Skinfix Pty Ltd v Skinfix Inc

[2023] ATMO 32

TRADE MARKS ACT 1995

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

Re:Request by Skinfix Pty Ltd for an extension of time to file evidence in support in the opposition by Skinfix Pty Ltd to registration of trade mark application number 2174299 (classes 3, 5, 35) – SKIN FIX DERM (Fancy) – in the name of Skinfix Inc.

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Brett Doyle of Clayton Utz
Decision:	2023 ATMO 32 Application under regulation 5.15 of the Trade Marks Regulations 1995 (Cth) for an extension of time to file evidence in support – grounds for extension of time under regulation 5.15(a) and (b) considered – no grounds established – application for extension of time refused

Background

1. This decision concerns an application made by Skinfix Pty Ltd (‘Opponent’) for an Extension of Time (‘EOT’) to file Evidence in Support (‘EIS’) in support the opposition to registration of the mark which is the subject of Australian trade mark application 2174299.

Application Number:

2174299  

Filing Date:

28 April 2021

Goods and Services:

Class 3: Cosmetics (non-medicated) including skin care preparations and exfoliating preparations for skin; skin sprays; skin scrubs; skin mists; wipes and cloths impregnated with a skin cleanser; anti-wrinkle creams; skin cleansers; skin serums; facial masks; skin masks; skin gels; skin moisturizers; skin creams; skin lotions; skin washes; body masks; skin toners; skin peels; hair care preparations; cosmetics; fragrances

Class 5: Medicated cosmetics and skin care preparations, medicated skin ointments, medicated skin balms, medicated skin moisturizers, medicated skin creams, medicated skin lotions, medicated skin sprays, medicated skin washes, medicated skin cleansers, medicated skin scrubs, medicated skin mists, medicated skin serums, medicated skin gels, medicated skin toners, medicated skin peels, and medicated wipes and cloths impregnated with a skin cleanser for the treatment of: eczema, dermatitis, diaper rash, skin chafing, cracked skin, skin redness, skin inflammation, skin rashes, skin dryness, skin puffiness, skin scaling, skin flaking, skin itching, keratosis pilaris, laser treatment irritation, insect bites, irritation from poison ivy, poison oak & poison sumac, minor cuts, scrapes, burns, skin infection, chapped skin, acne and for the healing of tattoo treatments; medicated hair care preparations including medicated preparations for treatment of dandruff, seborrheic dermatitis, scalp flaking, dermatitis, scalp psoriasis, and itchy scalp

Class 35:  Sale of goods by any means including online sales of skincare preparations for human use, including wipes and towelettes for skin care; sales including online sales of carrying bags and cases including for cosmetics and for baby care items, caps, slippers and gloves including such goods for use in relation to skin care preparations or the treatment of skin conditions

Trade Mark:

(‘Trade Mark’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Regulation 5.14 of the Regulations provided that EIS was to be filed by the Opponent by 27 July 2022. On 25 July 2022, the Opponent sought an extension of time of two months within which to file the EIS. The basis of this application was that on 4 June 2022 the individual acting on behalf of the Applicant contracted Covid-19 and that the parties were in negotiation for a settlement.

3. No evidence had been filed by 27 September 2022 and on 29 September 2022 the Opponent filed the EOT, seeking a further extension of 1 month. 

4. A delegate of the Registrar of Trade Marks (‘Registrar’) wrote to the Opponent on 19 October 2022 indicating that the Registrar intended to grant the extension to 27 September 2022 and intended to refuse the EOT.  A copy of the Request and the delegate’s letter were sent to the Applicant at the same time.

5. The Opponent responded on 27 October 2022 with a letter (‘27 October Letter’) providing further information in support of the EOT.  The Applicant wrote to the Registrar on 2 November 2022 making submissions that both the initial extension of time from 25 July 2022 and the subsequent EOT should be refused.

6. A delegate of the Registrar wrote again to the Opponent on 13 December 2022 expressing an intention to refuse the EOT.

7. The Opponent applied to be heard in relation to the EOT on 5 January 2023 by written submissions.  The Applicant applied to be heard, also by written submissions on 6 February 2023.  On 25 January 2023, this office issued formal hearing notices to both parties setting the EOT to be heard on 20 February 2023, and I issued directions parties to file any additional submissions on 7 February 2023.

8. The Applicant filed additional written submissions on 13 February 2023.  The Opponent did not file any additional material by the deadline provided in the directions.  In considering the EOT I have had regard to each of the materials on the file set out in the paragraphs above.

   The Opponent’s Evidence and Submissions

9. The Opponent has not filed any sworn evidence in support of the request, rather relies on statements made in the EOT itself and the 27 October Letter.  In the EOT application the Opponent makes reference to the Opponent’s consultant suffering from the effects of having contracted Covid-19 and hence running behind schedule and an internet access breakdown that lasted until 25 September 2022.

10. The 27 October Letter from the Opponent’s consultant refers to the ‘computer misbehaving and the file on the opposition completely disappearing’ requiring the consultant to bring in a ‘Laptop Surgeon’ to resolve the issue, which caused the delay.  

11. I note that the Opponent’s evidence is entirely unsworn and no material is annexed providing any support to the claims of the Opponent’s consultant suffering from Covid-19, the after-effects thereof or any computer issue.  I would expect that documents evidencing a diagnosis of Covid-19, any after-effects, the existence of an IT issue and the engagement of a paid third party to investigate an IT issue would be within the power of the Opponent to provide. 

    The extension of time provision

12. Regulation 5.15 is reproduced in full below. 

    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.

13. Sub-regulation (2) provides two alternative grounds.  I must first be satisfied that at least one of those grounds has been established before my discretions to grant an extension of time, and the length of the extended period, are enlivened.  The opponent bears the onus to satisfy the Registrar that the criteria in Regulation 5.15(2)(a) or (b) have been met. This is an onerous test; see Fonterra Co-Operative Group Ltd v Meiji Dairies Corporation[1].

    [1] [2014] APO 11, [10] (Delegate Dr S.D. Barker).

14. The Opponent has limited its submissions to the issue of exceptional circumstances, however in the interests of completeness I also consider the requirements of 5.15(2)(a).

    Reg 5.15(2)(a) – Reasonable, prompt and diligent

15. 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 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] (Delegate Dr S.D. Barker)..

16. I must consider the Opponent’s conduct over the course of the whole opposition. The Opponent has not provided sufficient details of the IT problem that impacted on its ability to file the EIS in a timely manner.  Nor has it established a consistent pattern of reasonable effort, promptness and diligence in relation to is efforts to file the EIS within the statutory timeframe including providing a timeline of the steps taken by the Opponent to prepare the EIS and how the IT issue or any after-effects of Covid-19 impacted on that timeline.  To determine whether a party has acted promptly and diligently at all times requires an analysis of the chronology of events over the period of time provided to provide the EIS.  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 Opponent ‘has acted reasonably, promptly and diligently.’[3] 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.

    [3] TRED Design, [76].

17. No such evidence has been provided by the Opponent.  In the absence of any such evidence, I am not satisfied that the Opponent 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.

    Reg 5.15(2)(b) – Exceptional Circumstances

18. Reg 5.15(4) states that the term exceptional circumstances includes three categories of events.  As the Opponent has not alleged an error or omission by the Registrar or an order of the court, this application only considers whether the Opponent has established that it has suffered a circumstance beyond its control that prevented it from complying with its filing requirements.

19. The issue in the present case is a matter of fact; namely that the burden is on the Opponent to establish that the circumstance existed and that the particular circumstance prevented it from complying with its filing requirements.  The Opponent has submitted no sworn evidence on this point, relying on the unsworn statement in the EOT application and the 27 October letter.  It has adduced no documentary evidence showing that the claimed IT problem existed, when it occurred and was fixed, that it impacted on its preparation of evidence and that it had engaged a ‘Laptop Surgeon’ to resolve the issue.  It has provided no timeline for the preparation of evidence indicating exactly how the supposed exceptional circumstance had prevented it from complying with the filing requirements.  It has provided no evidence to substantiate any claim that its consultant has been impacted by Covid-19 in any way.   

20. An application for an extension of time is a significant application and the burden is on an applicant for an extension to substantiate the facts relied upon for such an extension.  The Opponent has failed to substantiate, as a matter of fact, that it has suffered a circumstance beyond its control that had prevented it from complying with its filing requirements.

21. For the reasons give above, I am not satisfied that an extension of time should be granted under reg 5.15 based on any of the grounds relied on by the Opponent. 

    Decision

22. I am not satisfied that there are exceptional circumstances that justify extending the period in which the Opponent may file evidence in support.  Nor am I satisfied that the EIS was not filed despite the Opponent acting promptly and diligently at all times during the period.

23. Accordingly, I refuse to grant the EOT. As a consequence, the period for filing evidence in answer ended on 27 September 2022 and the material filed after that date does not constitute evidence in support and the Opponent has not filed any evidence in support in the opposition proceedings.

24. Neither party has sought orders as to costs and I make no award of costs.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    7 March 2023