Stafford-Miller Limited v R & C Products Pty Limited

Stafford-Miller Limited applied for the removal of two trade mark registrations, EZI-CLEAN and device, and EZI-CLEAN, from the Register under section 23 of the Act. R & C Products Pty Limited, the registered proprietor, opposed this application. Stafford-Miller Limited subsequently applied for a three-month extension of time to lodge evidence in support of its removal application, which R & C Products Pty Limited objected to. The matter came before a delegate of the Registrar of Trade Marks to determine whether to grant the extension.

The delegate was required to consider whether Stafford-Miller Limited had established sufficient grounds for an extension of time to lodge its evidence. This involved assessing the reasons provided for the delay, including the applicant's initial expectation that the matter would be uncontested, the time taken to receive instructions from its overseas parent company, the time-intensive nature of collecting evidence, and the progress of tentative settlement negotiations. The delegate also had to consider the opponent's arguments regarding the undesirability of delay, the applicant's failure to make out a prima facie case for removal, and the potential for the extension to jeopardise the opponent's interests.

In reaching a decision, the delegate applied principles derived from case law and commentary on trade mark law. The delegate acknowledged that while the initial reason for the extension lacked detail, the subsequent submissions, particularly concerning ongoing settlement negotiations, provided a stronger basis for granting the extension. The delegate found that the negotiations, though initiated late and with a missed deadline, were bona fide and that requiring a swift resolution from an overseas parent company was unreasonable. The delegate also considered that granting the extension would not unfairly jeopardise the opponent's interests and that it was in the public interest to allow all relevant evidence to be presented to fully test the allegations of non-use.

The delegate allowed the extension of time sought by Stafford-Miller Limited, granting them until 10 December 1993 to serve their evidence in support. Regarding costs, the delegate determined that given the applicant's contribution to the situation by not proactively engaging with the opponent regarding negotiations, each party should bear their own costs.