Professional Golfers Association Ltd v Ladies Professional Golf Association

This matter concerned an application by the Ladies Professional Golf Association ('the applicant') for an extension of time to serve evidence in answer to an opposition filed by the Professional Golfers' Association of Australia Limited ('the opponent') to the applicant's trade mark application for the mark "LPGA and device" in class 25. The applicant sought an extension of time to 11 June 2002, having filed its application on 19 April 2002, approximately five weeks after the due date of 11 March 2002. The delegate of the Registrar of Trade Marks heard the application in Sydney.

The legal issues before the delegate were whether the applicant had made out a proper case for the extension of time, considering the relative inconvenience to the parties, and whether the public interest favoured granting the extension. Specifically, the delegate had to determine if the applicant's explanation for the delay was satisfactory, whether negotiations between the parties constituted a sufficient reason for the delay, and if the opponent had complied with its procedural obligations. The delegate also considered whether the Registrar had an obligation to notify the applicant of the commencement date for serving evidence in answer, as argued by the applicant.

The delegate reasoned that the opponent had complied with regulation 5.7 of the Trade Marks Regulations by serving its evidence in support within the extended time allowed, and therefore regulation 5.10 was not triggered, meaning the Registrar had no obligation to notify the applicant of the commencement date for evidence in answer. However, the delegate accepted the applicant's explanation that the late filing of the extension application was due to error and misunderstanding on the part of its agent, who was under the impression that the Trade Marks Office would provide notification of the due date. The delegate found that the applicant had subsequently provided adequate evidence, including correspondence between the parties, to demonstrate that negotiations were on foot and constituted a proper case for an extension. The delegate also found that refusing the extension would cause significant inconvenience to the applicant, potentially jeopardising its trade mark application, while the opponent would not be unduly disadvantaged. Considering the public interest in allowing substantive issues to be determined on merit and the fact that this was a first extension request, the delegate concluded that granting the extension was appropriate.

The delegate granted the extension of time to 11 June 2002.