Next Retail Limited
[2013] ATMO 51
•2 July 2013
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 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 reasonably satisfied that the applicant has served a copy of the application, and any documents accompanying the application, on the other party; and
the parties have been given a reasonable opportunity to make representations; and
I am reasonably satisfied that the extension of time is appropriate.
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:
The party seeking the extension of time has to make out a proper case
The private interests of the applicant and the opponent as well as the public interest are considered by ensuring that invalid rights are not granted and the proceedings are not protracted
There is a serious opposition in train.
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.”
Ms Ryan expressed surprise that the Delegate had not been satisfied it was reasonable to grant the extension applicant’s request for an extension of time given the above precedent. I believe this view requires some comment.
As discussed earlier, the Registrar must be reasonably satisfied the extension of time is appropriate giving regard to the issues outlined in paragraph seven of this decision. The extension applicant had already made two previous requests for extensions of time which were granted on the basis of it requiring further time to gather evidence. This was the extension applicant’s third extension of time request and if it had been granted it would have taken the total time for the extension applicant to prepare and serve its evidence to 12 months. In Mitty the request was for an initial extension of the statutory three month period allowed for this purpose. While a sparse explanation may be appropriate for a first extension, there is a rising onus on the extension applicant to make out an appropriate case. The Registrar must be satisfied that there is a serious opposition in train and that there has been no undue delay by the party seeking the extension. The information provided in the Shrimpton declaration did not satisfy the Delegate of either of these things.
The information before me is more extensive. On the day of the hearing the extension applicant filed its complete evidence in support and I have been able to view it. It is clear to me from the evidence that the extension applicant was sincere in its request for an extension of time to complete its evidence and that there is a serious opposition in train. However, without having seen a draft of the evidence that Ms Shrimpton stated was in preparation I consider that the Delegate’s conclusion there was not sufficient reason for the grant of a further extension to have been appropriate.
I am now satisfied that it is appropriate to grant the application. Pursuant to subregulation 5.15 I am now giving the trade mark applicant 14 days from the date of this decision to comment on the intended grant. If it fails to do so, I will grant the extension and set the due date for service of evidence in answer.
Bianca Irgang
Hearing Officer
Trade Marks Hearings
2 July 2013
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