Paragon Pharmaceuticals Pty Ltd v Estee Lauder Cosmetics Ltd

This decision concerns an opposition by Estee Lauder Cosmetics Ltd to an application by Paragon Pharmaceuticals Pty Ltd to register the trade mark "i’m beautiful" for goods in class 3. The matter came before a delegate of the Registrar of Trade Marks, who was required to determine a late application by Paragon for an extension of time to serve its evidence in answer to Estee Lauder's opposition.

The legal issues before the delegate were whether Paragon had established "special circumstances" that prevented it from applying for an extension of time within the prescribed period, as required by regulation 69 of the Trade Marks Regulations under the now repealed Trade Marks Act 1955. The delegate also had to consider the broad interpretation of "special circumstances" as established in case law, the applicant's conduct, the relative inconvenience to the opponent, and the public interest in the efficient management of the Register.

The delegate reasoned that while case law, such as *Genentech Inc v Wellcome Foundation Ltd*, suggests a liberal interpretation of "special circumstances" to avoid unfair suffering, Paragon's application was significantly out of time and lacked compelling evidence. Paragon's director stated that staff changes and lost files prevented correspondence from the Trade Marks Office from being brought to her attention, and that the company was inexperienced in trade mark matters and had recently changed solicitors. However, the delegate found that this evidence did not adequately explain Paragon's persistent inaction over a prolonged period, nor did it demonstrate that these circumstances specifically prevented the application from being made within the allowed time. The delegate concluded that Paragon had acted neglectfully and that refusing the extension would not cause it to suffer unfairly, while allowing such a late extension would be against the public interest in maintaining an efficient Register.

Consequently, the delegate refused Paragon's late application for an extension of time to serve its evidence in answer. The delegate indicated that, subject to any appeal, a time would be appointed for the resumption of the hearing of the opposition itself.