Now Screen Pty Ltd v Infobreak Pty Ltd

Now Screen Pty Ltd sought an extension of time to oppose an earlier trade mark application by Infobreak Pty Ltd. The dispute concerned whether Now Screen had established sufficient grounds for the extension under the relevant regulations, specifically focusing on the reasons for the delay in filing the opposition. The matter came before Terry Williams.

The court was required to determine if Now Screen had demonstrated an adequate intention to assess whether to oppose Infobreak's trade mark application and if this intention was subverted by an error, omission, or circumstance within the scope of regulation 5.2(2) of the Trade Marks Regulations. Specifically, the court had to consider whether the delay in obtaining costings and a filing strategy from Now Screen's patent attorney, Mr. McInnes, constituted a sufficient causal link to the failure to oppose Infobreak's application in a timely manner.

The court found that while Mr. McInnes's tardiness in providing costings and a filing strategy was an error, the degree of causation flowing from this delay to Now Screen's failure to oppose was negligible. The court reasoned that Mr. McInnes was only authorised to make the necessary enquiries, including those through the Assisted Filing Service (AFS), after 7 March 2007, and the AFS results were not available early enough to allow for an opposition. The court noted that the delay in Mr. McInnes's actions, while ultimately proving unwise due to unforeseen consequences, did not directly cause the failure to oppose. The court indicated it would further consider the role of Mr. Silcocks in the matter.