Rosbert International Pty Ltd as the Trustee for Rosbert International Unit Trust.

[2016] ATMO 35

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1634292(25) - THERMO’S by adventureline- in the name of Rosbert International Pty Ltd as the Trustee for Rosbert International Unit Trust.

Delegate:	Iain Campbell Thompson
Representation:	Applicant: Mr Matt Browne, Managing Director of the Applicant Other: Siobhan Ryan of Counsel instructed by Maria Sun of Davies Collison Cave.
Decision:	2016 ATMO 35 Trade Mark Regulations 1995 – regulation 5.15 – extension of time in which to serve evidence in answer – Applicant has not shown that it made all reasonable efforts or that the process was pursued with due diligence – no exceptional circumstances – application for extension of time refused.

Background

1. In these proceedings under regulation 5.15 of the Trade Mark Regulations 1995 (‘the Regulations’) Rosbert International Pty Ltd as the Trustee for Rosbert International Unit Trust (‘the Applicant’) has applied for an extension of time in which to file Evidence in Answer.  A delegate of the Registrar of Trade Marks (‘the Registrar’) wrote to the Applicant on 18 February 2016 stating her intention to refuse the application for an extension of time.  Subsequently, the Applicant requested to be heard.

2. The hearing was before me as a delegate of the Registrar in Canberra on 19 May 2016.  The Applicant was represented by Mr Matt Browne its General Manager who appeared by teleconference.  As an interested party, the opponent in the substantive matter was represented at the hearing by Siobhan Ryan of Counsel, instructed by Maria Sun of Davies Collison Cave and made representations on behalf of their client.

3. The Applicant informed me prior to the hearing that it also wished to rely on written submissions by its solicitors, Browne & Co of Melbourne.  Ms Ryan gave me a written summary of her representations after the hearing.

Regulation 5.15

1. Regulation 5.15 relevantly provides:

   5.15Extension 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.

Timeline

1. It is convenient to set out a timeline of the various relevant steps which have been taken in these proceedings:

   13 March 2015 - Notice of Intention to Oppose (‘NIO’) filed.

   20 March 2015 – Standard Notice sent to Applicant by IP Australia enclosing NIO advising that the (then) potential opponent had until 13 April 2015 to file its Statement of Grounds and Particulars.

   13 April 2015 – Statement of Grounds and Particulars filed.

   23 April 2015 – Notification of Statement of Grounds and Particulars sent to parties – Applicant is informed that it has one month from the date of the Notification to file a Notice of Intention to Defend.

   20 May 2015 – Notice of Intention to Defend filed by Applicant.

   1 June 2015 – a share in Objective Connect created by IP Australia – invitation to the share sent to the email address previously given by the Applicant.

   1 June 2015 – invitation to the share accepted by Matt Browne of the Applicant.

   3 June 2015 – Notification of Notice of Intention to Defend sent to parties – Applicant is informed that the opponent has three months from the date of the notification to file its Evidence in Support.

   3 September 2015 – Evidence in Support uploaded onto Objective Connect by the opponent.

   3 September 2015 – email generated by Objective Connect to the Applicant’s email address informing the Applicant that Evidence in Support had been uploaded.

   8 September 2015 – Sally Bakowski of Browne & Co, solicitors, phoned IP Australia and talked to ‘Andrew’ who informed Sally Bakowski that the Evidence in Support had not been filed at that date.

   22 October 2015 – Notification of filing of Evidence in Support sent to the Applicant at its address for service.  The three month period for filing Evidence in Answer begins.

   22 January 2016 – Application for extension of time filed by Browne & Co, solicitors.  It is not accompanied by a fee.

   1 February 2016 – Late ‘Evidence in Answer’ filed by the Applicant

   10 February 2016 – a Delegate of the Registrar writes to the Applicant and advises that no fee has been paid and stating:

   You have submitted that the opponent filed the evidence in support 12 days late and “without any prior or formal extension of time”.  With respect, this is incorrect.  The due date for the opponent to file evidence in support was 3 September 2015, as notified in the official letter ‘Acknowledgement of Notice of Intention to Defend’ dated 3 June 2016.  The opponent filed the evidence in support on 3 September 2015, as can be seen next to each file uploaded to the Evidence in Support folder in the Objective Connect share.  The official letter ‘Notification of Filing of Evidence’ dated 22 October 2015 notified you of the correct filing date.

   11 February 2016 – fee for extension of time in which to filed evidence paid by Applicant.

   18 February 2016 – a Delegate of the Registrar writes to the Applicant stating her intention to refuse the application for an extension of time.

   23 February 2016 – written submissions filed by Browne & Co, solicitors.

   22 March 2016 – a Delegate of the Registrar wrote to the Applicant giving reasons why the Applicant’s reasons were insufficient and that extension of time should not be allowed and stating:

   The applicant has until midnight Monday 4 April 2016 to request a hearing in the matter of the extension of time.  A hearing request must be accompanied by the fee of $400.

   If a hearing is not requested within the time allowed, the extension may be refused without further notice.

Reasons

1. As explained in MG Icon LLC v Caprice Australia Pty Ltd[1] by a Delegate of the Registrar:

   New regulation 5.15 [relating to extensions of time for filing evidence] narrows the circumstances in which the Registrar will grant an extension of time to provide evidence. Extension of the evidentiary periods is at the discretion of the Registrar and only where the Registrar is satisfied that the party entitled to file evidence in that period has acted promptly and diligently at all times since the opposition proceedings began, but despite that, or because of some other exceptional circumstances, cannot file the evidence in that period. Once the conditions are met the Registrar has the discretion to consider whether or not it is appropriate that an extension of time be granted.

   [1] [2014] ATMO 34

2. The Delegate referred to the decision in Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd (‘TRED’)[2] and continued:

   [I] need to ask myself the following questions:

   1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?

   2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?

   3. Were there exceptional circumstances that warrant the extension?

   I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.

   [2] [2013] APO 57 (11 November 2013), at [34]-[35].

3. I note at the beginning of my discussions of the written submissions of Browne & Co (and the oral submissions of the Applicant at the hearing) that the Applicant has not put in a detailed time-line of the steps that it took to prepare the evidence, it is thus impossible to ascertain whether the Applicant has acted promptly and diligently at all times.

4. Rather, it is submitted that the Applicant did not receive various pieces of official correspondence from IP Australia.

5. A part of the Applicant’s problems lies in the answer to the complaint from Browne & Co, solicitors:

   There appears to be further confusion as a result of Browne & Co Solicitors and Consultants Pty Ltd not appearing to be the lawyers on record acting for Rosbert. We have now ascertained that emails and notifications have been forwarded by IP Australia direct to Rosbert (and continue to be, including your recent letters of 10 February and 15 February 2016).

6. On 10 February 2016, 22 March 2016, and 29 April 2016 delegates of the Registrar have written to the Applicant or Browne & Co advising that if they wish to have Browne & Co entered as the address for service of correspondence in this matter, either the Applicant or Browne & Co should make formal application to have Browne & Co recorded as the address for service.  No such application was received by the Registrar.[3].  It is not clear from the official record when Browne & Co started acting for the Applicant.

   [3] I note that after the hearing the Registrar received a request dated 3 June 2016 that Frenkel Partners be entered as the address for service.

7. Thus it would seem what has occurred is that official correspondence has been sent to the Applicant rather than to its legal representatives.  The legal representatives have attempted to ascertain the timeframes from the Trade Mark History screen on ATMOSS while the Registrar has sent official correspondence advising such timeframes to the business address of Applicant.

8. With that background in mind, the submissions of Browne & Co show that the Applicant and it legal representatives may have believed that the timeframes for a response such as Notice of Intention to Defend, Evidence in Support, Evidence in Answer and so forth are triggered by an action by the other party rather than by notifications by the Registrar.

9. However, information on the conduct of oppositions and the procedures involved are available on the IP Australia website; and, the Regulations (to which the IP Australia website provides hyperlinks) which mandate the process are explicit and readily comprehended.  For example, the IP Australia website advises:

   Stage two: evidence in answer - applicant

   Once the Applicant has been notified of the evidence in support, they will have three months to submit evidence in answer. This is evidence which can be in response to the evidence in support filed by the [o]pponent and/or in response to the opposition in general.

   In the case of an opposition to registration, if the opponent has not filed any evidence in support, the applicant will be given the opportunity to file evidence in answer to the opponent’s statement of grounds and particulars within three months of being notified that no evidence in support has been filed.

   A statement of grounds and particulars is filed with a notice of intention to oppose and basically sets out what the reasons for the opposition are prior to the evidence stages.

10. The IP Australia website also provides a user guide for Objective Connect.

11. Browne & Co submits:

    Upon accessing IP Australia’s website and reviewing the trademark history in light of your letter of 10 February 2016 (copy history attached), it is now apparent that the Notice of Intention to Defend was updated on your website to read a later date of 1 June 2016.[4]

    [4] Here the solicitors refer to a print-out of the Trade Mark History page in ATMOSS.

12. However, the three month timeframe for submitting Evidence in Answer is set by the notification from the Registrar and not by the ATMOSS record.  The submission continues:

    Further, [the Applicant] did not receive the official letter ‘Acknowledgement of Notice of Intention to Defend’ dated 3 June 2015 or the ‘Notification of Filing of Evidence’ dated 22 October 2015, [the Applicant] therefore submits it was reasonable for us [the solicitors] and [the Applicant] to assume, absent receiving the said Acknowledgment of 3 June 2015, that the due date for the opponent’s evidence was 22 August 2015 or thereabouts.

13. I again note that none of the official correspondence sent to the Applicant’s address for service has been returned to sender.  Other correspondence sent to the address for service has apparently reached it.  The Applicant was also sent an email from Objective Connect stating that the Evidence in Support had been uploaded. 

14. Browne & Co’s submissions continue:

    We also checked the status of the matter by our Sally Bakowski telephoning IP Australia on 8 September 2015 and speaking to ‘Andrew’. Andrew advised the opponent’s evidence was due but had not been filed to that date. He also advised that [the] opponent can ask for an extension and we would be notified either way. We contacted [the Applicant] on 8 September 2015 and advised [the Applicant] accordingly. It is only now apparent that the opponent’s evidence had been filed prior to 8 September, but not uploaded onto the IP website by that date.

15. However, this again reflects on the Applicant’s failure (and that of its legal representatives) to properly inform themselves of the opposition process and to apply to have the legal representatives entered as the address for service of official correspondence.  Additionally, as I have discussed, an email advising that Evidence in Support had been uploaded onto Objective Connect had been sent to the email address given by the Applicant for the process.  It will be recalled that an invitation to the share on Objective Connect (by email) sent to the same email address was accepted by Matt Browne of the Applicant on 1 June 2015.  The subsequent notification to the Applicant on 22 October 2015 (after the 8 September 2015 conversation with ‘Andrew’) of the filing of the Evidence in Support should have alerted the Applicant to the start of the three month period in which to prepare its evidence in answer.

16. Browne & Co submits:

    Sally Bakowski of our office then telephoned IP Australia on 23 November 2015 to check the status, and spoke to ‘Scott’. Scott advised us that a notice was sent to [the Applicant] on 22 October 2015 and that it should register on their website on Objective Connect to obtain further information. We subsequently contacted [the Applicant] and checked the IP Australia website and ascertained that the opposition correspondence and a declaration was filed on 3 September 2015 and that evidence in answer was due on 22 January 2016. Hence, we and [the Applicant] were both unaware of the opponent’s material had been filed and lodged until 23 November 2015, leaving [the Applicant] with less than 2 months (including the Christmas vacation period) to consider, and prepare evidence in response.

17. However, by 3 September 2015 the Applicant had been sent an email (dated 3 September 2015) from Objective Connect stating that the Evidence in Support had been uploaded; it had also been sent a notification by the Registrar dated 22 October 2015 that the Evidence in Support had been filed.

18. Browne and Co’s submissions (and the Applicant’s oral submissions) also address the headings, ‘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’, and, ‘What is the balance of convenience for the parties if the information is considered’.  However, these factors do not go to considerations under regulation 5.15.  What I am to consider is the three questions set out at paragraph [7], above:

    1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?

    2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is filed in time?

    3. Were there exceptional circumstances that warrant the extension?

19. The answer to each of these questions appears to me to be either ‘no’ or ‘there is insufficient information provided by the Applicant on which to base a decision to allow the application for the extension’.  Both the Applicant and its solicitors appear to have failed to inform themselves of the relevant filing requirements and process.  The Applicant and/or the solicitors did not apply to the Registrar for the solicitors to be entered as the Applicant’s address for service.  Notifications from the Registrar and an email from Objective Connect have not been acted upon: it is possible that the Applicant believed that the solicitors were also receiving the notifications or the email and that the notifications and email sent to the Applicant could therefore be disregarded.  However, the solicitors did not receive the notifications or the emails as they had not applied to be entered as the address for service for correspondence.  Further, the Applicant and its solicitors have not provided any details (as in a timeline) of the steps that they undertook to prepare the evidence and it is not possible on this basis to ascertain whether the efforts that they took were reasonable or if they acted promptly and diligently.

20. It is not appropriate under these circumstances that the Registrar allows the application for extension of time.  I therefore refuse it.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
10 June 2016