Segator Pty Ltd v FKS Australia Pty Ltd
[2019] ATMO 126
•21 August 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Segator Pty Ltd to registration of trade mark application number 1849584 (class 30) – PAGOTO GELATO & WAFFLE HOUSE and device - in the name of FKS Australia Pty Ltd.
– and –
Application by FKS Australia Pty Ltd for an extension of time to file evidence in answer
Delegate: | Aaron Walters |
Representation: | Opponent: Victor Ng of Cooper Mills Lawyers. Applicant: Morris Averill for Minas & Associates. |
Decision: | 2019 ATMO 126 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 – extension refused - request to admit late filed evidence under regulation 21.19 – request refused. |
Background
Registration of trade mark application number 1849584 in the name of FKS Australia Pty Ltd (‘the Applicant’) has been opposed by Segator Pty Ltd (‘the Opponent’). The evidence stages commenced with the Applicant filing its Notice of Intention to Defend on 28 June 2018 and on 3 October 2018 the Opponent filed its completed evidence in support.
Regulation 5.14(4) of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’), provides that the Applicant must file its evidence in answer within three months of being provided and notified, by the Registrar, of the Opponent’s filed and completed evidence in support. Accordingly, the Applicant was required to file its evidence in answer by 11 January 2019.
On 11 January 2019, the Applicant sought an extension of time (‘EOT’) of one month within which to file its evidence in answer. The EOT was accompanied by a declaration in support (‘the first EOT declaration’). A further declaration was filed annexing a “certified translation of the word “pagoto” from the Etymological Dictionary of Modern Greek”, with the translation having been undertaken by the “Translation Service of the Greek Ministry of Foreign Affairs” (‘the Translation declaration’).
A delegate of the Registrar wrote to the Applicant on 24 January 2019 intending to refuse the EOT and a copy of the delegate’s letter, as well as the EOT, were sent to the Opponent at the same time. On 7 February 2019, the Applicant responded with a declaration supplementing the EOT (‘the second EOT declaration’) and filed its completed evidence in answer, being the declaration made on 23 January 2019 by Constantin Skouras as director of the Applicant (the Skouras Declaration’). The Skouras Declaration included attachments marked “A” to “D” with attachment “C” being a declaration made on 23 January 2018 by Costa Potiris, an accredited Greek translator, and attachment “D” being a statutory declaration made 22 January 2019 by Nektaria Theodossiou. The delegate of the Registrar again responded, expressing an intention to refuse, though gave the Applicant a window of time in which to seek a hearing. The second EOT declaration and the delegate’s letter were again forwarded to the Opponent.
On 25 February 2019, the Opponent sought to be heard in relation to the EOT and the matter was scheduled for 20 May 2019. I wrote to the parties on 11 April informing the Applicant that it could elect to attend the upcoming hearing and directed that each of the parties provide an outline of its submissions on the EOT in the lead up to the hearing.
The Opponent elected to attend the hearing and I received written submissions, in line with my directions, from the Applicant on 6 May 2019 (‘the Applicant’s 6 May submissions’) and from the Opponent on 13 May 2019 (‘the Opponent’s 13 May submissions’). In attendance at the hearing was Dr Morris Averill, appearing as a consultant to Minas & Associates on behalf of the Applicant, while Mr Victor Ng of Cooper Mills Lawyers appeared on behalf of the Opponent.
At the commencement of the hearing, it came to light Dr Averill had prepared his own written submissions to be relied on. These were in addition to Applicant’s 6 May submissions and had not been made available to myself or the Opponent prior to the hearing. I allowed Dr Averill to make his submissions orally, though I directed that a copy of the submissions would be provided before close of business. Dr Averill’s submissions contained substantial new detail and introduced a new matter of issue estoppel. Accordingly, I directed Mr Ng would be given one week from the day of the hearing to provide comment on the additional material raised. Both parties complied with these directions (respectively, ‘the Applicant’s 20 May submissions’ and ‘the Opponent’s 27 May submissions’).
Discussion
The Applicant seeks an EOT under reg 5.15 of the Regulations to extend the period in which to file its evidence in answer, being the Skouras Declaration. Should the EOT be refused, the Applicant refers to Fed Square Pty Ltd v Federation IP Pty Ltd[1] (‘Fed Square’) as authority for exercising the Registrar’s discretion, under reg 21.19 of the Regulations, to admit the late filed Skouras Declaration. Lastly, during the hearing, the Applicant raised a matter of issue estoppel arising from the Opponent’s written submissions, in which the Opponent allegedly refers to a previous decision of the Registrar as a finding of fact. I shall address these matters in a similar order.
[1] [2015] ATMO 42.
The EOT under reg 5.15
Regulation 5.15 is reproduced in full below:
(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.
Two alternative grounds are provided under sub-reg 5.15(2) and I must be satisfied at least one has been established before granting an extension of time. Though, neither the Applicant’s 6 May submissions nor 20 May submissions press the existence of exceptional circumstances, I will primarily focus on the ground under reg 5.15(2)(a) of the Regulations.
Reg 5.15(2)(a) – Reasonable, prompt and diligent
Regulation 5.15(2)(a) sets out two requirements. These are that a party “has made all reasonable efforts to comply with all relevant filing requirements in this part” and “despite acting promptly and diligently at all times to ensure the filing of the evidence within the period, is unable to do so.” In Julie-Anne McCarthy and Bradley McCarthy v TRED Design Pty Ltd (‘TRED Design’), a Delegate for the Commissioner of Patents relevantly explained of identical requirements under the Patent Regulations 1991 (Cth):
While the two legs are similar, the "reasonable" leg relates to "all relevant filing requirements", whereas the "promptly and diligently" leg relates to the period for filing "the appropriate evidence". Reasonableness appears to relate to conduct over the whole of the opposition, and not just the current evidence stage. I would expect that often where a person has acted reasonably, they will also have acted promptly and diligently (an exception might be where a person was diligently preparing evidence that was unnecessary for the opposition). The question posed by the regulation is whether the person seeking the extension satisfies each leg of the test. Where they fail to satisfy one of the legs, then an extension will not be available (in the absence of exceptional circumstances).[2]
[2] [2013] APO 57, [28].
I must consider the Applicant’s conduct over the course of the whole opposition. The Applicant’s 6 May submissions point to the fact that it attended to partial compliance by submitting its first evidence installment on 11 January 2019. This, it asserts, is “not a case where the Applicant has displayed no activity whatsoever in relation to complying with its filing requirements." It is true that the Applicant has made reasonable effort to file its notice of intention to defend in a timely manner and has filed the Translation Declaration. However, I would note the Delegate’s comments in Davley Building Pty Ltd t/a GrannyflatsWA.com v Granny Flats Australia Pty Ltd (‘Grannyflats’):
… the sole “filing requirement” (prior to filing its EIA) with which the Applicant had to comply was to file formal Notices of Intention to Defend the oppositions within one month of receiving the Opponent’s Statements of Grounds and Particulars. This it did … some two weeks before the deadline. Accordingly as far as reg. 5.15(2)(a)(i) of the TM Regulations is concerned, I need in principle only consider the reasonableness of the Applicant’s (obviously unsuccessful) actions directed at filing its EIA before the expiry of the initial three month statutory period. However… this question effectively merges into the “more specific requirement” imposed by reg. 5.15(2)(a)(ii), namely whether the failure to file the evidence in time was “despite acting promptly and diligently at all times.” If the Applicant has so acted “at all times” then… “it will necessarily have also made all reasonable efforts to comply” with all relevant filing requirements as required by reg. 5.15(2)(a)(i).[3]
[3] [2015] ATMO 105, [17]. (citations omitted)
To determine then whether the Applicant has acted promptly and diligently at all times involves an analysis of the chronology of events during the period between 11 October 2018 and 11 January 2019 (‘the relevant period’).[4] In so analyzing, it is not necessary for every minute of every day to be accounted for, though enough information should be provided to enable me to form an opinion on whether the Applicant “has acted reasonably, promptly and diligently.”[5] The Delegate in TRED Design gave as an example (at [22]):
The kind of information that could be provided is a brief account of actions taken (for instance, an outline of what was done, when it was done, how it was done, by whom it was done, as appropriate to the case) covering the period in question.
[4] Fed Square, [22].
[5] TRED Design, [76].
Returning then, I find it useful to start with the first EOT declaration in which the Applicant declares it had not been able to access the Opponent’s Statement of Grounds and Particulars (‘SGP’) filed on 11 December 2018 in relation to a separate dispute between the parties. The Applicant asserted that this other SGP was relevant to the preparation of evidence for the current opposition. Relevantly, the Applicant sought the EOT to:
… review the [SGP] and amend and finalize evidence prepared in relation to TM 1849584. [Emphasis added]
Notwithstanding the limited adequacy of such a reason for an EOT, the above quoted statement indicates the Applicant as having prepared evidence in relation to this opposition which is in an almost completed state, requiring only amendment and finalization. Noting that evidence is often filed as it becomes ready,[6] I find it telling, particularly in light of there being five nominated grounds of opposition to address, that the Applicant chose to file only the Translation Declaration on the day of the statutory deadline, while the remainder of its evidence was filed sometime after on 7 February 2019. The reasons for the delay are further detail in the second EOT declaration, reproduced below:
2. In the declaration of Kathy Koulax, dated 3 October 2018, the Opponent asserted that the correct translation of the Greek word PAGOTO, which is used in the device mark, is ICECREAM. The Opponent has also based its opposition to the registration of the device mark on section 62(b) Trade Marks Act and the Opponent has asserted that the Applicant has accepted that the correct translation Greek word PAGOTO is ICECREAM. The applicant needs further time in which to obtain a declaration from a certified translator from the Greek language to the English language as to the appropriate translation of the Greek word PAGOTO in order to answer the assertions of the Opponent.
3. The Applicant has obtained a certified translation of an extract from the "Etymological Dictionary of Modern Greek" as to the meaning of PAGOTO and the Applicant needs further time to obtain a declaration from a Greek-Australian translator, as to the literal meaning of PAGOTO as being "congealed" as indicating a frozen dessert, which can be made from cream and milk or be milk free. The Applicant was delayed in obtaining the further declaration by:
3.1 the Christmas and New Year break from 21 December 2018 - 14 January
3.2 the relocation of my office from Suite 7 1 Clarke St Earlwood NSW 2206 to:
Suite 62 3-7 Fetherstone St Bankstown NSW 2200 during the period 10 January 2019 - 21 January 2018.
4. A declaration was obtained from Costa Potiris, a Greek-Australian translator, on 23 January 2019, which has been filed with IP Australia, together with the declaration from Constantine Skouras, dated 23 January, 2019, which addressed the matters raised in the declaration of Kathy Koulax, dated 3 October 2018.
5. In the declaration of Kathy Koulax, dated 3 October 2018, the Opponent asserted use of the business name Pagoto at various locations. The applicant needs further time in which to obtain updated evidence as to whether the Opponent actually operates under the name Pagoto at any of its advertised locations in the State of NSW and State of Victoria on the Opponent's website. Declarations were obtained from Constantin Skouras dated 23 January 2019 and Nektaria Theodosiou dated 22 January 2019.
[6] Trek Bicycle Corporation v Red Hawk Holdings Pty Ltd [2019] ATMO 88, [24].
The Applicant’s 20 May submissions identify the primary nature of the evidence in the Skouras Declaration as being the translation of PAGOTO from Greek to English. The Applicant relies on Grannyflats and contends the inquiry under reg 5.15 “should consider the nature of the evidence being sought and the context in which that evidence is being sought in relation to the translation of the Greek word PAGOTO into the English language.” However, the Applicant does not go further to explain how this should bear on the present matter. Without more, I agree with the Opponent that the procuring of translation evidence for a single Greek word, in Australia, would not ordinarily be a difficult or time-consuming endeavor.
This is particularly so given the Applicant’s reasons for delay are such that it could reasonably have been anticipated and planned for well in advance. The Applicant has instead remained silent on its actions leading up to 21 December 2018. This is approximately two months out of the relevant period unaccounted for. Without which and noting the inadequacies of what has been put forward, I am not satisfied that the Applicant has acted promptly and diligently at all times. Therefore, the ground for granting the EOT found in reg 5.15(2)(a) has not been established.
Discretion under reg 21.19 – Public Interest
Regulation 21.19 of the Regulations provides:
(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.
Specifically, the present matter is not so much concerned with the giving of certain information not yet known to a party, nor subsequently providing an opportunity to make representations on that information. Rather, as a matter of procedural fairness, I am being asked to exercise a broad discretion to allow the same evidence under reg 21.19 that has earlier failed the EOT requirements.
Both regs 5.15 and 21.19 concern an exercise of the Registrar’s discretion, with the respective considerations for exercising that discretion occupying separate, though parallel, channels. To elaborate, considerations under reg 5.15 turn upon the requesting party demonstrating that, despite having acted reasonably, promptly and diligently, they have been unable to comply with the filing deadlines (reg 5.15(2)(a)), or some exceptional circumstance justifies an extension (reg 5.15(2)(b)).
On the other hand, the considerations under reg 21.19 place an obligation of procedural fairness on the Registrar who may, in the context of hearing proceedings before her, exercise “some latitude as to what matters she may take into account in reaching decisions.”[7] The statutory basis for this discretion is found in reg 21.15(4) of the Regulations,[8] which provides that the Registrar is not bound by the rules of evidence and may be informed on any matter she reasonably believes appropriate. Guidelines are published by the Registrar to assist,[9] though the Applicant has neglected to address them directly. Nevertheless, the relevant points to consider are whether, on balancing the public interest and the convenience to the parties, the probative value of the information is such as to permit the late filed Skouras Declaration.
[7] Horizons (Asia) Pty Ltd v Enagic Australia Pty Ltd and Enagic Co., Ltd [2016] ATMO 26, [22].
[8] Trek Bicycle Corporation v Red Hawk Holdings Pty Ltd [2019] ATMO 88, [37].
[9] Trade Marks Office Manual of Practice & Procedure, Part 51.2.6.
At first pass, the parallels may not appear obvious. However, I would note the Delegate in Fed Square aptly cautions (at [55]):
The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account.
The Delegate’s caution in Fed Square is salient on two fronts. The first of which makes clear the implications of evidence not being filed should inform decisions regarding the preparation of evidence. The Delegate in TWG Tea Company Pte Ltd v Tsit Wing International Company Limited similarly cautioned that “[t]here remains an indisputable onus upon a party submitting evidence to exercise careful oversight of that process at all times.”[10] Taken together, these comments indicate that a party which exercises careful oversight of the process at all times and appreciates the implications of evidence not being filed, would similarly be regarded as having acted reasonably, promptly and diligently under reg 5.15(2)(a).
[10] [2105] ATMO 64, [46]. [Emphasis added]
This is not to suggest that the Applicant, having failed the requirements under reg 5.15(2)(a), is then immediately denied the discretion to have its evidence considered. Indeed, the Delegate’s second salient point identifies the need for further circumstances which make it reasonable for the evidence to be considered. However, noting the parallels mentioned, I see no reason why the specific circumstances which saw the Applicant fail under reg 5.15(2)(a) should not also weigh heavily when balancing whether to exercise the discretion and allow its late filed evidence.
This is particularly true when the further circumstances put forward by the Applicant relate to public interest considerations. The Applicant’s 6 May submissions assert that, as the evidence contained in the Skouras Declaration goes to the substantive grounds of the opposition and may significantly affect its outcome, it is in the public interest for the opposition to be heard on its merits and that this outweighs the inconvenience to the Opponent, as well as the danger of circumventing the conventional evidence process. The Applicant’s 20 May Submissions expand by quoting extensively from Fed Square and similarly assert the whole of the Skouras Declaration is relevant evidence, with the translation of PAGOTO being of prime importance to the ground under s 62(b) of the Act. The Applicant claims that its import satisfies the public interest requirement, and the discretion should be exercised under reg 21.19 to allow the whole of the Skouras Declaration into evidence. Not doing so, it contends, would be at odds with the broader purpose of the relevant ‘Raising the Bar’ amendments, which were to “reduce delays in the resolution of patent and trade marks applications” and to “streamline the opposition process.”[11]
[11] Fed Square, [44].
I do not agree with the Applicant’s submissions. For the sake of clarity, the Skouras Declaration is not limited to evidence adduced in relation to the ground under s 62(b) but contains many unsupported statements on the cogency of the Opponent’s evidence for each of the nominated grounds of opposition. The Applicant has not offered me a reason for why these unsupported statements are crucial to the substantive opposition, nor for that matter, why they could not have been provided earlier. Instead, the Applicant’s argument is based primarily on the relevance of evidence to a single ground of opposition. Even if the argument was successful, four other grounds would remain. Its probity is further limited by the Applicant’s own submissions being that it may affect the outcome. I reiterate that “it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it.”[12]
[12] Fed Square, [55].
It follows that I do not consider that the probative value of the Skouras Declaration is such that it should be allowed in as a matter of public interest. As alluded to earlier, the specific circumstances which saw the Applicant fail under reg 5.15(2)(a) add weight to this finding. The Applicant’s 6 May submissions incorrectly contend the Skouras Declaration was filed 12 days after the statutory deadline and suggests this may be described as a short period of time. However, I do not find the public interest is served by permitting in late filed evidence where the Applicant has not adequately demonstrated its probative value, nor offered cogent reasons for why the filing occurred after the deadline.
Discretion under reg 21.19 – Issue Estoppel
The Applicant’s 20 May submissions refer to specific comments contained in the Opponent’s 13 May submissions, which state:
Insofar as it contains evidence that the Greek word ‘PAGOTO’, means ‘congealed ice’ and not ‘ice cream’, the same evidence was squarely rejected by the Delegate in the Earlier Pagoto Decision.
The Earlier Pagoto Decision is in reference to an unpublished decision on the written record, issued in 2016, in which the Opponent successfully opposed the Applicant’s trade mark application 1660252 under s 41 of the Act. In summary, the Applicant argues there is no issue estoppel arising from this earlier decision as the Skouras Declaration contains evidence pertinent to the ground of opposition under s 62(b), not s 41 of the Act. The Applicant further suggests there could be some rational and simple explanation for why the current application claims PAGOTO means “congealed ice” rather than “ice cream”, which could negate the Opponent’s objection under s 62(b) of the Act.[13] Thus, the Skouras Declaration cannot be estopped, and its probative value goes to providing new material not considered in Application 1660252, which is necessary to discuss in order to determine the ground under s 62(b).
[13] Bon Levi v Levi Strauss and Co [1999] ATMO 13.
I would first state that the Opponent has not claimed the Applicant is estopped from providing its evidence or from registering the current trade mark. However, and in any event, the question to be borne in mind here is whether it is appropriate for the Registrar to exercise her discretion and admit the late filed Skouras Declaration. I have discussed the considerations to apply above and it remains incumbent upon the Applicant to demonstrate why the evidence is crucial to the outcome of the opposition. In this regard, the Applicant merely suggests the evidence is relevant as it could provide an explanation or rationale which could negate the Opponent’s ground under s 62(b). As mentioned, considering all the circumstances, this is not adequate to justify exercising the discretion.
Decision
For the reasons given, I refuse to grant the EOT and decline to exercise any discretion to admit the late filed evidence into the substantive opposition of trade mark 1849584.
Costs
In the event of success, the Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Aaron Walters
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
19 September 2019