Re: Tomkins Commercial & Industrial Builders Pty Ltd
[2025] ATMO 81
•2 May 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by Tomkins Commercial & Industrial Builders Pty Ltd for an extension of time to file a notice of intention to oppose an application under section 92 of the Trade Marks Act 1995 (Cth) by ConstructiveIQ Pty Ltd to remove trade mark number 2012037 (classes 9, 16 and 37) – THE CONSTRUCTIVE - in the name of Tomkins Commercial & Industrial Builders Pty Ltd
Delegate:
Timothy Brown
Representation:
Opponent: Gilbert Tsang of Counsel, instructed by Sparke Helmore Lawyers
Applicant: Gabriella Rubagotti of Counsel, instructed by Removal Applicant
Decision:
2025 ATMO 81
Trade Marks Regulations 1995 (Cth) – request under reg 9.11 for an extension of time to file notice of intention to oppose an application for removal – error or omission – request for extension of time granted.
Background
This decision concerns a request made under reg 9.11(1) of the Trade Mark Regulations 1995 (Cth)[1] for an extension of time to file a notice of intention to oppose an application seeking removal of trade mark registration number 2012037 (‘Trade Mark’) from the Register of Trade Marks.
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
On 21 May 2024, ContructiveIQ Pty Ltd (‘Removal Applicant’) filed an application under s 92(4)(b) seeking removal of trade mark registration 2012037 for non-use in relation to all the goods and services for which the Trade Mark is registered (‘Removal Application’). On 7 June 2024, Tomkins Commercial & Industrial Builders Pty Ltd (‘Removal Opponent’), in accordance with reg 9.6(1), was notified of the Removal Application. The notice informed the Removal Opponent that it had until 7 August 2024 (‘Deadline’) to oppose the Removal Application. The Removal Opponent subsequently filed a Notice of Intention to Oppose (‘NIO’) the Removal Application on 8 August 2024, one day after the Deadline.
On 8 August 2024, the Removal Opponent filed an application under reg 9.11(1) for an extension of time of 1 month to file the NIO. In support of the extension of time, the Removal Opponent filed a declaration of Christian Chung, employee of Sparke Helmore Lawyers, dated 9 August 2024 (‘Chung’).
On 22 August 2024, a delegate of the Registrar of Trade Marks (‘Registrar’) informed the Removal Opponent that the Registrar intended to refuse the extension of time because the information outlined in Chung was not sufficient to support granting an extension of time under either of the grounds in reg 9.11(4).
On 4 September 2024, the Removal Opponent filed the declaration of Vienna Jones, Lawyer at Sparke Helmore Lawyers, dated 4 September 2024 with Confidential Annexures A to D. On 11 September 2024, a delegate of the Registrar informed the Removal Opponent that the declaration could not be taken into consideration as the entire declaration was marked confidential and had been made under s 224. The delegate requested that the Removal Opponent filed a supplementary declaration by 20 September 2024. On 18 September 2024, the Removal Opponent filed the declaration of Vienna Jones dated 17 September 2024 (‘Jones’) with Annexures A to F.
On 26 September 2024, a delegate of the Registrar informed the parties of its intention to grant the extension of time and allowed the Removal Applicant 14 days to respond or request a hearing on the matter. On 9 October 2024, the Removal Applicant requested to be heard.
The Removal Opponent filed a written outline of its submissions on 17 January 2025, including a declaration of Hannah Leuchars, lawyer at Sparke Helmore Lawyers, dated 17 January 2025 (‘Leuchars’). The Removal Applicant filed a written outline of submissions on the 24 January 2025. I heard the matter, as a delegate of the Registrar, on 31 January 2025. The Removal Opponent was represented by Gilbert Tsang of Counsel with instruction from Hannah Leuchars of Sparke Helmore Lawyers. The Removal Applicant was represented by Gabriella Rubagotti of Counsel with instruction from Bronwyn Payne of the Removal Applicant.
Evidence
Jones includes the following timeline of events:
Date
Event
11 June 2024
Mr. Chung forwarded Ms. Jones the notification about the Removal Application filing and the Deadline.
17 June 2024
Ms Lottie Cabassi-Power, another member of Sparke Helmore Lawyers, sent Ms Jones a reminder of the Deadline via Outlook. Annexed to Jones is a screenshot of the Outlook reminder.
18 June 2024
Ms. Jones searched Sparke Helmore Lawyers' database and found the most recent correspondence with the Removal Opponent: an email from Andrew Musgrave to Vahini Naidoo of Sparke Helmore Lawyers dated 9 March 2023.
Ms Jones sent a report to Mr Musgrave about the Removal Application and NIO filing Deadline, requesting further instructions. Mr Glenn Seaton was copied. An automatic reply from Mr Musgrave indicated his resignation and directed inquiries to Scarlett Keam. A screenshot of the email is annexed to Jones.
No automatic reply was received from Mr. Seaton's email address. Ms. Jones assumed that Mr. Seaton had received the information and the request for further instructions. Subsequently, Sparke Helmore Lawyers were informed that Mr. Seaton had also departed from the Removal Opponent in 2023.
Ms Jones forwarded the email to Ms Keam’s email address and requested that Ms Keam advise who from the Removal Opponent was best placed to provide instructions. A screenshot of the email is annexed to Jones.
19 June 2014 to 7 August 2024
In mid-July 2024, Ms. Jones observed that she had not received a response to her email. She acknowledges that she did not verify the Deadline and erroneously recalled it as being 18 September 2024. Although an Outlook reminder was triggered on 7 August 2024, Ms. Jones did not view the reminder on that date.
8 August 2024
Ms. Jones observed the overdue status of the Outlook reminder and verified that she had not yet received instructions from the Removal Opponent. To maintain the Opponent's position, Ms. Jones filed the NIO. She also sent an additional email to Ms. Keam, copying Mr. Seaton, concerning the Removal Application and the applicable deadline.
At 6:30 PM, Ms. Jones checked Outlook and received a notification indicating that Ms. Keam’s email address was invalid. A screenshot of this notification is attached to Jones. At this point, Ms. Jones informed Ms. Shannon Platt of Sparke Helmore Lawyers about the issue and subsequently sent an additional email to [email protected]. This email referred to the Removal Application and the previous correspondence with Ms. Keam.
9 August 2024
Melissa Knight of the Removal Opponent advised Ms Jones that Ms Keam had not worked for the Removal Opponent for some time and that the Removal Opponent had not been receiving Ms Jones’ emails.
The Removal Opponent filed the extension of time request.
12 August 2024
Nona McCann of the Removal Opponent informed Ms Jones via email that the Removal Opponent intended to oppose the Removal Application and requested that Ms Jones file an extension of time to file the NIO.
Ms. Jones states that she mistakenly believed Mr. Seaton and Ms. Keam were still employed by the Removal Opponent and that they were receiving her correspondence. She acknowledges that she did not verify the Deadline, leading to her incorrect assumption that 18 September 2024 was the deadline to file the NIO. Consequently, Sparke Helmore Lawyers were not informed of Mr. Musgrave’s resignation until 18 June 2024, Ms. Keam’s resignation until 8 August 2024, and Mr. Seaton’s resignation until 28 August 2024. As a result, the Removal Opponent did not receive notice of the Removal Application or the Deadline before 8 August 2024.
Leuchars affirms that the Removal Opponent intends to prosecute its opposition to the Removal Application and annexed examples of alleged use of the Trade Mark in Australia.
Relevant Provisions
Regulation 9.11 states:
(1)A person who intends to oppose an application for removal may request the Registrar to extend:
(a) the period for filing a notice of intention to oppose under subregulation 9.8(1); or
(b) the period for filing a statement of grounds and particulars under subregulation 9.9(1).
(2) A request under paragraph (1)(a) or (b) may be made within the period for filing the document in question.
Note: See subparagraph (3)(b)(ii) and subregulation 9.12(2) in relation to the consequences of making the request after the filing period has ended.
(3) The request must:
(a)be in an approved form; and
(b)be accompanied by a declaration stating:
(i)the facts and circumstances forming the basis for the grounds; and
(ii) if the period for filing the notice of intention to oppose or the statement of grounds and particulars has ended--the reason why the request was not made within the period.
Note: Regulations 21.6 and 21.7 deal with making and filing declarations.
(4) The request may be made only on either or both of the following grounds:
(a)an error or omission by the person, the person's agent, the Registrar or an employee;
(b)circumstances beyond the control of the person, other than an error or omission by the person, the person's agent, the Registrar or an employee.
Regulation 9.12 provides the Registrar with discretion to grant an extension of time only if satisfied that the grounds set out in the request justify the extension.[2] The grounds being those set out in 9.11(4). If the extension of time request is made after the deadline for filing the NIO, the Registrar must be satisfied that there is sufficient reason for the delay in making the request.[3]
Discussion
[2] Reg 9.12(1).
[3] Reg 9.12(2).
Error or Omission
The phrase "error or omission" is referenced in several sections of the Trade Marks Act 1995 (Cth), including s 224, as well as in corresponding sections of the Patents Act 1990 (Cth). In Kimberly-Clark Ltd v Commissioner of Patents[4], Jenkinson J considered the expression as it appeared in s 160(2) of the Patents Act 1952 (Cth):
the word "error" is not easily assigned a clear meaning restricted by reference to one or several particular categories of flawed mental function. The attempt is likely to lead to the drawing of fine and often unrealistic distinctions. And some errors of judgment by agents and attorneys may be as bizarre and as little to be anticipated as lapses of memory and accidental slips…
By no means every judgment by "the person concerned" or by "his agent or attorney" which can be shown to have been mistaken will answer the description "error or omission" in the ordinary meaning of those words, which in their context carry, in my opinion, a connotation of obviousness in error.[5]
[4] [1988] FCA 697 (Jenkinson J).
[5] Ibid [9]-[10].
The failure to file the NIO is not itself an error or omission.[6] There must be a causal connection between an earlier error or omission and the failure to file the notice of intention to oppose by the deadline. Whilst the burden of establishing a case justifying an extension of time falls to the Removal Opponent,[7] this burden ‘does not amount to a burden of proof and it is not appropriate that it should be described so’.[8]
[6] See: ibid [11].
[7] Vangedal Nielsen v Smith (Commissioner of Patents) (1980 33 ALR 144, 149 (Bowne CJ).
[8] Re Sanyo Electric Co Ltd and Commissioner of Patents [1996] AATA 832, [16] (Deputy President G.L McDonald).
The Removal Opponent submits that the delay, which was only of a single day, was caused by a combination of genuine errors and omissions on behalf of both the Removal Opponent and its solicitors. In support of this submission, the Removal Opponent emphasised:
·The promptness with which the Removal Opponent confirmed its instruction to oppose the Removal Application and apply for an extension of time demonstrates that the Removal Opponent at all times held the intention to ‘get in a position to be able to decide whether to oppose’.
·The Removal Opponent omitted to inform Sparke Helmore Lawyers that two team members with whom Sparke Helmore Lawyers had last been dealing with had resigned. This omission resulted in no one at the Removal Opponent reading Ms Jones’ emails.
·The errors and omissions by Ms Jones further contributed to the deadline being missed. Had any of those errors not occurred, Ms Jones would have taken further steps to ensure instructions were obtained.
The Removal Applicant characterised the Removal Opponent’s error as nothing more than a simple failure to file the NIO on time. The Removal Applicant further submits that the explanation provided by Ms Jones is inadequate and merely discloses the processes by which the deadline was missed, rather than Ms Jones knowledge, beliefs or mental processes concerning the filing of the NIO. The Removal Applicant also notes that there is no information regarding why any representatives other than Ms Jones failed to file the NIO.
In my view, the information provided by the Removal Opponent establishes the existence of an error or omission. The Removal Opponent failed to inform its representatives about two employees' resignations causing it to miss the correspondence regarding the Removal Application and the NIO filing deadline. Ms. Jones compounded the issue by not checking the Outlook reminder and mistakenly thinking the Deadline was 18 September 2024. Ms. Jones did not view the Outlook notification on 7 August 2024, resulting in the deadline passing and Sparke Helmore Lawyers filing the NIO to preserve the Removal Opponent’s position one day later.
Errors or omissions made by legal professionals have been considered in the context of extension of time provisions in a number of decisions. For example, in British Sky Broadcasting Ltd v Skynetglobal Limited [9] an extension of time was granted in circumstances where a solicitor failed to make a diary note to allow for timely filing of the request for an extension of time.[10] In this case, the circumstances surrounding the error or omission are sufficiently explained, and I am satisfied that there is the necessary degree of causation between the errors and omissions and the failure to file the NIO by the Deadline. Furthermore, I am satisfied that the Removal Opponent’s prompt instructions to oppose the Removal Application and file the extension of time request after being made aware of the Removal Application and the Deadline are indicative of an intention to oppose the Removal Application. Accordingly, I am satisfied that but for the errors and omissions that occurred between the Removal Opponent and Ms Jones, the NIO would have been filed by the Deadline. I will now turn to whether there was sufficient reason for the delay in seeking the extension of time.[11]
[9] [2003] ATMO 17 (Delegate Terry Williams).
[10] See also: Genetech Inc v Wellcome Foundation Ltd (1988) 11 IPR 401 (Supervising Examiner JL Roveta).
[11] Reg 9.12(2).
The deadline for filing the extension of time ended on 7 August 2024. The extension of time request was made 2 days later. Regulation 9.12(2) requires that there are sufficient reasons for the delay in making the extension of time request. I am satisfied that there are sufficient reasons for the delay. Given the circumstances outlined above, I am satisfied that the short delay in filing the extension of time request was caused by the same errors and omissions that led to the failure to file the NIO by the deadline, and that the extension of time request was made as soon as practical once the errors had been identified by the Removal Opponent and Sparke Helmore Lawyers.
Discretion
Regulation 9.12(1) provides that the Registrar ‘may’ grant an extension of time. Generally, discretions to grant an extension of time should be applied beneficially.[12] Other factors relevant to the exercise of the Registrar’s discretion include the relative inconvenience to the parties concerned and the public interests.[13]
[12] Chalk v Commissioner for Superannuation (1994) 50 FCR 150, 155 (Davies J).
[13] See: Re Richard Hall [1997] ATMO 69 (Hearing Officer Murray).
The Removal Applicant submits that the discretion to grant the extension of time should not be exercised because the integrity of the Registrar depends on adherence to procedural requirements. I agree that there is significant public interest in the efficient progression of opposition matters before the Registrar. In my view, this efficiency also involves ensuring that an opposition to an application for the removal of a trade mark does not cease simply because the removal opponent was not afforded the opportunity to oppose the application. It is desirable that time periods and procedures imposed by the Regulations are adhered to, but this is balanced against the public interest in ensuring matters are dealt with on their proper merits. This opposition is in its very initial stages and has been subject only to short delay. In my view, the public interest would be served by allowing the opposition to continue, and the Removal Applicant will not be greatly prejudiced by the granting of a 1 month extension of time.
I consider the balance of convenience to favour the Removal Opponent in these circumstances. Should the extension of time be refused, the Removal Opponent would lose their statutory rights in the Trade Mark. Additionally, the removal of the Trade Mark might prompt another trader to use a substantially identical or deceptively similar mark. Given the continuous use claimed by the Removal Opponent, this could result in unnecessary public confusion.
For these reasons I consider that discretion should be exercised in the Removal Opponent’s favour and I am satisfied that the grounds set out in the extension of time request justify the extension of time.
Decision
For the reasons outlined above I grant the request for extension of time of 1 month to file the Notice of Intention to Oppose.
Timothy Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
2 May 2025
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