Rotary International v Interact Australia (Victoria) Ltd
[2015] ATMO 44
•2 June 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Rotary International to registration of trade mark application 1400247 - INTERACT - in the name of Interact Australia (Victoria) Ltd
And
Application by Rotary International for an extension of time to file evidence in support
Delegate: | Deirdre O'Brien |
Representation: | Hearing by written submission |
Decision: | 2015 ATMO 44 Regulation 5.15: application for extension of time to file evidence in support – settlement negotiations not exceptional circumstances – application refused. |
Background
Interact Australia (Victoria) Ltd (‘the applicant’) seeks registration under the Trade Marks Act 1995 of the trade mark below:
Rotary International (‘the opponent’) opposes registration. It filed a notice of intention to oppose on 9 July 2013 followed by a statement of grounds and particulars on 8 August 2013.
On 21 August 2013 the parties requested a cooling off period as allowed by r 5.16 of the Trade Marks Regulations 1995 (‘the Regulations’), reproduced below:
Registrar may allow cooling-off period
(1) This regulation applies to an opposition if:
(a) the notice of opposition has been filed; and
(b) the Registrar has not made a decision on the opposition under subsection 55(1) of the Act; and
(c) the opposition has not been dismissed under section 222 of the Act or regulation 5.8.
(2) If the Registrar is satisfied that the parties agree to a cooling-off period, the Registrar must allow a cooling-off period of 6 months.
(3) The Registrar must extend the cooling-off period for 6 months if, before the end of the period, the Registrar is satisfied that the parties agree to the extension.
(4) The Registrar must not:
(a) further extend the cooling-off period; or
(b) allow more than one cooling-off period for an opposition.
(5) If a party files a notice, in an approved form, requesting the Registrar to discontinue the cooling-off period, the Registrar must do so.
(6) The Registrar may direct the parties on steps the parties must take:
(a) if the cooling-off period is discontinued; or
(b) otherwise--when the cooling-off period ends.
(7) The opposition resumes:
(a) if the cooling-off period is discontinued; or
(b) otherwise--when the cooling-off period ends.
(8) If:
(a) the cooling-off period begins during the period mentioned in regulation 5.13 or an evidentiary period mentioned in regulation 5.14; and
(b) the opposition resumes;
the period mentioned in regulation 5.13 or 5.14 restarts when the opposition resumes.
The initial cooling-off period was extended. The extended period ended on 21 August 2014 and on that day the applicant filed a notice of intention to defend. The opponent was advised by official notice that it had until 1 December 2014 (‘the due date’) in which to file its evidence in support of the opposition.
On the due date the opponent applied for an extension of time pursuant to r 5.15 which 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.
The application is for a two month extension until 1 February 2015. The reasons for the extension are as follows:
The parties are involved in amicable settlement negotiations. The terms of a coexistence agreement have largely been agreed in principle, but more time is needed to finalise some remaining terms. It is submitted that this is an exceptional circumstance warranting the exercise of the discretion under Regulation 5.15(2). It is envisaged the matter will be finalised within the extended period, which would result in withdrawal of the opposition.
The applicant provided its consent to the extension.
The grant of an extension is discretionary and the Registrar’s delegate advised both parties that she did not intend to extend the period as she was not satisfied either of r 5.15(2)(a) or r 5.15(2)(b) had been made out. Submissions by the opponent did not persuade the delegate and she gave it an opportunity to request a hearing in relation to the intended refusal. The opponent asked for a hearing by written submission.
I am the Registrar’s delegate who is to hear and decide the matter. In the interests of procedural fairness I gave the applicant an opportunity to participate in the hearing but it did not respond.
Discussion
The opponent’s submissions were made on its behalf by its legal representative in Australia. According to the submissions, at the date on which the extension request was made the parties were negotiating a coexistence agreement, the terms of which were nearly finalized. The representative had received a response from the applicant’s attorneys on 30 November 2014 in relation to the remaining terms and was seeking instructions from the opponent’s overseas attorneys.
The submissions continue:
• The present matter can be distinguished from the circumstances under the old Regulation that the new Regulation was designed to avoid, namely repetitious extension requests on the basis of negotiations between the parties, particularly in situations in which the parties were negotiating the terms of a coexistence.
• The distinction is critical. In this case, the parties have reached an in principle agreement. There is no other mechanism under which the parties can finalise the agreement without needing to file evidence.
• We submit that the extension request should be allowed. Ultimately the breadth given to the meaning of ‘exceptional circumstances’ and its application in a particular case is one of absolute discretion on the part of the decision-maker.
In relation to the last point the opponent cites the following passage from TRED Design Pty Ltd v McCarthy as authority for the inclusive nature of the definition of exceptional circumstances:
The matters that are specified as exceptional circumstances are circumstances beyond the control of a party, an error or omission by the commissioner, an order of a court and directions by the commissioner. These matters give some guide to the other situations that would be regarded as exceptional circumstances: matters outside the normal evidentiary process, and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence.[1]
[1] (2014) 105 IPR 291, 303 [64]
The opponent submits that the Registrar is not limited to the items listed in r 5.15(4). I agree with the opponent on this point. I also consider that the conduct of negotiations is a matter outside the normal evidentiary process and to some extent outside the control of the opponent. However that, by itself, does not establish exceptional circumstances. The following circumstances outside the normal evidentiary process and outside the control of the extension applicant have been held not to be exceptional: changes to relevant legislation[2]; sale of the business[3]; other litigation[4]; sporting events[5]; Christmas holiday period[6]. Extreme weather conditions forcing business shutdown by the extension applicant or its attorney may constitute exceptional circumstances provided the Registrar is satisfied that those conditions occurred during the statutory period for the filing of evidence.[7]
[2] Caprice Australia Pty Ltd v MG Icon LLC (2014) 106 IPR 552, 558 [30]
[3] Ibid [32].
[4] Monster Energy Company v USA Nutraceuticals Group Inc (2015) 111 IPR 204, 212 [33]
[5] Sportingbet Australia v Tabcorp International Pty Ltd (2014) 107 IPR 161, 175 [68].
[6] Cantarella Bros Pty Ltd v Nestec S A (2015) 112 IPR 172, 179 [29]
[7] Monster Energy Company v USA Nutraceuticals Group Inc (2015) 111 IPR 204 213 [35]
As noted in the opponent’s submissions, the Regulations governing the grant of an extension of time have changed. Pursuant to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) the circumstances in which the Registrar may extend the time to file evidence have been limited. On the other hand r 5.16 now provides for a cooling-off period of up to one year. According to the Explanatory Statement the cooling-off period is to facilitate negotiations between parties during opposition proceedings.
Often, a dispute about an opposed trade mark application may be resolved by a negotiated settlement between the parties. Negotiated settlements of oppositions can result in a more expeditious resolution of proceedings, and can save parties from being put to unnecessary expense preparing evidence for an adversarial opposition.
The current trade mark opposition procedures facilitate negotiations by permitting an extension of time to lodge a notice of opposition while the parties conduct genuine negotiations or extension of other time periods, or the issue of appropriate directions, during the opposition to facilitate negotiations. However, there are problems with these mechanisms, including where there is an extension of time to lodge a notice of opposition, as the status of the trade mark registration may be unclear for some period. This is not in the public interest. Other extension of time provisions are not well suited to facilitating negotiations, and negotiations may be interrupted by one or other of the parties requiring repeated extensions.
The removal of grounds for seeking extensions of time for notice of opposition to registration and the new test for extending evidentiary periods will prevent the use of extension provisions to facilitate negotiations.
[emphasis added]
Thus the purpose of r 5.15 is not to facilitate settlement negotiations and there is no legal basis for the Registrar to grant an extension for that purpose. As to whether the settlement negotiations are an exceptional circumstance which justifies the delay in the opponent filing its evidence, the opponent’s submissions make no mention about the opponent’s progress, if any, in preparing its evidence. Indeed, it appears from its submissions that the opponent wishes to avoid the need to file evidence.
Decision
I find that the conduct of settlement negotiations is not an exceptional circumstance that justifies the extension and I refuse the opponent’s application for an extension of time.
Deirdre O'Brien
Hearing Officer
Trade Marks Hearings
02 June 2015
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