Re: Opposition by Adrian Moses to registration of trade mark application number 1888216 (class 41) - the World Cup Of Film in the name of Matutino Films Pty Ltd

[2020] ATMO 91

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Adrian Moses to registration of trade mark application number 1888216 (class 41) – THE WORLD CUP OF FILM - in the name of Matutino Films Pty Ltd

-and-

Application by Matutino Films Pty Ltd for admission of late filed Evidence in Answer

DELEGATE:

M. Cooper

REPRESENTATION:

Opponent: Frenkel Lawyers

Applicant: Self-represented

DECISION:

2020 ATMO 91

Trade Marks Regulations 1995 (Cth) – request for admission of late

  filed Evidence in Answer – reg. 21.15(4) - request refused.               

Background

1. This matter concerns an opposition by Adrian Moses (‘Opponent’), under s.52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark 1888216 filed by Matutino Films Pty Ltd (‘Applicant’) on 17 November 2017. The Trade Mark was examined and advertised as accepted for possible registration on 12 April 2018 in the Australian Official Journal of Trade Marks.

1. On 8 June 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 5 July 2017, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under ss 42, 58, 60 and 62A of the Act.

1. On 13 September 2018, the Applicant filed a Notice of Intention to Defend.

1. The Opponent filed its Evidence in Support (‘EIS’) on 21 December 2018 however the Applicant did not file its Evidence in Answer (‘EIA’) by the due date. On 10 July 2019, IP Australia sent correspondence to the Applicant which outlined the chronology of events as follows:

The opponent filed their evidence in support (‘EIS’) of the opposition via Objective Connect on 21 December 2018.

The EIS consists of declarations by Ben Pietor and Adrian Moses.

The three month statutory period for filing evidence in answer (‘EIA’) began on 10 January 2019 and ended on 10 April 2019.

On 2 April 2019 the Applicant applied under regulation 5.15(2)(a) for a one month extension of time to 10 May 2019 to file EIA.

No EIA was filed by 10 May 2019.

In my letter dated 20 May 2019 ‘Intention to refuse extension of time to file evidence in answer’ I allowed the Applicant until 31 May 2019 to request and pay for an additional month of their extension of time, and to provide comprehensive reasons for requiring the additional month. Also noting that the complete EIA needed to be uploaded on Objective Connect by 10 June 2019.

The request for a second extension of time, applied for under regulation 5.15(2)(b), for an additional month was filed on 3 June 2019. This was outside the deadline provided in my letter dated 20 May 2019.

I note the Applicant filed some material on Objective Connect on 4 June 2019. This material did not qualify as evidence because it was not in the approved form of a form of a declaration.

Following a phone conversation with the Applicant in relation to the extension of time matter, I sent an email to the Applicant on 6 June 2019 giving the Applicant until 14 June 2019 to file further submissions, including a time-line, in support of the extension of time under regulation 5.15(2)(a) OR to request and pay for a Hearing on the extension matter.

The Applicant sent email correspondence on 12 June 2019 outlining personal matters which would prevent him from meeting the 14 June 2019 deadline to file further submissions in respect of the extension of time matter.

Further material was uploaded to Objective Connect on 15 and 16 June 2019, with the final EIA in declaration form finally uploaded on 17 June 2019, which is outside the second requested extended period.

1. Noting the provisions for requesting an extension of time for filing evidence under reg. 5.15, the delegate concluded:

   A party making a request to the Registrar for an extension of time under regulation 5.15(2)(a) should be able to demonstrate a consistent pattern of reasonable effort, promptness and diligence in relation to all their endeavours to file their evidence within the three month statutory timeframe. In my letter to you dated 20 May 2019 I stated that “….a detailed timeline of the evidence preparation is needed in order to help establish that you acted promptly and diligently at all times and all reasonable efforts were made to comply with filing your EIA on time”. You provided a timeline in your declaration dated 3 June 2019 which was received on 16 June 2019. The timeline for this extension of time should cover the period 10 January 2019 to 10 April 2019. The timeline included in your declaration dated 3 June 2019 provides very little detail. I note that you spent the majority of January 2019 reading the opponent’s EIS and working out “a plan of how to tackle the issue going forward”. In the month of February you began to look for legal counsel and you started contacting witnesses. You have stated that in March you prepared “all accounting” and discussed potentially declaring yourself insolvent however you have not

explained how this is related to the preparation of evidence. You spent April chasing up declarations, finding out why you had not received declarations from the USA and contacting Gerry Fox The steps you took after 10 May to prepare the evidence are not relevant to my decision of whether to grant the extension of time to 10 May. Within the original three month statutory period, I cannot be satisfied that you took the necessary steps to progress the preparation and filing of evidence given that the EIA was not filed until more than two months later.

The ground under regulation 5.15(2)(a) has not been made out and I have formally refused the extension of time.

1. In relation to the extension of time request to 10 June 2019, the delegate stated

Given the refusal of the extension of time covering the period 11 April to 10 May 2019, the second application for an extension of time to 10 June 2019 is not enlivened and consequently the application will not be considered. You will receive a refund of the fee in due course.

1. With regard to the late filed EIA, the delegate referred to and included Part 51.2.6 ‘Evidence filed out of time’ from the Trade Marks Office Manual of Practice & Procedure, advising, among other things, that the delegate who is to hear the opposition will decide whether or not there is a compelling case for the information to be considered. The Applicant was advised that it had until Wednesday, 24 July 2019 to provide ‘compelling reasons’ in support of the consideration of the evidence filed.

1. The Opponent was copied into this correspondence.

1. The parties were advised that the evidence stages had ended, and a hearing could be requested.

1. Further to this correspondence, on 25 July 2019 the Applicant’s director and representative, Mr. Sacha Rodriguez, filed a declaration in relation to compelling reasons and, in summary, relevantly stated that:

·     He is the principal carer of a young child, unemployed and trying to start his own business, while being engaged in ongoing legal battles with the Opponent, his ex-business partner. These circumstances had caused him stress and anxiety which has been aggravated by this matter. He attached a medical certificate from his non-treating medical practitioner concerning his diagnosis and a prescription. He said it was difficult to write a letter.

·     The timeframes provided by the legislation are ‘intransigent and unrealistic’ and ‘rigid’ and ‘as they do not take into consideration the fact people may be challenged for time or sanity or otherwise’ and operate unfairly given IP Australia’s role to protect intellectual property.

·     He feels unable and unqualified to represent himself and felt compelled to engage a professional to take over.

1. On 28 August 2019, IP Australia acknowledged the receipt of the Applicant’s submissions and advised both parties that the delegate deciding the opposition would determine whether there was a compelling case to allow his filed documents into evidence. If the delegate was not satisfied, both parties would be advised that the matter would proceed to hearing and decision based on evidence properly filed. If it was decided that there was a compelling case, both parties would be given an opportunity to make representations before the decision. For the substantive matter, the correspondence noted that no hearing had been requested and a decision would be made on the properly filed evidence. The parties were advised that written submissions were to be filed by 23 November 2019. On 22 November 2019, the Opponent filed its submissions. No further material has been received from the Applicant.

1. In relation to this issue, the Opponent submitted that the evidentiary material filed by the Applicant should be disregarded because the Applicant had failed to meet every statutory deadline and every extension granted, while the Opponent had met all the deadlines. It further contended that if the Applicant’s late-filed material is to be considered, it would be denied procedural fairness because it had lost its opportunity to file Evidence in Reply.

Consideration

1. As noted above, the Applicant’s requests for extensions of time were refused. Consequently, the only issue before me is whether to allow the late-filed EIA in evidence.

1. Regulation 21.15(4) provides that the Registrar is not bound by the rules of evidence but may inform him or herself on any matter that is before him or her in any way that he or she reasonably believes to be appropriate. It is in this context that I have considered the Applicant’s request.

1. I have had regard to the Trade Marks Office Manual of Practice and Procedure (‘the Manual’), in particular, Part 51, paragraph 2 which states:

   It is in the public interest that opposition proceedings are conducted as efficiently and predictably as possible. The Registrar expects the parties to file their evidence in the statutory periods allowed for that purpose. However the Registrar is aware that, despite the parties’ best endeavours, it may not always be possible to do    so. Accordingly the Registrar may extend the statutory period for  filing  evidence. The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) limited the circumstances under which an extension of time may be granted. Those circumstances are stated in regulations 5.15, 9.18, 17A.34K, 17A.48T and apply for extensions of evidentiary periods which commenced on or after 15 April 2013.

1. Pertinently, as noted above, I am not deciding whether to allow an extension of time to file the Applicant’s EIA. The decision to refuse the extensions of time was made by the delegate on 10 July 2019 and there was no appeal from that decision. Rather, this decision is dealing with the Applicant’s filing of its EIA well outside the evidentiary timelines provided for in the Trade Marks Regulations 1995 (‘the Regulations’) and its request that it be allowed into evidence.

1. In this context, I have relevantly had regard to the Manual at Part 51, paragraph 2.6 which provides:

   The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered.

   Nevertheless, there may be instances where the failure to consider that evidence is not in the public interest of the register being a true reflection of the marketplace. It is also undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party. The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account. The delegate may do so as he or she is not bound by the rules of evidence, but may be informed on any matter in a way that he or she reasonably believes to be appropriate (reg 21.15(4)).

   The issues the filing party needs to address in its submissions include:

   ·Why the evidence was filed after the due date

   ·If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier

   ·What the evidence shows

·Why that information is crucial to the delegate’s decision

·Why it is in the public interest to have the information considered

·What is the balance of convenience for the parties if the information is considered.

Why evidence filed after due date/why not filed earlier

1. The Applicant claims the reason the evidence was filed after the due date was because of his responsibilities as sole carer for his child and the stress and anxiety caused by his ongoing legal battles with the Opponent, his ex-business partner. It is apparent from all the materials filed that there are bitter and complex disputes between the Applicant and Opponent in addition to this opposition and I accept that this may have caused both parties some stress and anxiety. The Opponent has however filed its materials promptly but the Applicant has not. In particular I note that the Applicant has engaged legal representation for his other disputes with the Opponent but has not explained why he has not for this opposition, despite his claims to be seeking it.

1. While I do give the Applicant’s claims some weight in this regard, other than a very perfunctory medical certificate and a prescription, they are not supported by other evidence and are not so outside the normal course of life events for many people as to constitute a satisfactory explanation for his lengthy delays in lodging the required material or compelling reasons to allow it into evidence.

1. In any event, there is little before me which substantiates the Opponent’s lack of funds or demonstrates how his caring responsibilities, or his medical condition have prevented him from filing his EIA until June 2019.

If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier.

1. This consideration does not apply in these circumstances.

What the evidence shows/ Why that information is crucial to the delegate’s decision

1. There is little probative or cogent information in the material filed by the Applicant. The two witness declarations provided are not properly completed and are of limited probative value.

The Applicant’s claims of social media and other use are not substantiated. In the circumstances, even acknowledging that it is the Opponent which bears the onus of establishing its grounds of opposition, there is little in the Applicant’s filed materials that indicates they are crucial to the decision on the opposition.

Why it is in the public interest to have the information considered

1. As noted above, it is in the public interest that opposition proceedings are conducted as efficiently and predictably as possible but also that the Register is a true reflection of the marketplace, it being undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party. Nevertheless, as the delegate commented in TWG Tea Company Pte Ltd v Tsit Wing International Company Limited , “[t]here remains an indisputable onus upon a party submitting evidence to exercise careful oversight of that process at all times.”1 Given the unsupported and haphazard nature of the material the Applicant did eventually file, I am not satisfied its probative value is such that it should be allowed into evidence as a matter of public interest.

What is the balance of convenience for the parties if the information is considered?

1. The Opponent correctly notes that the Applicant ‘failed to meet every statutory deadline for the filing of Evidence in Answer (“EIA”) …and failed to meet every extension granted by IP Australia. The Opponent has met every statutory deadline for the filing of evidence and submissions.’ It submits that if the late-filed evidence ‘is considered by the Hearing Officer, then that will amount to procedural unfairness to the Opponent and a denial of natural justice as he has been denied the opportunity to file Evidence in Reply.’ The Opponent’s representatives also claimed that ‘our client is suffering commercial harm and loss because he is unable to progress his legitimate business interests that include use of the Trade Mark because the Applicant continues to fail to meet statutory deadlines, while our client has complied with every statutory obligation.’

1 [2015] ATMO 64 [46]

1. While the Opponent would be afforded the opportunity to file its EIR if the Applicant’s EIA was allowed, it would not alleviate the inconvenience to the Opponent’s business caused by the Applicant’s delays which have in turn delayed resolution of the opposition.

Conclusion

1. While accepting that each party to an opposition should be allowed a reasonable amount of time to prepare and serve its evidence, I consider the Applicant had more than a reasonable amount of time to do so. Consequently, having carefully considered all the circumstances, including the interests of the parties involved and the Applicant’s submissions on this point, I am not satisfied that the public interest is served by allowing the late filed evidence where the Applicant has neither adequately demonstrated its probative value nor offered credible or compelling reasons for its delay in filing documents well after the relevant time limits.

Decision

1. For all the above reasons, I decline to admit the Applicant’s late filed evidence into the substantive opposition of trade mark application 1888216.

Mary-Ann Cooper Hearing Officer Oppositions and Hearings Trade Marks and Designs 27 May 2020