Next Retail Limited - [2013] ATMO 51

TRADE MARKS ACT 1995

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

Re:Trade mark application 1406399 (16, 41) – Next Director - filed in the names of Michael Field Pty Ltd and Michael Field and application by Next Retail Limited for an extension of time to serve evidence in support.

Delegate:	Bianca Irgang
Representation:	Extension Applicant: Siobhan Ryan of Counsel instructed by Griffith Hack.
Decision:	2013 ATMO 51 Regulation 5.15: Intend to grant application – the other party to be given an opportunity to comment.

Background

On 31 May 2012, Next Retail Limited (‘the extension applicant’) filed a Notice of Opposition to the registration of the trade mark current details of which are set out below:
Trade mark:  Next Director
Application Number:            1406399
Owner:  Michael Field Pty Ltd and Michael Field
Priority Date:             1 February 2011
Goods and Services:               Class 16: Educational materials in printed form; educational materials in written form; printed matter for educational purposes; all the foregoing expressly excluding oilfield- related educational and training services
Class 41: Adult education; association services being the provision of training and education to members of the association; business educational services; career advisory services (education or training advice); educational institute services; management of education services; mentoring (education and training); provision of education courses; provision of education services via an online forum; provision of educational courses; provision of educational examinations; provision of educational information; publication of educational materials; all foregoing expressly excluding oilfield-related educational and training services
The Notice of Opposition embraces most of the grounds of opposition under the Trade Marks Act 1995 (‘the Act’).
Pursuant to regulation 5.15 of the Trade Mark Regulations 1995 the extension applicant subsequently sought and was granted two extensions of the time allowed in which to serve its evidence. On 28 February 2013, it sought a further extension of time to 28 May 2013. The opponent stated that the statutory declaration constituting the evidence in support was largely completed but that the additional time was needed to finalise the collation of additional sales data and other information for inclusion in the statutory declaration.
On 14 March 2013 a Delegate of the Registrar of Trade Marks wrote to the extension applicant advising that she intended to refuse the extension of time request. She allowed the extension applicant 14 days to respond to the intended refusal and advised it that it could do so by means of written submissions or at a hearing.
On 27 March 2013, the extension applicant requested to be heard. A hearing date of 23 April 2013 was appointed. On that date the extension applicant filed its complete evidence which, it said, had been served on the other party. As a Delegate of the Registrar I heard the extension applicant’s arguments presented by Siobhan Ryan of counsel and I must now decide whether it is appropriate to grant its application.

Reasons

Regulation 5.15 relevantly provides:
5.15 Extension of period to serve evidence and service of further evidence
(1)A party to the…

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: [2013] ATMO 51
Decision Date: 2 July 2013

CaseChat Overview and Summary

This matter concerned an application by Next Retail Limited for an extension of time to serve evidence in opposition proceedings. The Registrar was required to determine whether to grant this application.

The legal issues before the Registrar were whether the requirements of Regulation 5.15 of the relevant regulations were met, specifically concerning the applicant's service of the application on the other party, the opportunity for representations, and whether granting the extension was appropriate. The Registrar also had to consider the established guidelines for extension applications, including the need for a reasonable explanation for the delay and the absence of undue delay by the applicant.

The Registrar applied the principles from leading cases such as *Vangedal-Nielsen v Smith* and *Lyons v Registrar of Trade Marks*, as summarised in *Exxonmobil Oil Corporation v Shahin Enterprises*. The Registrar noted that the explanation provided in the declaration of Sally Shrimpton, while perhaps "sparse," was considered sufficient based on the standard accepted in *Lyons*, where a similar request for additional time to prepare evidence was deemed acceptable. The Registrar also referred to the decision in *Next Retail Ltd v Cubic Transportation Systems Inc*, which emphasised the flexible application of guidelines according to the circumstances and acknowledged that delays can be reasonable when parties liaise with local branches for necessary financial information. The relevant date for assessing delay was the date of the extension application, 28 February 2013.

The Registrar was satisfied that the applicant had served the application and that the other party had been given an opportunity to make representations. The Registrar found that the explanation for the delay was adequate and that there had not been undue delay on the part of the applicant, deeming the extension appropriate. Consequently, the Registrar granted the application for an extension of time.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Regulation 5.15 relevantly provides:5.15 Extension of period to serve evidence and service of further evidence(1)A party to the opposition proceedings may apply to the Registrar:(a) for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or(b) for permission to serve a copy of further evidence on the other party.(2)The Registrar may grant an application on reasonable terms specified by the Registrar.(3)The Registrar must not grant an application unless the Registrar:(a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and(b) has given the parties a reasonable opportunity to make representations concerning the application; and(c) is reasonably satisfied that:(i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and(d) (ii) in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;(e) is appropriate.(4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows. Thus, I must not grant the extension unless: I am satisfied that the first two matters above have been complied with. Ms Siobhan Ryan stated the guidelines developed from the leading cases on extensions of time applications in patent and trade mark proceedings, Vangedal-Nielsen v Smith (Cmr of Patents) [1980] FCA 163; (1980) 1A IPR 731 and Lyons v Registrar of Trade Marks [1983] FCA 236; (1983) 1 IPR 416 (‘Mitty’), can be summarized as follows: However, I note that in the summary of the aforementioned cases in Exxonmobil Oil Corporation v Shahin Enterprises (2002) 55 IPR 630, Hearing Officer Thompson included a fourth point which Ms Ryan has not mentioned, namely: · There must have been no undue delay on the part of the extension applicant. The relevant date in the present situation is the date of the application for extension which is 28 February 2013. The onus is on the extension applicant to satisfy me, at least on the balance of probabilities, that it was appropriate at that date to grant the application. Ms Ryan submits that the declaration of Sally Shrimpton, a solicitor employed by the extension applicant’s legal representative, which accompanied the extension of time application may be “sparse” in explanation but it passes “muster” as a proper reason of the basis of the standard of explanation accepted in Mitty. In Mitty the grounds for the extension request were:“Evidence in support of the opposition is in course of preparation but it is desired to have additional time to prepare that evidence and to serve a copy thereof on the applicant.” Under judicial review, Beaumont J agreed with the Registrar that this was an acceptable explanation for the purpose of an extension of time pursuant to s 130 of the Trade Marks Act 1955. Based on this reasoning Ms Ryan reiterated that the Shrimpton declaration adequately explicates the position of the extension applicant. Ms Ryan also commented on the set benchmarks the Registrar has for extensions of time and referred to the decision of the Delegate in Next Retail Ltd v Cubic Transportation Systems Inc [2013] ATMO 04 where it was stated:“I observe that the guidelines applied by this office are precisely that and are as such to be applied flexibly according to the circumstances of the application for extension of time under consideration. In my observations, there is frequently some delay when a party liases with its local branch or distributor concerning revenues figures and advertising expenditure through the intermediary of its legal representatives. The realization that such figures were necessary appears to have come somewhat late, but the delay here does appear to me to be reasonable.”

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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