StonCor Group Inc v SureSet Australia Pty Ltd

[2011] ATMO 25

TRADE MARKS ACT 1995

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

Re:Opposition by StonCor Group Inc to registration of trade mark application 1298666(19) - SURESET and device - filed in the name of SureSet Australia Pty Ltd and application by StonCor Group Inc for extension of time to serve evidence in support.

Delegate:

Alison Windsor

Representation:

Extension of Time Applicant:  Celia Davies of Freehills Patent and Trade Mark attorneys

Decision:

2011 ATMO 25

Reg 5.15:  application for extension of time to serve evidence in support – Registrar’s intention to refuse – opponent’s reasons and circumstances surrounding application just sufficient for reasonable satisfaction – evidence served and filed within time as extended – application allowed.

Background

1. SureSet Australia Pty Ltd (‘SureSet’) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’).  Current details of the application are shown below:

Application number:  1298666

Filing date:  12 May 2009

Goods claim:  Class 19:  Coloured stone materials for use in paving; decorative paving stones; non-metallic materials for use in paving; non-metallic paving materials; non-metallic paving products; paving made of non-metallic materials; paving non-metallic materials

Acceptance advertised:               10 September 2009

Trade Mark:  

1. StonCor Group Inc (‘StonCor’) filed a notice of opposition to registration of the application on 4 December 2009.  Regulation 5.7 of the Trade Mark Regulations 1995 (‘the Regulations’) allowed StonCor until 4 March 2010 in which to serve and file its evidence in support.  On that date, however, StonCor filed an application under the provisions of regulation 5.15 for a three month extension of time within which to serve its evidence in support.  The application was allowed, bringing the due date for serving the evidence to 4 June 2010.

2. On 4 June 2010 StonCor filed its second application for a three month extension of time, allowance of which would bring the due date for serving its evidence to 4 September 2010.  The application advised that StonCor and its US attorney had been working diligently to collect evidence to support the opposition.  Collection of the evidence had been somewhat delayed, StonCor said, because of an illness in the US attorney firm.  It also stated that StonCor considered the opposition to be important to the question of its trade mark protection within Australia, and that StonCor was hopeful that the three month period subject of the application would be sufficient to complete the collection of evidence and the execution of a statutory declaration for the purpose.  The application was allowed.

3. On 3 September 2010, StonCor filed its third application for a three month extension of time.  This application was accompanied by a Statutory Declaration made by Celia Davies, a partner of Freehills Patent & Trade Mark Attorneys, StonCor’s representatives in this matter.  Ms Davies stated that her firm had been provided with information and evidence to be used in preparation of a statutory declaration to support the opposition, and that her firm was in the process of preparing a draft declaration.  She stated that they were awaiting further information from StonCor’s Australian representatives.  She provided information about the global extent of StonCor’s business operations and its trade marks, a number of which are registered in Australia.  She also referred to concurrent trade mark actions StonCor has in train in Vietnam and in the US which have created an extensive workload for the company.  The declaration ended with the hope that the applied for three month period would be sufficient to finalise the evidence and declarations.

4. Again, the application was allowed, bringing the due date for the serving of evidence in support to 4 December 2010. 

5. SureSet was advised of the filing of the extension application and given 14 days to make representations about the extension being allowed, or request a hearing, but did not respond until after the application had been allowed.  On 8 October 2010 SureSet queried if there is a limit to the number of extensions which can be granted, and gave their opinion that the reasons StonCor had given so far were not good reasons for prolonging the opposition process.  

6. On 6 December 2010[1] StonCor filed its fourth application for a three month extension of time in which to serve its evidence in support.  The application was again accompanied by a statutory declaration made by Celia Davies.  This declaration stated that a draft declaration to constitute StonCor’s evidence in support had been substantially prepared.  StonCor had reviewed the draft declaration, and provided their Australian representatives with more information to supplement the declaration, which had been updated and was being sent that day to StonCor with a request for outstanding pieces of information required to finalise it.  The declaration reiterated that the opposition was important to StonCor, which wished to place all relevant material before the Registrar.  Again, the declaration expressed the hope that the three month period subject of the extension application would be sufficient to complete collection of evidence and execution of declarations to support the opposition.

   [1] The final date was 4 December 2010 as noted previously.  However, that date being on a Saturday, the application was filed on the next available business day.

7. On 20 December 2010, an officer of the Trade Marks Hearings and Opposition section advised StonCor that she intended to refuse the extension application because:

   ·     StonCor had already had 12 months in which to complete its evidence in support and serve a copy on the applicant.  The extension application would take the time to 15 months, well over the 9 month period which the Registrar considers is reasonable for preparation of evidence in support.

   ·     StonCor appeared to be still gathering evidence, and there was no indication when the evidence would be completed. 

   ·     StonCor had not provided any compelling reasons for the delay in completing its evidence, and the delay was disadvantaging SureSet.

8. The officer advised StonCor that she was not satisfied with the reasons it had provided for requiring the latest extension, and allowed it until 12 January 2011 to provide further reasons in support of the extension.  She advised that StonCor could, alternatively, request a hearing in the matter of the extension of time.

9. On 24 December 2010, StonCor requested a hearing in the matter.  As a delegate of the Registrar, I heard the matter in Canberra on 17 March 2011.  Celia Davies of Freehills Patent and Trade Mark Attorneys appeared for StonCor via video link.  SureSet was given an opportunity to attend or to make further submissions but has not done so.

10. I note that StonCor filed two declarations which comprise the whole of its evidence in support prior to the extension matter being heard.  A copy of the first declaration was served on SureSet on 18 January 2011 and the second declaration was served on 4 March 2011.

Legislative background and procedural framework

1. The provisions for the service and filing of evidence in an opposition are governed by the Regulations.  Regulation 5.7 specifically governs the service and filing of the opponent’s evidence in support, and provides:

   Reg 5.7. Evidence in support

   (1)If the opponent intends to rely on evidence in support of the opposition, the opponent must serve a copy of the evidence in support on the applicant within 3 months from the day on which the notice of opposition is filed.

   (2)As soon as practicable after the opponent serves a copy of the evidence in support on the applicant, the opponent must file with the Registrar:

   (a)the original evidence; and

   (b)a statement setting out the date, place and manner of service of the copy of the evidence on the applicant.

2. In respect of extensions of time for the purpose of serving evidence, regulation 5.15 provides:

   Reg 5.15.  Extension of period to serve evidence and service of further evidence.

   (1)A party to the opposition proceedings may apply to the Registrar:

   (a)for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

   (b)for permission to serve a copy of further evidence on the other party.  

   (2)The Registrar may grant an application on reasonable terms specified by the Registrar.

(3)The Registrar must not grant an application unless the Registrar:

(a)is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

(b)has given the parties a reasonable opportunity to make representations concerning the application; and

(c)is reasonably satisfied that:

(i)   in the case of an application to which paragraph (1)(a) applies – the extension of the period for serving a copy of the evidence; and

(ii)in the case of an application to which paragraph (1)(b) applies – permission to serve a copy of further evidence;

is appropriate.

(4)For the purposes of paragraph (3)(b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

(5)If the Registrar grants an application under paragraph (1)(b) on terms that include service of a copy of the further evidence within a specified period, a party to the opposition proceedings may apply to the Registrar for an extension of that period.

(6)Subregulations (2), (3) and (4) apply to an application under subregulation (5). 

1. The regulations make it clear that while a party may apply for extensions to the time periods allowed for the service and filing of evidence, the Registrar has very little discretion in deciding whether or not to grant such an application.  The extension ‘must not’ be granted unless the Registrar is reasonably satisfied that the other party to the opposition has been served a copy of documents relevant to the application and that both parties have been given a reasonable opportunity to make reasonable representations in respect of the matter.  Ultimately, the Registrar must be reasonably satisfied that the extension of time is appropriate.

The Registrar’s benchmarks for extensions of time for serving evidence

1. The officer who advised StonCor that she proposed to refuse the extension application stated that the extension application under consideration would take the time to 15 months, well over the 9 month period which the Registrar considers is reasonable for preparation of evidence in support.  The time periods which the Registrar considers to be reasonable are often referred to as ‘the Registrar’s benchmarks’.  A copy of the ‘benchmarks’ may be found as Part 4 of the official extension application document provided by IP Australia.  Additional information about the benchmarks and extensions of time in general may be found in the Trade Marks Office Manual of Practice and Procedures at Part 51, paragraph 3.2.1 which is reproduced below: 

   3.2.1 Extension for the purpose of preparing evidence

   In the interests of natural justice each party to an opposition should be allowed a reasonable amount of time to prepare and serve its evidence. However there should be some predictability about how long the evidence stage of an opposition is likely to take.  There is a public interest in the trade mark register being administered efficiently and trade mark disputes decided as quickly as possible.  For these reasons the Registrar has set the following benchmarks for the maximum time likely to be allowed for one party to prepare and serve its evidence:

   ·     Evidence in support – 9 months from the date on which the notice of opposition was filed

   ·     Evidence in answer – 9 months from the date on which the applicant was served with all, or the balance of, the opponent’s evidence or from the date set by the Registrar for service of evidence in answer

   ·     Evidence in reply – 6 months from the date on which the opponent was served with all, or the balance of, the applicant’s evidence.

   The Registrar must not grant an extension unless reasonably satisfied it is appropriate (reg 5.15(3)(c)).  The onus is on the party applying for the extension to make out a case for it to be granted.  The information needed to satisfy the Registrar will depend on how much time the extension applicant has already had to prepare its evidence. 

   For a first extension of the statutory three month period, a simple explanation of what has been done thus far in evidence preparation and what is planned to be done within the extended period is likely to be sufficient.  However, if the application is filed late, i.e. after the due date for evidence to be served, there must be a full explanation of why this is so.

   More information will be required to make out a case for a second extension.  The Registrar will need to be satisfied the extension applicant has made good use of the time available to it thus far and that evidence preparation is progressing well.  There may be cases where evidence preparation has not proceeded according to plan because of unforeseen circumstances.  It is important to make the Registrar and the other party aware of this and what is being done to make good lost time including, where feasible, a timetable for the completion of the evidence.  If the extension applicant is awaiting the return of executed declarations it should provide details of their likely receipt and service.

   Each application will be assessed on its merits.  However as a general principle an extension which will take the time allowed beyond the Registrar’s benchmark for the relevant evidence stage is unlikely to be granted unless the extension applicant is able to demonstrate there are compelling reasons to do so.  Such reasons may be:

   ·     an error or omission by an employee of IP Australia

   ·     an error or omission on the part of the extension applicant, or its agent

   ·     special circumstances

   which prevented the party from serving its evidence in time.  To establish compelling reasons the party needs to provide a full and frank disclosure of all the relevant facts, preferably in the form of a declaration.  [Emphasis added]

Reasons

1. Given the facts of this case, what remains for me to decide is whether I am reasonably satisfied that it is appropriate to allow the requested extension to the time for serving and filing StonCor’s evidence in support from 4 December 2010 to 4 March 2011.  If I decide to allow the extension request, the two declarations already filed and served within the proposed extension period will be allowed into the opposition proceedings.

2. Ms Davies submitted that whether an extension of time is appropriate is determined by a combination of factors including:

   • the seriousness of the opposition
   • the length of time already allowed
   • the reasons for the extension
   • the relative inconvenience to the parties and
   • the public interest.

3. In support of the claim that the opposition is a serious opposition, she submitted as follows:

   The present opposition is one of a number of proceedings which the Opponent is vigorously pursuing worldwide.  The Opponent maintains an active and ever-growing market presence in Australia and takes its intellectual property rights extremely seriously.

   Since the Opponent’s inception some 87 years ago, the ‘STON’ prefix has served as the cornerstone of its trading name, branding strategy and intellectual property portfolio. 

4. In considering the length of time already allowed, Ms Davies said that StonCor has been granted three extensions of time, making 9 months in total, and if the current request is granted it will bring the total time allowed for preparation and service of the evidence in support to 12 months.  This, she said, is not an excessive period of time given the importance of this opposition to StonCor, the scale of its operations and the lengths to which it has gone to protect its trade mark rights overseas.[2] 

   [2] Ms Davies has neglected here to make allowance for the statutory three month period provided in the regulations, which brings the total time, if the extension application is granted, to 15 months.

5. In respect of the matter of relative inconvenience to the parties, Ms Davies said that StonCor would be irreversibly harmed if this extension request is refused.  She said that the evidence filed and served on 4 March 2011 is critical to its case, as StonCor has invested 13 years of use of its ‘STON-’ trade marks in Australia and is dedicated to expanding its market presence in Australia and worldwide.

6. In considering the matter of the public interest, Ms Davies submitted that the public interest lies in allowing this extension so that the merits of the opposition can be fully evaluated.  She said that SureSet now has received the complete evidence in support, and is in a position to review and respond to it, therefore it would be futile to deny the extension application.

7. The reasons Ms Davies has given in the documentation accompanying the various extensions of time and in her submissions at the hearing paint a picture which, to my mind, is just sufficient for me to be reasonably satisfied that it is appropriate to allow this application for an extension of time. 

8. I am satisfied that in the early stages of evidence gathering there were circumstances which interfered with the timely production of information designed to form the main Statutory Declaration.  The extent of this interference is not made clear, and neither is the reason that, despite the Australian attorneys for StonCor protesting about the importance of the opposition, StonCor itself appears to have given other matters much higher priority.  The circumstances mentioned can perhaps justify some delay in obtaining and providing the relevant evidence, but they cannot justify StonCor’s apparent disinterest in detailing either what it has done, or when the work would be completed.. 

9. The Registrar has made it clear that, as time passes, the onus is on the extension applicant to provide increasingly detailed and persuasive evidence in support of each extension application.  The reasons given for the first, second and third extensions of time applications met this requirement.  However, the reasons given for the fourth extension of time application provided less detail than was given for the third extension application and gave no certainty that there was any end in sight. 

10. In any event, StonCor has at last provided its complete evidence in support and I agree with Ms Davies that the extension of time is appropriate.  I consider that the both parties will benefit from allowance of this extension application because StonCor has been able to put its evidence before the Registrar and SureSet can clearly see the information on which StonCor relies. 

Decision

1. I grant to StonCor an extension of time to serve a copy of its evidence in support until 4 March 2011.  I note that StonCor has completed service and filing of its evidence in support, and within the extended time as allowed.

2. The trade mark applicant, SureSet, now has the opportunity to provide its evidence in answer to the opposition (regulation 5.9).  However, in view of the delay that has arisen in deciding if the time for serving evidence in support would be extended, I now direct that the due date for service of a copy of the evidence in answer to the opposition is three months from the date of this decision.

Alison Windsor

Hearing Officer

Trade Marks Hearings

30 March 2011