Next Retail Limited

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 extension

Background

1. 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 2008

   Goods:Class 25: Clothing, footwear and headgear

   Trade Mark:               NEXTLEVEL

2. 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.

3. 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.

4. 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.....”

5. 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.

6. Ms Ryan also summarised the background…