Next Retail Limited
[2013] ATMO 7
•25 January 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia 9806047 – Australian trade mark application number 1279058(25) – NEXTLEVEL - in the name of Spirit Wholesale ApS and application by Next Retail Limited for extension of time in which to serve evidence in support.
Delegate: Iain Thompson Representation: Applicant: Siobhán Ryan of Counsel instructed by Griffith Hack Decision: 2013 ATMO 07
Application for extension of time in which to serve evidence in support - reasonable in the circumstances to allow extensionBackground
This is a proceeding under regulation 5.15 of the Trade Mark Regulations 1995 concerning an application (‘the Application’) by Next Retail Limited (‘Retail’) for an extension of time in which to serve and file evidence in support of its opposition to the protection of the International Registration Designating Australia (‘IRDA’) which appears hereunder:
Application No: 1279058
IRDA: 980647
Owner: Spirit Wholesale ApS. (‘the Holder’)
Filing Date: 18 September 2008Goods:Class 25: Clothing, footwear and headgear
Trade Mark: NEXTLEVEL
A delegate has notified Retail of an intention to refuse the Application and Retail has requested to be heard on the issue. I note that the Holder has not objected to the extension of time.
The matter came before me as a delegate of the Registrar of Trade Marks for hearing in Canberra on 12 December 2012. Siobhán Ryan of Counsel instructed by Griffith Hack represented Retail.
Ms Ryan succinctly summarised the events surrounding the delegate’s intended refusal of Retail’s Application:
On 24 October 2012, [Retail] applied for an extension of time from 24 October - 24 December 2012 to serve its evidence in support. The application is supported by an affidavit of Sally Shrimpton of Griffith Hack, [Retail’s] Australian trade mark attorneys. Ms Shrimpton deposed that:
1. […]
2.I received on 23 October 2012, by email a copy of an executed statutory declaration and was asked by my instructor to serve and file the declaration as part evidence in support. However, the exhibits to the statutory declaration had been omitted.
3.More time is required to receive and serve and file the complete declaration.
4.Further time is required to finalise the balance the evidence in support.....”
Ms Ryan’s précis continues:
On 29 October 2012, [Retail’s] trade mark attorneys filed and served the statutory declaration of Sarah Louise Noble together with exhibits SLN-1 to SLN-10, being part of the evidence in support.
On 1 November 2012, the attorneys were notified of the Registrar’s intention to refuse the extension of time.
On 10 December 2012, [Retail’s] trade mark attorneys filed and served the statutory declaration of Shaun Nicholas Sherlock of Marks & Clerk LLP, [Retail’s] U.K. trade mark attorneys, which explains why the Noble declaration was unable to be filed within time.
On 10 December 2012, [Retail’s] trade mark attorneys also filed and served the statutory declaration of Sarah Louise Waterland together with exhibit SLW-1, being the balance of the evidence in support.
Ms Ryan also summarised the background to the opposition proceedings before the Registrar of Trade Marks:
The opposed trade mark is an IRDA based on a Danish application. [Retail] is the proprietor of an earlier community trade mark registration which is in use and pre-dates [the Holder’s] Danish application. [Retail] and [the Holder] have been engaged in settlement negotiations covering a number of countries. For this reason, several extensions for filing evidence in support were granted during the period 25 November 2010 to 25 January 2011.
The opposition was then suspended for the period 24 January 2012 to 24 July 2012, on the joint application of [the Holder] and [Retail], to facilitate the settlement negotiations.
On 12 July 2012, the parties jointly applied for a continuation of the suspension. However, that application was refused. It is noted that the Officer stated that:
‘Notwithstanding that the negotiations have been necessarily protracted the opponent has already had some 17 months worth of extensions under regulation 5.15 of the Trade Marks Regulations 1995 at the evidence in support stage [...]’
[...] I direct that the due date for service of evidence in support by the opponent be set at 24 October 2012
With respect, the Officer was wrong. By 24 January 2012 (being the commencement of the suspension period) the opponent had had only had 15 months worth of extensions. Notwithstanding those extensions, the Registrar’s delegate had been prepared to interrupt the proceedings to facilitate the settlement negotiations.
In the circumstances, the period allowed by the Officer following his refusal to extend the suspension period might not be regarded as a further extension, per se, but a necessary consequence of the reinstatement of the proceedings. On this reading, the Noble declaration was filed only a matter of days outside the re-instated due date. The balance of the evidence, referred to in the Shrimpton declaration, has also now been filed.
Legislative provisions
In adapting the regulations to IRDAs, regulation 17A.33 provides:
17A.33Opposition proceedings
(1)The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.
(2)Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of the opposition.
(3)Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply until the holder has notified the Registrar, in writing, of the holder’s address for service in Australia.
And regulation 5.15 provides:
5.15Extension 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
(ii)in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;
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.
(5)If the Registrar grants an application under paragraph (1) (b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.
(6)Subregulations (2), (3) and (4) apply to an application under subregulation (5).
Subregulation 5.15(3)(b) does not apply here as the Holder has not objected to the grant of the extension.
Submissions
Ms Ryan’s submissions also summarise why, in my consideration, the Application should be allowed:
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’s Case’)](and which are still adhered to[1]), can be summarised as follows:
[1] E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) ATMO 87.
· the applicant 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 that proceedings are not protracted;
· there is a serious opposition in train.
A Proper Case
The Shrimpton declaration posits as reasons for the extension application:
· the omission of the exhibits from the Noble declaration; and
· the need for further time to finalise the balance if the evidence in support.
As to [the first dot-point] the omission of the exhibits was clearly “error or omission” on the part of [Retail] or its agent, within the “compelling reasons” criteria suggested in the Examiner’s Manual at Chapter 51 (3.2.1). The Sherlock declaration gives full and frank disclosure as to the circumstances of the error or omission.
As to [the second dot-point] the statement that further time is needed to finalise the balance of the evidence confirms that this aspect of the evidence was under way. The balance of the evidence has now been filed.
The Shrimpton declaration may be sparse but it arguably passes muster as a “proper reason”, on the basis of the standard of explanation accepted in Mitty’s Case. In Mitty’s Case 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.”[2]
[2] Mitty’s Case at p 418
Under judicial review, Beaumont J agreed with the Registrar that this was an acceptable explanation for the purpose of s 130 of the Trade Marks Act 1955 Cth:
“Although a more detailed explanation of the position may have been desirable, I think that it is possible to construe the rather bald statement of the ground for the request (supra) as indicating that, although efforts had been made in that behalf, it was not possible to finalize the form of the evidence sought to be adduced in the time allowed by the regulation. I accept that, on one view, it is possible to read the stated ground as being little more than an assertion that more time is required. However, the statement of the ground does at least attempt some explication of the position. Further, I think that the delegate was entitled to have regard to the notorious fact that opposition proceedings usually involve the gathering of evidence from third parties and this usually takes considerable time. Given that background, and given the construction of the statement of the ground which was open, I am of the opinion that the delegate did not exercise his discretion in any improper way. In particular, in my view, there was evidence before the delegate upon which he could rely in order to justify the grant of an extension. It follows that no case for review under the Administrative Decisions (Judicial Review) Act 1977 has been made out on this branch of the case (emphasis added).”
In short, Beaumont J found that the reason given was a “proper reason”.
The Registrar has requested “further reasons”[3]. These have been furnished by the Sherlock declaration.
[3] IP Australia Letter to Griffith Hack dated 1 November 2012.
It has been noted that while adherence to timeframes is often laudable and desirable, so is the proper preparation and service of evidence, and reg. 5.15 exists to ensure that sufficient time is available to a party to do that.[4] This case is an example of that purpose being played out.
[4] IMAC Support Services Pty Ltd v Apple Computer Inc (2001) 52 IPR183 at 188.
The Public and Private interests
The opponent bares the onus of proof in trade mark opposition proceedings. The Noble declaration speaks to [Retail’s] considerable local and overseas reputation. The Waterland declaration clarifies the ownership of prior registrations for “NEXT...” marks in class 25 and [Retail’s] entitlement to use. This is evidence is essential to the grounds under ss 44 and 60. [Retail] will obviously be disadvantaged if it is not admitted.
[The Holder] has not objected to the extension request and has previously supported the suspension applications. There is no suggestion that its interests would be prejudiced if the application is granted.
As to the public interest, this is a contest between the marks NEXT and NEXTLEVEL where both parties trade in clothing, footwear and headwear. It is in the public interest that in determining this opposition the Registrar should have the all relevant facts clearly before him. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 Richardson J stated, at 435–6:
Within reasonable limits it furthers the public interest to allow consideration of any available evidence that will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception or confusion.
In Bundy American Corp v Rent-a-Wreck (Vic) Pty Ltd[5] ( a case similarly involving a an opposition marked by long delays due to settlement negotiations), Delegate Susan Farquhar noted:
Most, if not all, of the extensions sought, and agreed to by the applicant, appear to have been for the mutual convenience of the two parties involved. It is not for me, here, to consider the merits of the situation as it exist or existed between the applicant and the opponent, or their respective rights so far as the mark is concerned. That will properly be a matter to be considered when the opposition comes to be decided. However, it is a matter of great importance that the Registrar, when determining that opposition, should have the fullest possible disclosure of relevant facts in the material before him. Given the circumstances described in the foregoing, and particularly if, as the opponent alleges, the opponent has used the mark, there is a considerable matter of public interest to be determined and every effort should be made to enable the Registrar to consider those circumstances with the assistance of as much documentary evidence as possible.....
While I agree that 33 months is a considerable period to have elapsed with still no evidence served, nevertheless, as I have observed above, the applicant raised no objection to the granting of that time and, for at least part of it, was involved in negotiations with the opponent [emphasis added].
A serious opposition in train
As indicated, the marks are similar and the parties are rivals. The parties have been engaged in international settlement negotiations. [Retail] also has a history of protecting its valuable NEXT trade mark and corporate name in opposition proceedings[6]. This is clearly a serious opposition.
[5] Bundy American Corp v Rent-a-Wreck (Vic) Pty Ltd (1985) 5 IPR 307 at 310.
[6] Next Retail Limited v Elektroteknik Sanayi ve Ticaret Limited Sirketi [2010] ATMO 16 (24 February 2010); Next Retail Limited v Gordon Simpson Agencies Pty Ltd [2011] ATMO 128 (21 December 2011); Next Retail Limited v Marlin Australia Pty Ltd. [2010] ATMO 117 (29 November 2010) ; Next Retail Limited v Nest Homewares Pty Ltd. [2010] ATMO 54 (30 June 2010); Next Retail Limited v Retail Management Consultants Pty Ltd [2010] ATMO 59 (22 July 2010)
I add that the guidelines adopted by the Registrar which are referred to above are just that and are to be applied flexibly with the particular circumstances of each application for extension of time taken into consideration.
In the instance under consideration there is evidence of protracted negotiations between the parties. Negotiations of across multiple jurisdictions are time consuming and lead to inevitable delays in matters. It appears to me that once it became apparent that the negotiations were not going to bear immediate fruit that Retail has attempted to adhere to the guidelines although not with any degree of alacrity.
Where adherence to the guidelines came unstuck for Retail was with the non-attachment of the exhibits to the declaration of Mr Sherlock. This error was remedied with alacrity.
Further, it is preferable to have all of the issues as fully ventilated as possible at any hearing of the matter which ensues: the exclusion of evidence which was served and filed shortly after the elapse of the allowed time may preclude full consideration of the matter and result in an appeal to the Court where such evidence would be admitted as the proceedings would be de novo.
I also observe that the service and filing of evidence by both parties culminates in a hearing of the matter and a decision by one of the Registrar’s delegates. As the parties both know their business best, it is preferable that they negotiate and be allowed to settle their duel with rapiers rather than be rushed to face the blunt axe of the referee.
Decision
I allow the Application.
Iain Thompson
Hearing Officer
Trade Marks Hearings
25 January 2013
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