Re: Opposition by Tarte, Inc. to registration of trade mark application number 1897993 - SUGAR CRUSH - in the name of The Boots Company PLC

[2019] ATMO 184

TRADE MARKS ACT 1995

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

Re:      Opposition by Tarte, Inc. to registration of trade mark application number 1897993 - SUGAR CRUSH - in the name of The Boots Company PLC

– and –

Application by The Boots Company PLC for an extension of time to file evidence in answer

Delegate:

Debrett Lyons

Representation:

Opponent:  S.J. Hallahan of counsel, instructed by Wallington-Dummer.

Applicant:  Marion Heathcote of Davies Collison Cave.

DEcision:

2019 ATMO 184

Trade Marks Act 1995 (Cth) – opposition under section 52 – application for extension of time to file evidence under regulation 5.15 – grounds for extension of time under regulation 5.15(a) and (b) considered – neither ground established – application for extension of time refused – regulation 21.19 considered – no power to admit late evidence in regulation 21.19 – regulation 21.15(4) – discretion not exercised

Background

Registration of trade mark application number 1897993 in the name of The Boots Company PLC (‘Applicant’) had been opposed by Tarte, Inc. (‘Opponent’) which has filed its evidence in support of the opposition in accordance with the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Regulation 5.14 provides that evidence in answer to this opposition was to be filed by the Applicant by 13 May 2019 (the actual deadline of 12 May 2019 having fallen on a Sunday).

On 13 May 2019 the Applicant sought a one-month extension of time to 12 June 2019 (‘Request’) but the Opponent has objected to the allowance of that extension. 

The Opponent’s submission is that the Request does not meet the requirements of regulation 5.15(2)(a) and, even if those requirements were met, the Registrar ought not exercise her discretion to allow the extension of time.

The Request

In its initial form, the Request was supported with the following unsworn statement:

The Applicant seeks an extension of the deadline for filing Evidence-in-Answer by one (1) month from 12 May 2019 to 12 June 2019 under Regulation 5.15 of the Trade Marks Regulations 1995 (Cth). The grounds on which the extension is requested are set out below:

THE GROUNDS ARE:

1.        The applicant has been engaged in the preparation of evidence of its use of the trade mark the subject of the opposition proceedings as evidence in answer to the proceedings.

2.        The applicant is a large international company and the goods are offered in Australia under the subject trade mark via a third party distributor. This has complicated the identification of relevant records concerning the use of the subject mark.

3.        The applicant is also engaged in multiple other matters concerning the subject trade mark internationally which has consumed additional of the applicant’s staffing resources and made it more difficult for the applicant’s staff to identify the required information.

4.        In addition, our firm was previously instructed by a member of the applicant’s legal team who has now left the employ of the applicant. Another employee of the applicant’s legal team has had to take over the matter at short notice. He has progressed the evidence as quickly as possible given the constraints above. The evidence is all but finalised. However, the applicant’s commercial team member who was to declare the evidence on the applicant’s behalf was unable to execute the declaration over the weekend of 11 and 12 May 2019. It is expected that she will be able to execute the declaration in the next few days.

5.        Accordingly, a one month extension of time to file evidence in answer is requested on the basis that the applicant:

i) has made all reasonable efforts to comply with all relevant filing requirements of the Regulations; and

ii)        despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so.

On 23 May 2019 a delegate of the Registrar of Trade Marks (‘Registrar’) wrote to the Applicant intending to refuse the Request.  The Applicant responded on 5 June 2019 with information supplementing the Request. A delegate of the Registrar wrote again to the Applicant on 30 July 2019 expressing an intention to grant the Request, but also giving the Opponent time to seek a hearing.

The Opponent applied to be heard and so this office sent formal hearing notices to both parties setting a time and place for the matter of the Request to be heard.  Later, the parties agreed that a hearing was not required and the matter could be decided on the written record, their submissions taken into account.

The circumstances surrounding the Request

The circumstances leading to this contested Request are slightly unusual.  In particular, the evidence in answer sought to be included in the opposition proceedings is a declaration of Helen Garton dated 10 May 2019 (‘Garton’).  It was received and filed by the Applicant’s representatives on 13 May 2019 but not before those representatives had earlier that day filed the Request as a precautionary measure. 

The Applicant later sought to rely upon the Request to remedy two errors made by the Applicant in preparing and filing its evidence in answer which came to its attention after the Request was filed.

The Errors

The first error is that, as filed on 13 May 2019, Garton referred to a Confidential Annexure A, but that annexure was not included.  This error was identified on 14 May 2019 and on that day another document (‘14 May 2019 Document’) was filed with this office, out of time.

The second error which the Applicant attempts to address in the time sought by the Request concerns confusion with the actual annexures to Garton.  In particular, the 14 May 2019 Document is not Confidential Annexure A to Garton.

The 5 June letter

The Applicant’s submissions, outlining a chronology and events neither privileged nor confidential, are those set out in its 5 June 2019 letter to this office.  For the benefit of the discussion which follows, it is set out in full, below:

Firstly, we note that all the applicant’s evidence in answer (with the exception of Confidential Annexure A) was filed by the deadline.

The applicant has acted promptly and diligently to progress the evidence throughout the relevant period, and the extension is therefore warranted. In particular:

1.        Advice was provided to the applicant concerning the opponent’s evidence in support and recommendations for evidence in answer on 13 February 2019, together with a questionnaire to inform the preparation of evidence;

2.        The applicant requested further related advice concerning other activities of the opponent which was relevant to the opposition and this was provided to the applicant on 7 March 2019;

3.        The applicant is a large international company and the goods are offered in Australia under the subject trade mark via a third party distributor in Australia. This has complicated the identification of relevant records concerning the use of the subject mark;

4.        The applicant is also engaged in multiple other matters concerning the subject trade mark internationally which has consumed additional of the applicant’s staffing resources and made it more difficult for the applicant’s staff to identify the required information;

5.        Notwithstanding the above difficulties, on 17 April 2019, our former instructor at the applicant provided various information concerning the use of the mark by means of a document link. Due to technical difficulties, the link was not able to be accessed by our firm. Our former instructor was able to supply the same information by alternative means on 25 April 2019;

6.        On 26 April 2019, a draft declaration was prepared and circulated to our former instructor comprising the available evidence and requesting further information so the evidence could be finalised;

7.        On 9 May 2019 updated evidence was circulated including additional information provided by our former instructor. However, our former instructor left the employment of the applicant on 10 May 2019, and throughout the period leading up to her departure, she was occupied with handover responsibilities for the large portfolio of matters handled by the applicant (including a number of matters relating to the subject mark in other countries) and was unable to further progress the evidence before her departure due to her other responsibilities at the time;

8.        On 10 May 2019 after 6pm (Australian time) we called our new instructor in the UK, who had taken over the handling of the matter at the applicant that day. Our new instructor was able to obtain further information required to progress the evidence, which included some of the information ultimately comprising Confidential Annexure A;

9.        On Saturday 11 May 2019 (10 May 2019 UK time), our instructor provided a revised declaration for review together with further Australian sales data. We finalised an execution copy of the declaration for execution by Helen Garton and forwarded this to our new instructor for execution by the declarant. The execution copy included a completed Confidential Annexure A as part of the document;

10.      Over the weekend of 11 and 12 May 2019 (UK time), we were instructed that our new instructor was actively seeking to arrange execution of the declaration by Helen Garton and we were in correspondence with our new instructor in that regard over the weekend;

11.      Because we had not received an executed copy for filing during business hours on 13 May 2019 (Australian time) and we had not heard further confirmation from our instructor that the evidence had been executed, we filed an extension of time request on 13 May 2019. The extension request was made on the information available to us at the time, which was that the declaration had not yet been executed but was anticipated to be executed on the morning of 13 May 2019 (UK time);

12.      Our instructor subsequently forwarded a scanned copy of the executed declaration of Helen Garton to us for filing at 6.57pm on 13 May 2019 (Australian time). The declaration was dated 10 May 2019 (UK time);

13.      We attended to the filing of the declaration at 9.14pm on 13 May 2019 via Objective Connect, to comply with the deadline;

14.      Upon checking the matter on the morning of 14 May 2019 (Australian time) it became apparent that:

a.        The scanned copy of the declaration provided for filing by the applicant omitted Confidential Annexure A, and this had accordingly not been uploaded to Objective Connect;

b.        The cover letter filed with the evidence in answer on 13 May 2019 incorrectly referenced Annexures A-C and D, not just Annexure A and D. For completeness we confirm there are no annexures B and C. This is apparent from the declaration which makes no reference to Annexures B and C, and was the result of an earlier draft of the declaration;

15.      A supplementary version of Confidential Annexure A as it was understood to have formed part of the declaration of Helen Garton was filed as soon as the above became apparent, on the morning of 14 May 2019. Upon further discussions with the Applicant, it further became apparent late on 31 May 2019 (Australian time) that the declaration of Helen Garton as executed on 10 May 2019 included an incomplete version of Confidential Annexure A. The version included with the declaration as executed forms Exhibit HG-1A to the attached further declaration of Helen Garton. The annexure did not include all the Australian sales information that had been collated by the Applicant for the purposes of inclusion in the Applicant’s evidence in answer;

16.      The Applicant had always intended that all the further Australian sales information be included in the evidence in answer and that information was known to Ms Garton when executing her first declaration, as outlined in further detail in the attached further declaration of Helen Garton.

The extension of time request filed on 13 May 2019 did not reference Confidential Annexure A specifically because when the extension request was filed, it was not anticipated that only that annexure would be filed out of time for the reasons above. The annexure was always intended to be filed with the remainder of the evidence and an incomplete version of the annexure formed part of the declaration executed by Helen Garton.

Accordingly, despite acting promptly and diligently at all times as outlined above (which included both our new instructor and our firm working throughout the weekend of 11 and 12 May 2019 and substantially after business hours on Friday 10 May 2019 and Monday 13 May 2019 to ensure the filing of the evidence on time), the applicant was unable to file Confidential Annexure A on the deadline.

The opposition is based solely on section 44 grounds, and in relation to identified registrations which are not owned by the opponent. Confidential Annexure A includes information which is relevant to the defence of the opposition proceedings including sales figures throughout the period of use of the applicant’s mark. The inclusion of this evidence would not prejudice the opponent’s position, particularly given the remaining exhibits already forming part of the evidence (which was filed in time) also substantiate lengthy use by the applicant and its distributor of the applicant’s mark in Australia.

Conversely, the annexure is materially relevant to the applicant’s defence of the opposition. Exclusion of the annexure which contains relevant evidence, and in circumstances where the applicant had acted promptly and diligently throughout the evidentiary period as outlined above, would put the applicant to substantial prejudice. We therefore request that the extension be granted.

Regulation 5.15

The regulation provides:

Extension of time for filing

(1)       A party may request the Registrar to extend a period for filing evidence mentioned in regulation 5.14.

(2)       The Registrar may extend the period only if the Registrar is satisfied that:

(a)       the party:

(i)        has made all reasonable efforts to comply with all relevant filing requirements of this Part; and

(ii)       despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so; or

(b)       there are exceptional circumstances that justify the extension.

(3)       The Registrar:

(a)       must decide the length of the extended period having regard to what is reasonable in the circumstances; and

(b)       may do so on terms that the Registrar considers appropriate.

(4)       In this regulation:

exceptional circumstances includes the following:

(a)       a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Part;

(b)       an error or omission by the Registrar or an employee that prevents a party from complying with a filing requirement under this Part;

(c)       an order of a court or a direction by the Registrar that the opposition be stayed.

Sub-regulation (2) provides alternative grounds for me to exercise my discretion to grant an extension of time and decide the length of the extended period.  The Opponent’s submission is that the Request does not meet the requirements of regulation 5.15(2)(a), having formed the view for itself that regulation 5.15(2)(b) had no relevance. 

I do not read the 5 June letter as limited to one ground and not the other.  Certainly, most of it is directed towards the requirements of regulation 5.15(2)(a), but there is also reference to technical difficulties which might amount to ‘exceptional circumstances’ and on one reading could account for a loss of more than a week.  Accordingly, I have looked to both grounds.

Discussion

I have decided that the issues are contained by the analysis which follows hereunder but in doing so I have paused to consider whether the Request has any rightful bearing on the Errors given that the Request was made before the Errors were identified.  A question may have arisen for consideration as to how a request of this kind for additional time – supported as it must be by reasons – should be treated when the matter sought to be introduced or, as in this case, corrected, was not in contemplation at the time the request was made.  However, as I have found the evidence, I was not required to explore that question further.

Regulation 5.15(2)(a)

The Applicant states that it has acted promptly and diligently to progress the evidence throughout the relevant period.  The Applicant bears the onus to satisfy me of that claim and in that regard it has been said that the regulation imposes an onerous test.

The word “diligent” is defined in the Macquarie Dictionary as “constant and persistent in an effort to accomplish something”.  Time for the preparation of evidence in answer ran from 12 February 2019.   I note that a questionnaire to inform preparation of evidence was sent to the Applicant the following day, certainly timely.  However, there then follows a two-month period where it is impossible on the evidence to know what actually was achieved.   There is reference to ‘legal advice’ but detail is missing and what might pass for that description could be as meagre as enquiry as to whether more time might be available under Australian practice, or whether, given the claim that the subject trade mark has issues internationally, the preparation of evidence might be delayed because of other similar proceedings elsewhere or adapted for use from other similar proceedings elsewhere.  It may have been more complex; I simply do not know.  In April there is reference to a draft declaration and in March to further, non-specific advice.

My assessment is that there is no evidence of meaningful productivity over a two month period.   The suggestion is that the Applicant showed diligence in spite of the facts that the Applicant’s goods are sold in this country through a third-party distributor and, secondly, the employee responsible for instructing the Applicant’s representatives left the Applicant’s employment and responsibility had to be assumed by another.  However, I find that those circumstances are part of the ordinary matrix of commercial factors facing any business, perhaps not entirely foreseeable, but certainly unremarkable, and in any case the type of minor obstacles that the proper exercise of diligence should be set to anticipate.

The resultant errors are lamentable but in my finding the Applicant exposed itself to them by failing to exercise due diligence.  The Applicant has not satisfied me that a ground for extension of the period for filing evidence in support found in reg 5.15(2)(a) has been established.

Regulation 5.15(2)(b)

Other factors described may have slowed, in some measure, the finalization of the evidence, and I refer to the asserted technical difficulties which delayed, by about eight days, the provision of ‘various information’ by the Applicant to its representatives.  The question is whether that may constitute an exceptional circumstance and, in particular, a circumstance beyond the control of the Applicant, within the meaning of sub-regulation 5.15(4).

There is no better description of the technical difficulty other than that, for what seems an unusually long period, the representatives were not able to access information ‘concerning the use of the mark by means of a document link’.   That may mean nothing more than an incorrect or broken browser link, in which case the difficulty was trivial and quickly overcome; again, I know nothing better.  I find that there is nothing to support a finding that regulation 5.15(2)(b) should be enlivened.

Residual discretion to admit late filed evidence

Once more, the 5 June letter makes no explicit reference to the Regulations, but speaks of the section 44 ground of opposition, alleges that Confidential Annexure A includes information which is materially relevant to defence of the opposition, and asserts that “[e]xclusion of the annexure … would put the [A]pplicant to substantial prejudice.”

For the sake of completeness, I have considered authorities such as Fed Square Pty Ltd v Federations IP Pty Ltd and taken into account regulation 21.19, shown below:

Registrar may use information available

(1)       If:

(a)       information that is available to the Registrar is relevant to proceedings before the Registrar; and

(b)       the Registrar has reason to believe that the information is not known to a party to the proceedings; and

(c)       the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:

(d)       provide the information to the party; and

(e)       give the party a reasonable opportunity to make representations about the information.

(2)       For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

It has been observed already in cases before this office that regulation 21.19 does not confer any positive power, but rather outlines an obligation of procedural fairness.  However, the Request is at issue here and it does not primarily raise questions about the giving of certain information to a party, nor of subsequently providing an opportunity to make representations about that information. 

Further, I am not convinced that the latitude which might in some circumstances be offered by regulation 21.15(4) , set out below, assists the Applicant with its Request.

Opportunity to be heard by Registrar

(4)       The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.

The Registrar promulgates guidelines on regulation 21.15(4) which state that a delegate will not consider out of time evidence without a compelling case.  Factors include the timing issues considered here already, but also consideration of what the evidence shows and why it might be crucial to the substantive decision.

Timing issues weigh against an exercise of the discretion for the reasons given.  The substantive matter is not yet ready for determination.  A further evidence round exists.  The reference to defence of the section 44 ground of opposition is described in nebulous terms.  Based on all the above, I do not consider it appropriate to exercise my residual discretion to admit the Applicant’s late evidence. 

The evidence in answer shall comprise Garton as it was filed by the Applicant’s representatives on 13 May 2019.

Decision

I refuse the Request and decline to exercise any residual discretion to admit the Opponent’s late evidence.

Debrett Lyons

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

20 December 2019