the hearing date was vacated and the new application for an extension of time was considered afresh by a different delegate of the Registrar.
The current application for the extension for time under section 137(2)(a) of the Act was for the purpose of requesting a hearing. The extension of time, if granted, would be for a period of 4 months from 10 May 2014 to 10 September 2014 encompassing the period referred to in the letter from the Deputy Registrar of Designs.
On 30 July 2015, IP Australia wrote to the parties indicating an intention to grant the current extension of time. That intention was advertised in the Journal for opposition purposes. Reasons later given by the office in a letter of 9 September 2015 were:
The facts and circumstances provided in the declaration support the ground of error or omission. The declaration of John De Flumeri refers to a number of errors such as incorrect assumptions in requesting an extension of time to respond to the examiner’s report and misunderstanding the examiner’s report in relation to requesting a hearing. The declaration provides the circumstances surrounding the errors which contributed to Mr De Flumeri’s failure to request a hearing in relation to a ground for revocation of registration of the design.
On 14 September 2015 New Horticulture Pty Ltd (hereafter referred to as ‘the Opponent’) opposed the grant of the extension of time. Evidence and submissions were filed by the parties comprising the material detailed below:

Evidence and Submissions

Application for an extension of time under section 137(2)(a) of the Act

Declaration of John De Flumeri (Director of the Owner) made 16 July 2015 with exhibits JDF-1 and JDF-2 (‘De Flumeri 1’).

Notice of Opposition to extension of time

Declaration of Joachim Walter Koesterke (Director of the Opponent) made 11 September 2015 (‘Koesterke 1’).

Evidence in Support

Declaration of Joachim Walter Koesterke made 18 October 2015 with exhibits JWK10-15 (‘Koesterke 2’)
Declaration of John De Flumeri made 19 October 2015 with exhibits JDF-3 to JDF-8 (‘De Flumeri 2’)

Evidence in Answer

Declaration of Joachim Walter Koesterke made 22 November 2015 with exhibits JWK-1 to JWK-8 (‘Koesterke 3’)

Written Submissions

Written submissions of the Owner dated 22 January 2016

The Owner requested a hearing by way of written submissions on the matter. I am a delegate of the Registrar of Designs and the following constitutes the reasons for my decision.

Legislative Framework

Section 137 of the Act provides:

137Extensions of time
(1)The Registrar must extend the time for doing a relevant act that is required to be done within a certain time if the act is not, or cannot be, done within that time because of an error or omission by:
(a)the Registrar or a Deputy Registrar; or
(b)a person employed in the Designs Office; or
(c)a person providing, or proposing to provide, services for the benefit of the Designs Office.

(2)The Registrar may, on application by a person concerned in accordance with the regulations, extend the time for doing a relevant act if, because of:
(a)an error or omission by the person, or by the person’s agent; or
(b)circumstances beyond the control of the person;

the relevant act that is required to be done within a certain time is not, or cannot be, done within that time.
(3)The time for doing a relevant act may be extended, whether before or after that time has expired.
(4)The Registrar must advertise an application for an extension of time of more than 3 months in the manner prescribed by the regulations.
(5)Subject to subsection (6), a person may, as prescribed, oppose the granting of the application.
(6)If the Registrar is satisfied that an application under subsection (2) would not be granted, even in the absence of opposition under subsection (5):
(a)the Registrar need not advertise the application in accordance with subsection (4); and
(b)the application cannot be opposed; and
(c)the Registrar must refuse the application.

(7)In this section:
relevant act means an action (other than a prescribed action) in relation to:
(a)a registered design; or
(b)an application for registration or publication of a design; or
(c)any proceedings under this Act (other than court proceedings).

Section 138 of the Act provides:

138Consequences of extension
(1)If:
(a)a design application lapses, or the registration of a design ceases to be in force because of a failure to do a relevant act (within the meaning of section 137); and
(b)the time for doing the act is extended;

the application or registration must be treated as having been restored on the day on which the extension is granted.
(2)If an application or registration is restored under subsection (1), the Registrar must:
(a)advise the applicant or registered owner that the application or registration has been restored; and
(b)publish a notice in the manner prescribed by the regulations that the application or registration has been restored.

The legislation allows that the time for doing a relevant act (such as requesting a hearing) may be extended after the time for the doing the act has expired (section 137(3)). The applicant for the extension of time does not bear any particular burden of proof[11] but rather must place before the Registrar circumstances which will justify the grant of the extension.
[11] Australian Broadcasting Tribunal v Bond Corporation Holdings Ltd and Others (1989) 86 ALR 424, 432 (Burchett J).
There must be an error or omission by the Owner which is causally linked to the failure to request a hearing before the Design ceased at law on 10 May 2014. If the Registrar is satisfied that such an error or omission existed, consideration should then be given to other relevant circumstances in deciding whether to exercise the Registrar’s discretion and grant the extension.
In support of the application, Mr De Flumeri explains that he is the director of the Owner and was not legally represented during the examination stage. He makes this declaration despite the fact that the address for service throughout the examination proceedings was PWT Legal. It is also worth noting that in the related Federal Court proceedings occurring in 2013 the Owner was represented by Mr Tahar of PWT Legal and Mr Lambert of Counsel. In addition, the Owner was also represented by PWT Legal for a time after the examination of the Design. Having made those observations, all of the correspondence around the relevant period is nevertheless from Mr De Flumeri himself and under the Owner’s letterhead.
In De Flumeri 1, Mr De Flumeri further details the difficulty he had with IP Australia’s procedures and mailing systems and highlights certain events occurring during the examination process of the Design. He also describes the personal circumstances that led to his failure to request a hearing at the relevant time.
On 14 April 2014, Mr De Flumeri separated from his wife and was moving between residences from that time until 10 May 2014. He provides incontrovertible evidence of his hotel stays around this time and leading up to the time when the response to the second examination report was due. As a result of these events, Mr De Flumeri found it difficult to concentrate on matters related to his work, and specifically, his design registration.
As the address for service, Mr Tahar had forwarded the second examination report to Mr De Flumeri on 17 April 2014. I note that at the time Mr De Flumeri was staying in a hotel in Sydney. The second report maintained the ground for revocation and set out the options, stating:
What should you do?
PLEASE NOTE: due to unforeseen issues a free extension of time has been granted. A deadline of 10 May 2014 applies in which to resolve all outstanding issues. You may submit a further response or else request a hearing under 68(4)(a) of the Designs Act 2003.
It is in your interest to respond as soon as you can to allow time to resolve any outstanding matters. I will also need time to consider your response to this report. To avoid running out of time, please submit your written response any time at least three weeks before the above date. Given the deadline is less than a month away, you will need to consider applying for an extension of time should you wish to pursue this matter further.
Mr De Flumeri declares confusion over the above wording and the timing of deadlines. Despite the aforementioned difficulties, Mr De Flumeri did (informally) apply for an extension of time by way of correspondence dated 10 May 2014 attached to an email sent on 12 May 2014.
The confusion over deadlines was also evident in Mr De Flumeri’s letter attached to the email,[12] where he states:
Given the response and issues raised by the examiner the time given to respond was effectively no time at all. The letter was received 17^th April just before Good Friday. This is exactly 3 weeks before the due date. However, it is clearly noted that a response is required with at least 3 weeks prior to 10 May. This timeline is completely unfair…
[12] Exhibit JDF-2 to De Flumeri 1.
Mr De Flumeri also declares that he assumed that extensions of time could be given to anyone who requested one and later that he did not understand the effect of not requesting a hearing before 10 May 2014 would mean his Design would be revoked. As an extension of time had been granted by the office on an earlier occasion for two months, Mr De Flumeri declares that he was under the mistaken belief that a formal application for an extension of time was not required. If not for his misunderstanding of the report Mr De Flumeri declares that he would have formally requested a hearing before 10 May 2014 and his intention was always to keep the Design.
In relation to the hearing request Mr De Flumeri later declares:[13]
I requested a hearing in writing and mailed the request on 21 July 2014. My understanding is that IP Australia did not receive my request until 25 August 2014. I cannot explain that delay. Again, I did not understand even at that time that a request for a hearing in writing would not suffice.
[13] De Flumeri 1 at paragraph 10.
This anomaly regarding the Owner’s dated correspondence not reaching the office until a much later date is not an isolated incident. Another example is Mr De Flumeri writing to the office (in a letter dated 12 December 2014) after being informed by the office that the registration of the Design had ceased in law. He declares that he:
[Mailed] it on or about that date. That letter requested a formal review of my request for a hearing. IP Australia says that they did not receive my letter until 16 February 2015, but again I cannot explain that delay. [14]
[14] De Flumeri 1 at paragraph 11.
De Flumeri 2[15] elaborates on a number of points in De Flumeri 1, and concedes that some of the delays towards resolution of the matter have been caused by him but that his intention at each stage was to take whatever steps necessary to prevent the revocation of the Design.
[15] A declaration which did not form part of the evidence before the delegate who made the decision to intend to grant the extension of time under section 137(3)(a).

The Opponent’s Arguments

Mr Koesterke, on behalf of the Opponent, had a number of objections to the grant of the extension of time including:
The EOT request was made with undue delay and covering the wrong period….
No intention was proven by the Applicant prior to the original deadline to perform the relevant act….
The Application states the incorrect dates and/or period of months requested….
The reasons provided by the Applicant do not establish that the delay in filing the application for EOT was caused by error or omission….
A misapprehension or ignorance of Designs legislation does not constitute an error by itself….
A mere failure to do the relevant act does not in itself constitute an error or omissions….
The EOT is lacking purpose….
Inordinate delay in filing an application for an extension of time, or in filing available relevant material in support….
There are clear indications to the contrary of applying the beneficial nature of section 137 in this case. [16]
[16] Koesterke 1 at paragraphs [1] to [10].

In Koesterke 2, Mr Koesterke expands upon the above arguments, including the submission that the Deputy Registrar had no power to request a hearing since the Registrar was functus officio with respect to the exercise of that statutory power. However, the legislation allows for the grant of an extension of time in such circumstances if the requirements of section 137(2)(a) are satisfied. If granted, the consequence of the decision under section 138(1) would be that the exercise of the statutory power in relation to revocation is not final. The status of the design would be restored to ‘registered’ and the Registrar must not revoke the registration of a design unless she has given the Owner a reasonable opportunity of being heard.
Koesterke 2 makes a number of submissions regarding the Owner’s delay in filing the application, the delay in providing the relevant material and determining the appropriate ground for the extension of time and the delay in the related Federal Court proceedings. These delays are undoubtedly relevant to exercise of the discretion, should I find that there existed an error or omission that prevented the Owner from filing a request for a hearing within the relevant period. Also in relation to the discretion, Koesterke 3 provides information on the lack of purpose to the extension of time. He declares (at paragraph 11):
A decision to grant or to refuse an EOT is likely to be made only days before or perhaps even after the natural cessation of the design. The decision of the EOT request has therefore nil effect on the monopoly.
New Horticulture Pty Ltd has signed an undertaking and consent order in 2012 that it will not engage in the importation or sale of cups with the design 304960 until the completion of proceedings filed by Enviro Pak. Any action jeopardising the so called monopoly which is naturally expiring in less than 2 months is unlikely.

Application of the Law

The legal representative of the Owner has likened the relevant provisions of the Act to section 223 of the Patents Act 1990 and section 224 of the Trade Marks Act 1995. I note that there are slight differences in the wording of the sections, but I agree that reference to legal precedent from both Patents and Trade Marks is appropriate in the application of the provision. As a result, I will draw from both areas of law in making my decision.

‘Error or Omission’

Section 137 of the Act is, like section 223 of the Patents Act and 224 of the Trade Marks Act, a remedial section and should be applied beneficially unless there is some clear indication to the contrary.[17]
[17] Scaniainventor v Commissioner of Patents [1981] FCA 84; (1981) 36 ALR 101.
Turning to the meaning of the expression “error or omission”, Jenkinson J in the decision of Kimberly-Clark[18] made the following findings in relation to section 160 of the Patents Act 1952 (the predecessor to the current section 223):
It is in my opinion difficult to suppose that only the inadvertences and accidental steps, and not errors resulting from faulty reflection, of the former class of persons were intended by the draftsman to be within s.160(1). Further, the word "error" is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips. Although the latter kinds of error may be those which the draftsman had principally in mind, I do not think the phrase "error or omission" should be given by construction the restricted meaning which the delegate assigned, and accordingly I conclude that this ground of the application has been established.
10. I do not think that the conclusion I have reached reduces s.160(2)(a) to a mere general power of extension. By no means every judgment by "the person concerned" or by "his agent or attorney" which can be shown to have been mistaken will answer the description "error or omission" in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error. [Emphasis added]
[18] Kimberly–Clark Ltd v Commissioner of Patents (No 3) [1988] FCA 421; (1988) 13 IPR 569 at [9-10].
A lack of intention at the time to perform the relevant act is not by itself a determinative factor. The intention to request a hearing may have been absent because of the error or omission or, to put it another way, an error or omission may contribute to the failure to perform the relevant act. In Apotex Pty Limited and Commissioner of Patents and Les Laboratoires Servier (Party Joined)[19], the Senior Member of the Tribunal found in relation to section 223(2) of the Patents Act 1990:
I consider that, while the majority of cases will disclose a specific intention to oppose, with that intention being thwarted by the relevant error, there will be, as in this case and in Kimberly-Clarke, exceptional circumstances where no specific intention to oppose has been formed. In this case, as in Kimberly-Clarke, the relevant error precluded the forming of the specific intention. In this way, the error contributed to the failure to place the patent application on watch and to form the intention to file the notice of opposition. That, in my view, is sufficient to satisfy the required causal connection described by Jenkinson J in Kimberly-Clarke.
[19]Apotex Pty Limited and Commissioner of Patents and Les Laboratoires Servier (Party Joined) [2008] AATA 226 at [21].
Even if a deliberate decision was made not to request a hearing in the period and that decision resulted from the error or omission, the requirements of the section may still be satisfied.
A misapprehension or ignorance of Designs practice and procedure would not in itself constitute an error.[20] However, Mr De Flumeri declares that he did not have legal representation at that time and, that being the case, he should not be judged against the standard of a legal practitioner skilled in Designs practice and procedure.[21]
[20] In the trade marks context see RMG Call Centres Pty Ltd v Department of Contract and Management Services(WA) (2001) 53 IPR 197.
[21] See G S Technology Pty Limited and Commissioner of Patents and Anor [2004] AATA 1391.
As mentioned earlier, the relevant act in this instance is the request to be heard under section 68 of the Act. Mr De Flumeri’s errors of judgment (or flawed mental function) regarding his appropriate and timely responses to office processes are a result of his personal circumstances at the relevant time. Further, any intention to take the opportunity to be heard could only be resolved once Mr De Flumeri understood his other options had been exhausted and the effect of not requesting a hearing. Once he realized that was the case, he attempted to request to be heard without fully understanding the requirements for such a request. In other words, he attempted (albeit unsuccessfully) to remedy his error as soon as it was discovered.[22]
[22] See G S Technology Pty Limited v Commissioner of Patents [2004] FCA 1017 at [65].
In the current matter, the Owner did not have a specific intention to request a hearing at the relevant time, but as Hearing Officer Williams commented in British Sky Broadcasting Ltd v SkyNetGlobal Limited [2003] ATMO 17:[23]
I do not think that the lack of intention to actually oppose is, by itself, a sufficient test on which to refuse a late application for an extension of time for filing a notice of opposition. The essential matter is the presence of a “sufficient causal connection” between the error or circumstance relied on and the failure to lodge the notice of opposition.
[23] Comments regarding “error or omission” as it appeared for extensions of time under Regulation 5.2(2)(b) of the Trade Marks Regulations 1995.
The Owner has provided a full and frank disclosure of all the circumstances that led to the error or omission.[24] On the strength of that information the chain of causation which led to the failure to properly file the appropriate request for a hearing in the relevant period is established. I am satisfied, on the face of it, that there has been an error or omission on the part of the Owner leading to the failure to perform the relevant act.
[24] See Kimberly–Clark Ltd v Commissioner of Patents (No 3) 13 IPR 569.
However, the application of the extension of time provision under section 137(2)(a) is discretionary and I must now consider all other relevant circumstances.

Registrar’s discretion to grant the extension

An important consideration in the exercise of the discretion is the consequences of extending or refusing to extend the time. In the decision of Sanyo v Commissioner of Patents[25] it was found that:
[I]t is “more important to consider the consequences of extending or refusing to extend time than to debate the reasons why the act was not done in time” (per Davies J in Chalk’s case, at 156, with whom Chief Justice Black and Mr Justice Cooper agreed. Similar comments are to be found in Comcare v A’Hearn [1993] FCA 498; (1993) 119 ALR 85, particularly at 88).
[25] Sanyo v Commissioner of Patents [1996] AATA 832; 36 IPR 470 (at 479).

No Useful Purpose

The Designs Manual of Practice and Procedure (‘the Manual’) provides the following example of granting an extension of time that would serve no useful purpose:
[W]here it is manifestly clear that it would not be possible to issue a certificate of examination under the terms of the Act.
Mr De Flumeri has previously indicated that:[26]
The purpose of the extension of time is so that I may be granted a hearing on the substantive issues of registrability of my design in light of prior art discussed in the Examination Report. That hearing is important to the survival of my business, which markets and sells the coffee cups the subject of the design.
The design will expire on 16 January 2016 and I seek to enjoy the full term of the monopoly.
[26] De Flumeri 2 at paragraphs 19-20.
It is important to note that the Design has now ceased for another reason apart from the failure to satisfy the Registrar of Designs under section 67(1)(a) of the Act. The Design has now also ceased to be in force (under section 48(2) of the Act) as the term of registration expired on 11 January 2016. It is impossible to extend the term of registration of the Design beyond this date.
Consequently, the Design has not only ceased to be in force “because of a failure to do a relevant act” but also due to the expiration of the term. The result of this for the application for extension of time is that section 138(1) of the Act cannot be enlivened and even if the extension of time were granted, the Design cannot be treated as having been restored on the day on which the extension was granted. The Design will remain in its ceased state. While in other circumstances the refusal of a grant of an extension would be an abrupt end to the Owner’s rights, in this case the Owner’s rights in the designs have ceased at law in any event.
Even had the current extension of time not been opposed by the Opponent, it is unlikely that the hearing on the revocation would have been decided before the natural cessation of the Design. It is the significant number of delays in the history of this Design that has contributed to this state of affairs.
Under section 63, the Registrar (if requested to do so) must examine a design that has at any time been a registered design. However, section 63(5) provides that the expression does not include a registration that has ceased because of the operation of section 48(1) and does not include a design whose registration has been revoked. If the extension of time were granted, it follows that the Design registration should not have ceased under section 48(1) and it would be open for the Design to be examined again. However, if the extension is not granted, the option under section 63 would not be available.
Accordingly, the purpose of a hearing would be to determine whether the Design Registration had ended because it was revoked or whether it ceased because the term expired (on 11 January 2016).
In relation to the substantive purpose to the extension, the Owner’s legal representative submitted:
Enviro Pak asserts that there are new and distinctive features of AU’960 even in light of the submissions by Koesterke. These features reside in the rear face of the cup, where the corrugations align to make an attractively finished cup. It is submitted that these assertions when ventilated during a hearing would be persuasive and therefore there is purpose in the granting of the extension of time.
It appears from the material before me that the Owner’s above argument is not new and has been raised (and responded to by the office) on a number of occasions. In his letter to the office dated 10 May 2014, Mr De Flumeri argued that the Design has vertical ripples around the cup and no V-shaped joint at the back. Apparently, the cited designs identified in examination do not have the tapered ripples and instead have a v-shaped joint at the rear.
In the letter of 27 February 2015, the Deputy Registrar had reviewed the file on the Design and was satisfied with the examiner’s actions taken in responding to the Owner. He also closely looked at the examination reports, referred to the Owner’s submission that the cited designs were not identical to the Design and noted the examiner found the differences were insufficient for a finding of distinctiveness. He stated that he could not perceive an error in the matter.
In short, the issue which would form the main purpose of the hearing has been previously considered by the office on a couple of occasions and there is no indication from the Owner that new evidence or submissions would be put before the Registrar should the extension of time be granted. While these findings do not necessarily make the Registrar functus officio, it is an indication of a pertinent factor in deciding whether the extension of time would serve a useful purpose.
As mentioned earlier by Griffiths J in the related Federal Court proceedings there have been many delays in this matter and I note the Owner has conceded its part in those delays. On many occasions, delays have occurred despite clear instruction from the office and the court. Due to the circumstances and timing of this case, there is a lack of utility in granting the extension of time other than to extend the consideration of a matter which for a number of reasons, has become extremely protracted.
After careful consideration of all factors relevant for the exercise of the discretion[27], including the lack of purpose to the grant of the extension of time, the various delays in this matter, the interests of the parties in refusing or granting the extension and public interest in the efficient and orderly processing of matters before the Designs Office, I find that extending the time for the purpose of hearing the examination of the Design will only serve to create further uncertainty. In the circumstances, I find it is not appropriate to exercise the Registrar’s discretion and grant the extension of time.
[27] See generally, Vangedal-Nielsen v Smith (Commissioner of Patents) [1980] FCA 163; (1980) 33 ALR 144 at 150.

Decision

I refuse to grant the application for an extension of time in relation to Registered Design no. 304960.
Pursuant to section 136(g) of the Act an application for a review of this decision can be made to the Administrative Appeals Tribunal under the Administrative Appeals Tribunal Act 1975. If an application to review the decision is made on or before one month from this decision, the fate of the extension of time will be subject to a determination by the relevant body.

Costs

The Owner has sought an award of costs. Despite my finding that the grant of extension of time is ultimately not appropriate, I find that each party should bear their own costs in this matter. I decline to make an award of costs.

Heath Wilson
Hearing Officer
Trade Marks & Designs Hearings & Oppositions
16 March 2016