Price Club Australia Pty Limited v the Price Company

This matter concerns an application by The Price Company, a United States corporation, for an extension of time to serve evidence in support of its opposition to a trade mark application by Price Club Australia Pty Limited. The trade mark in question, PRICE CLUB, was advertised for acceptance in class 42. The Price Company filed its notice of opposition within the prescribed three-month period, but subsequently sought a three-month extension to serve its supporting evidence, lodging this request seven days after the deadline had expired. Price Club Australia opposed the grant of this extension. The decision was made by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether to grant The Price Company's application for an extension of time to serve evidence in support of its opposition, particularly given that the application was made outside the statutory time limit. This required the delegate to consider the provisions of section 130 and regulation 69 of the Trade Marks Act, which govern extensions of time. Specifically, the delegate had to determine if The Price Company had established good reasons for the extension and, crucially, if special circumstances existed that prevented the application for an extension from being made before the expiry of the original time limit.

The delegate reasoned that the general requirements for an extension, as outlined in case law such as *Mitty's Authorised Newsagency v the Registrar of Trade Marks*, were met. These included the history of the proceedings (this being the first extension request), the seriousness of the opposition (evidenced by the recent filing of supporting evidence and grounds involving public interest), the lack of undue inconvenience to the applicant, and the public interest. The delegate found that the three-month period for evidence is often inadequate, especially when dealing with overseas clients, and that the prospect of negotiations, as indicated by The Price Company, justified a more restrained approach to evidence gathering. Regarding the late filing of the extension request, the delegate accepted that a failure in the law firm's diary system constituted special circumstances preventing the timely application, as per *D'Urban Inc. v. Canpio Pty Ltd*. The delegate also commented on the late production of a declaration by Price Club Australia, deeming it unreasonable and unhelpful, particularly as it was not provided to the opponent in advance of the hearing.

The delegate allowed the extension of time sought by The Price Company, granting an extension until 8 January 1994 for the service of evidence in support of the opposition. Costs were awarded to The Price Company, following the usual course where costs follow the event.