So Nominees Pty Ltd as trustee for Soul Origin IP Unit Trust v Denis Kendes and Eunjeong Ko
[2023] ATMO 146
•29 September 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Application by SO Nominees Pty Ltd as trustee for Soul Origin IP Unit Trust for an extension of time to file evidence in support of the opposition to registration of trade mark application number 2182437 (class 43) - SOUL BROTHERS - in the name of Denis Kendes and Eunjeong Ko.
Delegate:
Timothy Brown
Representation:
Opponent: Ruth Dennis of Francom Legal.
Applicant: Sahil Verma of Legal Vision.
Decision:
2023 ATMO 146
Trade Marks Regulations 1995 (Cth) – application for extension of time to file evidence under section reg 5.15 – grounds for extension of time under regs 5.15(2)(a) and (b) considered – no grounds established – application for extension of time refused.
Background
This decision concerns a request under regulation 5.15(1) of the Trade Mark Regulations 1995 (Cth)[1] made by SO Nominees Pty Ltd as trustee for Soul Origin IP Unit Trust (‘Opponent’) for an extension of time to file evidence in support of the opposition to the registration of trade mark application number 2182437 (‘Trade Mark Application’) in the name of Denis Kendes and Eunjeong Ko (‘Applicants’).
[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’).
The Opponent filed a Notice of Intention to Oppose on 22 December 2021, followed by a Statement of Grounds and Particulars on 17 January 2022. The Applicants subsequently filed a Notice of Intention to Defend on 22 April 2022.
In accordance with regulation 5.14, the Opponent was provided with a copy of the Notice of Intention to Defend on 29 April 2022 and informed that the Opponent’s Evidence in Support (‘EIS’) was to be filed by 29 July 2022.
On 26 July 2022, the Opponent filed an application for an extension of time of 3 months to file the EIS. The basis for the extension of time was that Francom Legal, the Opponent’s representative, was in the process of obtaining instructions and collecting evidence. The relevant contact persons at the Opponent had been on leave, making retrieval of instructions and evidence difficult.
On 13 September 2022, a delegate of the Registrar of Trade Marks wrote to Opponent indicating that the Registrar intended to refuse the extension of time because they were not satisfied that the Opponent had been prompt and diligent at all times and had made all reasonable efforts to comply with the relevant filing requirements. Furthermore, while the extension of time application indicated that the Opponent was requesting a three month extension of time, it had only paid the fee for a two month extension of time.
On 27 September 2022, the Opponent responded with a letter providing further information on the steps taken in relation to the preparation of evidence.
On 28 September 2022, the delegate wrote again to the Opponent, indicating that the information provided by the Opponent did not justify an extension of time. The delegate also reiterated that the Opponent had only paid for a 2 month extension of time.
On 29 September 2022, the Opponent filed another extension of time application for a further 1 month. This extension of time was in addition to the two month extension of time the Opponent had requested on the 26 July 2022. The reasons provided in support of the second extension of time application were the same as the reasons provided for the original extension of time application.
On 4 October 2022, a delegate of the Registrar of Trade Mark advised the Opponent that the Registrar intended to refuse the extension of time applications. The Opponent was given until 10 October 2022 to request a hearing in relation to the extension of time applications.
On 7 October 2022, the Opponent requested to be heard via written submissions. Written submissions were filed by the Opponent on 20 February 2023. The Applicants filed written submissions on 28 February 2023.
On 9 November 2022, a third extension of time application was made for an additional 1 month. The reasoning provided was identical to the previous two extensions of time. For the purposes of this decision, I will refer to the three extension of time applications collectively as the ‘EOT Applications’.
On 28 November 2022, the Opponent filed its EIS.
Opponent’s Evidence
The Opponent has not filed any evidence in support of the EOT Applications, rather it relies on the statements made in the EOT Applications and written submissions.
In its letter dated 27 September 2022, the Opponent provided a timeline of the steps taken in the preparation of evidence. The details of the timeline are outlined below:
Date
Activity
8 April 2022
Opponent received a message from the representative of the Applicants requesting to discuss the opposition with Mr Adam Neill, CEO of Soul Origin.
29 April 2022
IP Australia notified the Opponent that it has 3 months to file EIS.
May 2022 to July 2022
The Opponent’s representative was instructed that Mr Neill made several unsuccessful attempts to contact the Applicants.
13 July 2022
Mr Neill contacted the Applicants to discuss a co-existence agreement.
20 July 2022
The Opponent instructed its representatives to prepare evidence.
The Opponent’s written submissions also contained a timeline, which includes the following additional details:
Date
Activity
13 July 2022
The material gathered by the Opponent for the purposes of filing EIS is misplaced. The Opponent advised its representative that they would endeavour to reassemble the material by 22 July 2022.
10 August 2022
Mr Neill, received a text message from the representative of the Applicants regarding the possibility of entering into a co-existence agreement.
17 August 2022
The Opponent’s representatives contacted the client for material relating to the EIS.
9 September 2022
Ms Holmes, National Manager of marketing for the Opponent and the employee primarily responsible for gathering evidence on behalf of the Opponent, commenced maternity leave.
20 September 2022
Mr Neill instructed the Opponent’s representatives to liaise with the Applicants to discuss a co-existence agreement or an undertaking to be considered by the Applicants. A letter of undertaking was issued to the Applicants for consideration.
27 September 2022
The Opponent contacted the Applicants seeking a response to the letter of undertaking.
29 September 2022
The second extension of time is filed to address the underpayment of fees in the original extension of time application.
19 October 2022
The Applicants’ representatives were contacted regarding amendments to the undertaking.
21 October 2022
The Applicant’s representatives advised the Opponent that the Applicants were open to discussing resolutions to the dispute.
In the Opponent’s submissions, the Opponent attributes the delays in filing evidence to the nature of the Opponent’s business, being a small to medium enterprise reliant on key personal to take carriage of matters and major decision making within the company. The Opponent explains that the absence of key personal, such as Ms Holmes, affects not only the business’s day to day operations but hinders its ability to focus on matters outside of its core business, such as filing the EIS.
Relevant Provisions
Regulation 5.15 provides:
(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.
Regulation 5.15(2) provides that an extension of time for filing evidence can only be granted if I am satisfied that the party has made all reasonable efforts to comply with the relevant filing requirements and the failure to file the evidence in time occurred despite the party acting promptly and diligently at all times to ensure the evidence was filed in time, or alternatively, if I am satisfied that there were exceptional circumstances that justify the extension of time. [2]
[2] Tred Design Pty Ltd v Julie-Anne McCarthy and Bradely McCarthy [2013] APO 57, [30-31] (Delegate Baker Dr); see also: Merial Limited v Novartis AG [2013] APO 65 (Delegate Spann).
The Opponent bears the onus to satisfy the Registrar that the criteria in regulation 5.15(2)(a) and (b) have been met.
Reasonable efforts, prompt and diligent at all times
Regulation 5.15(2)(a) requires that the party ‘has made all reasonable efforts to comply with all relevant filing requirements of this part’ and has acted ‘promptly and diligently at all times to ensure the filing of the evidence within the period’.
In TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy[3] (‘TRED’), a decision made under the equivalent extension of time provisions of the Patent Regulations 1991 (Cth), the delegate explained:
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).[4]
[3] [2013] APO 57 (Delegate Baker Dr).
[4] Ibid [28].
Accordingly, regulation 5.15(2)(a) requires consideration of the party’s conduct over the totality of the opposition proceedings. However, if a party has been prompt and diligent in relation to its preparation and filing of evidence, then it will likely also have made all reasonable efforts to comply with the filing requirements.
The Opponent contends that the circumstances outlined above at paragraphs [14] and [15] demonstrate that the Opponent had made reasonable efforts to comply with the relevant filing requirements and had acted promptly and diligently at all times to ensure the evidence was filed within the relevant period.
Conversely, the Applicants submits that the following circumstances indicate that the Opponent did not act promptly and diligently at all times to ensure that the EIS would be filed within the relevant period:
·The Opponent received instruction to prepare evidence on 20 July 2022 only a short time before the EIS was due on 29 July 2022. This was more than 2 ½ months after initially being notified of the deadline on 29 April 2022.
·There was no request for a cooling off during the period for filing evidence despite the Opponent’s attempts to enter into negotiations.
·The Opponent only filed its EIS 7 months after being provided with the Notice of Intention to Defend.
Regulation 5.15(2)(a) does not require perfection.[5] However, the behaviour of the party seeking the extension of time still needs to be within the range of what can be considered prompt and diligent. In TRED, the delegate stated:
An attorney does not need to account for every minute of their day, but they must provide enough information to enable a delegate of the Commissioner to form their own opinion on whether the party has acted reasonably, promptly and diligently. 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.[6]
[5] Tred [76]; Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2014] APO 63, [33] (Delegate Baker Dr).
[6] Ibid [76].
It is not necessary for the party seeking the extension of time to detail every step taken during the opposition process. The level of detail necessary will also depend on the case and the circumstances surrounding the delay. However, the party does need to explain why there were unable to have the evidence prepared during the relevant period. Context, such as the party’s strategy for the preparation of evidence, a description of what was done and when it was done, or a discussion of any unexpected challenges that arose can help demonstrate that a party has but for the failure to file evidence within the relevant period, acted reasonably, promptly and diligently.
In this case, the Opponent’s representative sought instructions from the Opponent and was advised by the Opponent on 13 July 2022 that the material gathered for EIS had been misplaced. The Opponent’s submissions state the that the Opponent’s representatives sought instructions between 29 April and 13 July 2022. The initial timeline provided in the Opponent’s letter on 27 September 2022 indicated that the Opponent’s representative was only instructed to prepare evidence and received material from the Opponent on the 20 July 2022. The Opponent then, given the proximity to the deadline of 29 July 2022, sought an extension of time on 26 July 2022. No further details are provided regarding the overall strategy for preparing evidence, the misplacement of the evidence or initial failure to meet the deadline for filing EIS. From the Opponent’s timeline of events, it appears that much of the time during the period for filing evidence was spent attempting to contact and negotiate with the Applicants. Following the deadline for filing evidence, Ms Holmes, the person responsible for gathering the evidence on behalf of the Opponent, went on maternity leave.
The Opponent case depends in part on the ongoing negotiations between the parties. A significant portion of the Opponent’s account of events pertains to occasions where the Opponent contacted the Applicants to negotiate a co-existence agreement. The Applicants have identified several discrepancies between the Opponent’s account of the ongoing negotiations and the Applicants’ own account. I do not consider it necessary to examine these discrepancies. Although the Opponent’s negotiations with the Applicants can be viewed as an attempt to bring the opposition proceedings to an early close, these activities do not relate to the gathering of evidence.[7] The Opponent appears to have spent a large portion of the 3 month period for filing EIS attempting to contact the Applicants and negotiate an agreement. It would not be appropriate to grant an extension of time for filing evidence on the basis of time spent attempting to conduct negotiations as the period provided for by regulation 5.14(3) is intended for gathering and filing evidence.
[7] See: Trek Bicycle Corporation v Red Hawk Holdings Pty Ltd [2019] ATMO 88, [23], [29] (Delegate Richards).
Regarding the misplaced evidence, the Opponent has provided no explanation as the circumstances surrounding the misplaced evidence, nor what was done by the Opponent to remedy the situation. The EIS was not filed until 28 November 2022. The Opponent claims that Ms Holmes’ absence was a contributing factor to the delay, however, Ms Holmes maternity leave only began on the 9 September 2022, well after the deadline for filing EIS. Although the Opponent claims that as a small to medium enterprise Ms Holmes’ absence hindered the Opponent’s ability to file evidence, this would only account for the period from 9 September 2022 onwards. In the absence of a sufficient explanation as to why the evidence was not filed prior to Ms Holmes’ leave of absence, I am not satisfied that the Opponent acted promptly and diligently at all times.
The ground under regulation 5.15(2)(a) for the extension of the period for filing evidence has not been established.
Exceptional Circumstances
The Opponent submits that the following were exceptional circumstances that justify an extension of time:
· The leave of absence of the person responsible for gathering evidence; and
· Mr Neill’s conflicting priorities as CEO, which limited his ability to action the gathering of evidence in Ms Holmes’ absence.
Regulation 5.15(4) includes a non-exhaustive list of circumstances that may warrant extending time on the basis of exceptional circumstances. The list includes circumstances beyond the control of the party,[8] an error or omission by the Registrar,[9] or a court order or direction by the Registrar.[10]
[8] Trade Mark Regulation 1995 (Cth) reg 5.15(4)(a).
[9] Ibid reg 5.15(4)(b).
[10] Ibid reg 5.15(4)(c).
In the TRED decision, the delegate noted that ‘exceptional circumstances’ are:
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.[11]
[11] Ibid [64].
The Opponent has referred me to Genentech v Wellcome Foundation Ltd,[12] a matter decided under Patents Regulations 1952 (Cth), in which the delegate considered the wording, ‘special circumstances existed which prevented the application being made before that time’ and stated:
the word ‘prevented’ ought to be given a broad meaning so as to give effect to the regulation in situations where the person concerned has failed to apply on time owing to some circumstance which has prevented the knowledge of the need to apply coming to that person’s attention”.[13]
[12] [1988] APO 15 (Delegate Roveta).
[13] Ibid.
The Opponent has also referred me to the following passage from Meiji Dairies Corporation v Fonterra Co-operative Group Limited:[14]
the reason why the application for extension of time was not made until after the period had expired is a relevant, but not mandatory, consideration”.[15]
[14] [2012[ APO 129.
[15] Ibid
The two decisions referred to by the Opponent concern the timing of the extension of time request which is not in issue. An extension request may be made after the relevant period has expired. The more pressing concern for the Opponent is that the circumstances the Opponent relies on occurred after the deadline for filing evidence. Although the original extension of time request was made during the relevant period, the circumstances relied on by the Opponent to justify an extension of time occurred after the evidence was due to be filed. As explained earlier in this decision, Ms Holmes’ leave of absence occurred well after the relevant period. There is no causal connection between the leave of absence and the Opponent’s inability to file evidence with the relevant period.
Furthermore, I do not consider the circumstances relied on by the Opponent to be exceptional or otherwise outside of the control of the party. The Opponent would have likely been aware of the employee’s upcoming leave of absence. The nature of the leave was neither unplanned or otherwise unexpected.
The Opponent has not satisfied me that exceptional circumstances exist that justify the extension of time. The ground for the extension of the period for filing evidence in regulation 5.15(2)(b) has not been established.
Decision
I refuse to grant the extensions of time. Accordingly, the period for filing evidence in support ended on 29 July 2022 and the material filed after that date by the Opponent does not constitute evidence in support.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
29 September 2023
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